UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE...

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

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

Unified v. Personalized Media IPR Petition – U.S. Pat. 7,805,749

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TABLE OF CONTENTS

TABLE OF CONTENTS .......................................................................................... ii

TABLE OF AUTHORITIES ................................................................................... iv

EXHIBIT LIST .......................................................................................................... v

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ........................ 1

A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1

B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1

C. Lead and Back-Up Counsel ................................................................... 2

D. Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2

E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 2

II. SUMMARY OF ISSUE PRESENTED .......................................................... 3

III. INTRODUCTION AND BACKGROUND .................................................... 4

A. PMC’s Patent Strategy .......................................................................... 4

B. Exemplary Embodiment Describing the Claimed Invention ................ 6

C. Representative Claim ............................................................................ 8

D. Prosecution History Summary ............................................................ 10

IV. THE EARLIEST PRIORITY DATE FOR THE CLAIMS AT ISSUE IS SEPTEMBER 11, 1987 ................................................................................. 11

V. STATEMENT OF PRECISE RELIEF REQUESTED ................................. 14

VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16

VII. CLAIM CONSTRUCTION .......................................................................... 16

VIII. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY ............. 19

A. Background and State of the Art ......................................................... 19

B. The Claims at Issue Are Anticipated by Jeffers .................................. 21

C. The Claims at Issue Are Obvious Over Campbell .............................. 24

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. The Knowledge of a Person of .................................................. 47

Ordinary Skill in the Art ...................................................................... 47


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3. Guillou ...................................................................................... 49

IX. SECONDARY CONSIDERATIONS CANNOT OVERCOME THE STRONG EVIDENCE OF OBVIOUSNESS ............................................... 59

X. CONCLUSION ............................................................................................. 59


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TABLE OF AUTHORITIES

In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ..................................................................... 16

Leapfrog Enters. Inc. v. Fisher–Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007) ..................................................................... 59

Newell Cos., Inc. v. Kenney Mfg. Co.,

864 F.2d 757 (Fed. Cir. 1988) ....................................................................... 59

Personalized Media Commc’ns., LLC v. Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013) ................................... 1

PowerOasis, Inc. v. T-Mobile USA, Inc.,

522 F.3d 1299 (Fed. Cir. 2008) ............................................................... 12, 14

In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007) ..................................................................... 16

OTHER AUTHORITIES

35 U.S.C. § 102 .................................................................................................. 15, 46 35 U.S.C. § 103 ........................................................................................................ 15 35 U.S.C. § 120 ........................................................................................................ 12 35 U.S.C. §§ 311-319 ................................................................................................ 1 37 C.F.R. § 42.8 ..................................................................................................... 1, 2 37 C.F.R. § 42.100 ............................................................................................... 1, 16 37 C.F.R. § 42.104 ..................................................................................................... 2 The Viewtron Handbook .................................................................................... 48, 51


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EXHIBIT LIST

Exhibit No. Description

1001 U.S. Patent No. 7,805,749 (“the ’749 patent”)

1002 U.S. Patent No. 4,694,490 (“the ’490 patent”)

1003 Excerpts from the Prosecution History of U.S. Patent 7,805,749

1004 Declaration of Michael O. Slinn in Support of Petition for Inter Partes Revise of U.S. Patent 7,805,749

1005 U.S. Patent No. 4,739,510 (“Jeffers”)

1006 U.S. Patent No. 4,536,791 (“Campbell”)

1007 U.S. Application No. 06/135,987

1008 Resume of Michael O. Slinn

1009 U.S. Patent No. 2,843,655 (“Gottfried”)

1010 U.S. Patent No. 3,211,830 (“Sargent”)

1011 U.S. Patent No. 4,068,264 (“Pires”)

1012 U.S. Patent No. 3,924,059 (“Horowitz”)

1013 U.S. Patent No. 3,886,302 (“Kosco”)

1014 Chris Powell, Prestel: the opportunity for advertising, VIEWDATA

AND VIDEOTEXT 1980-81: A WORLDWIDE REPORT (“Powell”)

1015 Robert C. Moore, Home Information Systems: A Primer (July 1981) (“Moore”)

1016 Hartford Gunn et al., A Public Broadcaster’s View of Teletext in The United States (1980) (“Gunn”)

1017 J.F. Courtney, Videotel: An Extension of the Use of the Display Equipment of a Prestel TV set for the Travel Industry, VIDEOTEL, VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE REPORT

(“Courtney”)

1018 DES Encryption Standard, FIPS PUB 46 (January 15, 1997) (“DES Encryption Standard”)


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1019 R. F. Park, The Role of Viewdata in Electronic Funds Transfer, VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE REPORT

(“Park”)

1020 Waring, Cox’s INDAX System – Delivering Future Two-Way Cable Services Today, Videotex ’81 (“Waring”)

1021 The Viewtron Handbook (1983) (“Viewtron Handbook”)

1022 U.S. Patent No. 4, 337, 483 (“Guillou”)

1023 Varadharajan, Some Cryptographic Techniques for Secure Data Communication, Plymouth Polytechnic, 1984 (“Varadharajan”)

1024 [Exhibit Number Not Used]

1025 Excerpts from File History of U.S. Appl. No. 08/449,263

1026 January 19, 2010 Decision on Appeal in Appeal No. 2009-6825

1027 December 19, 2008 Decision on Appeal in Appeal No. 2008-4228

1028 International Patent Application No. WO 80/01636 (“Guillou PCT”)

1029 Declaration of Annemarie Mattheyse in Support of Petition for Inter Partes Review of U.S. Patent No. 7,801,304

1030 Petitioner’s Voluntary Interrogatory Responses


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Under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq., Petitioner

Unified Patents Inc., (“Unified” or “Petitioner”) requests inter partes review of

U.S. Patent No. 7,805,749 (“the ’749 patent”), issued on Sept. 28, 2010, to Harvey

et al. and is purportedly owned by Personalized Media Communications, LLC

(“PMC” or “Patent Owner”). Petitioner files a motion for joinder concurrently

herewith to join this proceeding with Amazon.Com, Inc. and Amazon Web Svcs.,

LLC v. Personalized Media Comm., LLC, Case IPR2014-01533 (the “Amazon

IPR”), in which the Petition was filed on September 22, 2014. This petition is

substantively identical to the one in the Amazon IPR.

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)

The following mandatory notices are provided as part of this petition.

A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could

exercise control over Unified’s participation in this proceeding, the filing of this

petition, or the conduct of any ensuing trial. See Ex. 1030.

B. Related Matters Under 37 C.F.R. § 42.8(b)(2)

The ’749 patent is involved in the Amazon IPR, which is pending, as well as

in co-pending litigation captioned Personalized Media Commc’ns., LLC v.

Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013).


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C. Lead and Back-Up Counsel

Unified provides the following designation of counsel, all of whom are

included in Customer No. 22,850 identified in Unified’s Power of Attorney.

Lead Counsel Back-up Counsel

Michael L. Kiklis (Reg. No. 38,939)

[email protected] Postal and Hand-Delivery Address: 1940 Duke Street Alexandria, VA 22314 Telephone: (703) 413-2707 Facsimile: (703) 413-2220

Scott A. McKeown (Reg. No. 42,866)

[email protected] 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)

[email protected] Postal and Hand-Delivery Address: 1940 Duke Street Alexandria, VA 22314 Telephone: (703) 236-2674 Facsimile: (703) 413-2220

D. Service Information Under 37 C.F.R. § 42.8(b)(4)

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:

[email protected].

E. Grounds for Standing Under 37 C.F.R. § 42.104(a)

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.


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II. SUMMARY OF ISSUE PRESENTED

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 subscriber’s 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

subscriber’s 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 user’s terminal. The issue is


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whether the claims of the ’749 patent would have been obvious in view of this art.

III. INTRODUCTION AND BACKGROUND

A. PMC’s Patent Strategy

PMC is a patent licensing entity. In 1981, inventors Harvey and Cuddihy

filed Application No. 317,510 which had a 22-column specification and issued as

U.S. Patent No. 4,694,490 (“the ’490 patent”). The ’490 patent and one other

continuation application issued in 1987 and expired a decade ago. Six years after

the filing of the original 1981 application, PMC filed a continuation-in-part that

discarded the original 22-column specification filed in 1981 and substituted a new

specification that spanned over 300 columns.

Hoping to take advantage of the patent term applicable to applications filed

before June 8, 1995 (the date that the new patent term laws took effect), PMC filed

328 virtually identical continuation applications in the months leading up to that

date. PMC’s strategy was clear: to overburden the Patent Office, delay the

prosecution of its patent applications, watch various industries develop, pursue

broad and overlapping claims in hundreds of patent applications containing claim

sets that bear little resemblance to the original disclosure, and assert its patents

against later-developed technology.

PMC’s prosecution strategy has proved to be successful. As described in

more detail below, the Patent Office has been unable to meaningfully examine the


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applications, even when anticipatory prior art has been identified, due to the

burdens caused by PMC’s filing and prosecution strategy. Moreover, as a result of

PMC’s prosecution strategy, the ’749 patent did not issue until September 20,

2010, and will not expire until 2027. Thus, PMC has managed to secure at least 40

years of patent protection for claims that far exceed the scope of any invention that

Harvey and Cuddihy may have conceived in the 1980s.

Over time, PMC sought broader and broader claims, including claims that

contained no reference at all to the broadcast or cablecast (point-to-multipoint)

transmissions described in its specifications. Instead, PMC began referring to

“transmissions” instead of “broadcast or cablecast transmissions,” “programming”

instead of “television programming,” and eliminating television-specific

components such as tuners and television receivers, all in an attempt to cover later-

developed technology that PMC did not invent—the Internet.

PMC now contends that the ’749 patent covers every website that makes

encrypted content available for download—every website in which you can read a

description of a book before downloading it, every website in which you can watch

a preview before viewing a movie, and every website that sells music. PMC now

contends that its claims cover point-to-point, on-demand, Internet-based

communications—the very opposite of the systems described in the ’749 patent.

In view of PMC’s contentions regarding the scope of the ’749 patent’s


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claims, and the Patent Office’s inability to meaningfully review the claims at issue

during prosecution, Unified respectfully requests that the Board grant this petition

and revisit the patentability of the claims of the ’749 patent.

B. Exemplary Embodiment Describing the Claimed Invention

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 679-

681. 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. Five minutes later, another signal is transmitted that

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 References to patents are provided herein as column:line.


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the 567 order was placed by the viewer and all necessary equipment was enabled.”

Id. at 20:43-47. The signal processor subsequently transfers the data in its data

recorder via telephone to a remote site for billing purposes, which can determine

that the recipe was received. Id. at 20:55-59.

The Julia Childs example is neither incorporated by reference nor copied in

the ’749 patent. Instead, the applicants included a different embodiment, in which

the cooking show is the “Exotic Meals of India.” A recipe for the cooking show is

promoted in a similar manner as in the Julia Childs example, and subscribers are

prompted to enter a code, TV567#. Ex. 1001 at 242:63-243:23. At each receiver

station where the code has been entered, certain information (including “particular

program unit information and TV567# information”) is stored at the buffer. Id. at

243:24-56. 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. 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


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above—for example, in the method of the first message of example #4.” Id. at

246:26-29.

Example #4 describes a process for decrypting a message in which the

receiver station selects a “program unit identification code,” selects pre-

programmed 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 ’749 patent teaches that information in the

record may be transferred to a remote billing station via a telephone connection.

Id. at 48:45-60.

C. Representative Claim

Independent Claim 2 is representative of the independent claims at issue,

and is produced below with lettering for convenience:

2. A method for mass medium programming promotion and delivery for use

with an interactive video viewing apparatus comprising the steps of:

[a] 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;

[b] displaying said video image, said interactive video viewing apparatus

having an input device to receive input from a subscriber;

[c] prompting said subscriber for a reply, during said step of displaying said


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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;

[d] 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;

[e] 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;

[f] communicating said selected at least one of a code and a datum to a

remote site;

[g] receiving said second portion of said mass medium programming in a

second programming signal;

[h] 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

[i] delivering said mass medium programming to an output device.

Other than the basic steps of receiving the promotional material, prompting

the user, and decrypting the second portion of the programming, the additional


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elements of this claim require that the receiver station: (1) select “at least one of a

code or datum designating said second portion of said mass medium

programming”; (2) communicate that code/datum to a remote site; and (3) decrypt

the second portion of the mass medium programming by using the code/datum. In

this claim, the “communicating” step may occur after the decryption of the content,

such as when the code is transmitted via phone to a billing station, as described in

the ’749 patent.

D. Prosecution History Summary

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. In the rejection, the examiner construed the

subscriber’s 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 subscriber’s selection of the channel could


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not be the “selecting a code or datum.” Id. at 692. The examiner subsequently

indicated that the claims were allowable over the prior art of record (Ex. 1003 at

738), and a Notice of Allowance issued in August, 1998 (id. at 841). Rather than

allowing the claims to issue, PMC added 210 new claims. Id. at 940 and 943.

On March 30, 2000, a new examiner rejected all of the then-pending claims

as obvious over Jeffers (id. at 1174-1177) and Campbell (id. at 1183-1188);

however, in view of the burden associated with applying the references to all of the

limitations of the 252 pending claims, the examiner did not apply the references on

a claim-by-claim basis. Applicants responded by adding 47 more claims and

arguing that the Patent Office failed to meet its burden because it did not apply the

prior art to each pending claim. Id. at 1547-1550. Without further discussion of

Jeffers and Campbell, prosecution was suspended while related PMC applications

were reexamined. Id. at 3153. Examination of the ’749 patent resumed with

another new examiner in 2010, and the pending claims were allowed without any

further analysis of Jeffers or Campbell. Id. at 3172-3216. Accordingly, although

Jeffers and Campbell were of record during prosecution, PMC’s prosecution

strategy prevented the examiners from properly considering and applying those

references.

IV. THE EARLIEST PRIORITY DATE FOR THE CLAIMS AT ISSUE IS SEPTEMBER 11, 1987


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Under 35 U.S.C. § 120, a later-filed patent application may rely on the filing

date of an earlier application only if the claim has written description support in the

specification of the earlier-filed application. PowerOasis, Inc. v. T-Mobile USA,

Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). Any claim that depends on any new

matter in the later-filed application is only entitled to the filing date of the later-

filed CIP application. Id. at 1310. Where a claim term would receive a broader or

more inclusive claim construction in view of the later specification which includes

new matter, the claim is not entitled to the earlier filing date. Id. at 1311.

The claims at issue in the ’749 patent are not entitled to the 1981 filing date

of the ’490 patent because the claims contain terms that were defined more broadly

in the ’749 patent and therefore encompass new matter. In particular, all of the

independent claims at issue relate to methods of receiving mass medium

“programming.” The ’490 patent recognizes that numerous types of transmissions

existed. For example, the ’490 patent discloses that an intermediate transmission

station may receive satellite transmissions, microwave transmissions, television, or

other electronic input means. Ex. 1002 at 10:30-39. The ’490 patent provides that

the apparatus described therein “is configured to receive broadcast TV

transmissions and cablecast TV and radio transmissions.” Id. at 7:22-30. The

patent teaches that, “if other transmissions such as broadcast microwave

transmissions or cablecast transmission on other than standard TV and radio


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frequencies” were to be received, the components would have to be

“reconfigured.” Id. Despite its recognition of alternative transmission types, the

’490 patent expressly limits the term “programming” to mean “everything

transmitted over television or radio intended for communication of entertainment

or to instruct or inform.” Ex. 1002 at Abstract (emphasis added). Consistent with

this definition, the ’490 patent uses the term “programming” to refer to television

and radio transmissions. See, e.g., id. at 1:11-13; 1:17-18; 2:13-14; 3:35-37;

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.” Ex. 1001 at 6:28-32. 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.


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Moreover, the 1987 specification expressly included in the definition of mass

programming certain types of programming, such as “broadcast print,” and

“computer programming,” which are not disclosed in the ’490 patent.

Accordingly, the scope of the term “programming,” as used in the ’749 patent,

relies on new matter from the 1987 specification and the full scope of the claim

does not have written description support in the ’490 patent. As a result, the claims

at issue in the ’749 patent cannot obtain the benefit of the 1981 filing date.

PowerOasis, 522 F.3d at 1311.

In addition, each of the claims at issue recite the step of “decrypting”

programming. As discussed in more detail below, this term, as used in the 1987

specification, encompasses analog descramblers. Ex. 1001 at 161:27-31. To the

extent that PMC argues that the term “decrypting,” as used in the ’490 patent,

excludes analog descrambling, then the scope of the term “decrypting” was

necessarily broadened by the addition of the new matter in the 1987 CIP

application. Accordingly, the claims at issue, all of which recite “decrypting,”

cannot obtain the benefit of the 1981 filing date for this reason as well.

V. STATEMENT OF PRECISE RELIEF REQUESTED

Unified requests that the Board cancel Claims 2, 3, 9-13, 18, 24, 49 and 52-

53 of the ’749 patent based on the following grounds for unpatentability:

Ground 1: Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are unpatentable under


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35 U.S.C. § 102 as anticipated by Jeffers.


35 U.S.C. § 103 as obvious over Campbell in view of the knowledge of a person of

ordinary skill in the art.


35 U.S.C. § 103(a) as obvious over Powell in view of Guillou and the knowledge

of a person of ordinary skill in the art.

A detailed explanation of how Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are

unpatentable is set forth below in Section VIII. Additional support for each ground

of rejection are included in the Declaration of Michael O. Slinn. Ex. 1004.

Although Jeffers and Campbell both disclose pay-per-view television

systems, Grounds 1 and 2 are not redundant. Jeffers is based on an application

filed on May 1, 1985. Ex. 1005. Accordingly, Unified believes that Jeffers

constitutes prior art to the ’749 patent under 35 U.S.C. § 102(e), as the claims of

the ’749 patent are only entitled to a 1987 priority date. To the extent the claims at

issue are entitled to a 1981 filing date, or to the extent PMC attempts to pre-date

Jeffers, that reference will be inapplicable.

Campbell (Ex. 1006) was filed as a PCT application on March 31, 1981,

published as WO81/02961 on October 15, 1981, and claims priority to a U.S.

application filed on March 31, 1980 (Ex. 1007). Accordingly, Campbell


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constitutes prior art regardless of whether the claims are entitled to a 1987 or 1981

priority date. Because the applicable reference may depend on PMC’s arguments

regarding the relevant priority date, and possibly claim construction, this petition

should be granted on both grounds.

Ground 3 is based on computer technologies rather than pay-per-view

television technologies, and is therefore not redundant of Grounds 1 and 2.

VI. LEVEL OF ORDINARY SKILL IN THE ART

A person having ordinary skill in the art for purposes of the ’749 patent

would be an individual having a bachelor’s degree in electrical engineering, or

equivalent experience, and two to four years of experience in the implementation

of communications systems and controlling these systems through computer

technology. Ex. 1004 ¶ 24.

VII. CLAIM CONSTRUCTION

Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this

review, Petitioner construes the claim language such that the claims are given their

broadest reasonable interpretation in light of the specification of the ’749 Patent.

See In re Trans Texas Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007).

Because the standard for claim construction in this proceeding is different than that

used in a district court, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364,

1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner’s position herein regarding the


17

scope of the claims is not an assertion regarding the appropriate claim scope for

purposes of the co-pending litigation.

Consistent with the broadest reasonable construction standard, the Board

should construe the term “decrypting” as including analog descrambling.

Although PMC has asserted in co-pending litigation that the term “decrypting”

does not include analog descrambling, this assertion directly contradicts the

specification. The ’749 patent expressly states that the “invention” should not be

“unduly restricted,” and that it should be construed to include “conventional

descramblers, well known in the art, that descramble analog television

transmissions”:

It is obvious to one of ordinary skill in the art that the foregoing is

presented by way of example only and that the invention is not to be

unduly restricted thereby since modifications may be made in the

structure of the various parts without functionally departing from the

spirit of the invention. . . . [F]or example, the ‘Wall Street Week’

transmission may be of conventional analog television, and the

decryptors, 107, 224, and 231, may be conventional descramblers,

well[] known in the art, that descramble analog television

transmissions and are actuated by receiving digital key information.

Ex. 1001 at 161:16-31. Consistent with the ’749 patent’s teaching, a person of

ordinary skill in the art as of 1987 would understand that the term “decrypting” in

the ’749 patent includes both decrypting digital information and descrambling


18

analog signals. Id.; Ex. 1004 ¶ 38.

In co-pending litigation, PMC has identified three documents—two

decisions by the BPAI and an examiner’s office action relying on those decisions,

all of which are from the prosecution of different PMC patents—in support of its

argument that “decryption” does not include analog descrambling. However, none

of the three documents supports such a construction, because none of the decisions

addresses the portion of the specification quoted above. Ex. 1027 at 53-24; Ex.

1026 at 67-68; Ex. 1025 at 13-32. Instead, the PTO appears to have relied on the

disclosure of the ’490 patent. Ex. 1027 at 53-54; Ex. 1026 at 67-68 (incorrectly

concluding that “even if the use of decryption, at the time of filing of the instant

invention, would have been understood to include decryption of analog signals,

there is nothing in the instant Specification that would guide such an

interpretation”).

The third document on which PMC relies does not support PMC’s position.

That document is an excerpt from the prosecution history of a related application,

in which the Examiner allowed the claims over prior art that taught analog

descrambling only when the applicants agreed to amend the claims to clarify that

the decrypting step involved “digital” programming or signals. Ex. 1025 at 15.

The ’749 patent expressly defines “decrypting” in the context of the

invention as including analog descrambling. Accordingly, a person of skill in the


19

art would understand that the broadest reasonable interpretation of the term

“decrypting,” as used in the ’749 patent, includes descrambling analog signals.

Ex. 1004 ¶ 38.

VIII. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY

A. Background and State of the Art

Promoting pay-per-view programming by providing a preview, prompting

the user for payment and, upon payment, descrambling the pay-per-view program

was well known as early as the 1950s. Ex. 1004 ¶ 40. For example, U.S. Patent

No. 2,843,655 (“Gottfried”), which was filed in 1951, describes a method for

providing pay-per-view television programs in a scrambled signal with a

nonscrambled “marquee” (video) and “barker” (audio), which would “appris[e] the

user or subscriber as to the program which he may see upon acknowledging a coin

demand.” Ex. 1009 at 1:34-62. The user was provided with an indication of the

cost of the program and, when the payment was deposited (or price accepted for

later payment), the preview stopped, the scrambled programming was

descrambled, and the descrambled program was output on the television set. Id. at

3:1-5.

The transmission described in Gottfried included a signal that contained

“coin demand information” (i.e., the cost of the program) and “record information”

that could be recorded for billing purposes. Id. at 9:50-60. The “coin demand


20

information” designated the program as a program of a certain cost (e.g., 25 cents

instead of 50 cents), the descrambling was based on that information (the program

was descrambled only when the designated amount was entered or accepted), and

the amount could be communicated to a remote station (the amount could be

accepted and paid later); see also Ex. 1010 at 2:49-69 (providing a free preview on

one channel that promotes two separate pay-per-view channels).

U.S. Patent No. 4,068,264 (“Pires”), which was filed in 1976, describes an

improvement to the pay television system disclosed in U.S. Pat. No. 3,924,059

(“Horowitz”). Horowitz teaches a pay-per-view television programming system in

which an audio signal provides the information necessary for the subscriber to

decide whether or not to pay for the particular program. Ex. 1012 at 1:52-56. The

pay-per-view program itself is encoded. Id. at 1:63-2:22. Pires describes an

improvement in which a “code number” and a “program identification number” are

transmitted in the television signal. Ex. 1011 at 3:46-62. The program

identification number serves two purposes at the subscriber’s 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


21

two-way cable distribution network in which a subscriber may view a preview of

the subscription TV program and, if the proper button is pressed, a pay TV request

signal is generated and applied to an upstream signal, along with a channel code

identifier and subscriber station address code, that is sent to the provider’s

computer. Id. The provider’s computer returns a “video enable command” that

allows the viewer to watch the program. Id.; Ex. 1013 at 5:45-6:21.

PMC’s applications acknowledge that prior art pay-per-view systems

existed, but asserts that those systems are “limited” because they “lacked capacity

to identify encrypted signals then decrypt them,” and “lacked capacity to record

and also transfer information to a remote geographic location.” Ex. 1002 at 2:28-

63; Ex. 1001 at 4:64-68. This is simply incorrect. The prior art disclosed above

teaches both of these features. As discussed in greater detail below, each of Jeffers

(filed in 1985) and Campbell (filed in 1980) also disclosed these features and

render the claims at issue unpatentable.

B. The Claims at Issue Are Anticipated by Jeffers

Jeffers discloses methods for providing premium television programming or

teletext data, referred to as “impulse pay-per-view” programming, to subscribers.

Jeffers teaches that a “preview” of the available impulse pay-per-view

programming may be displayed on the TV to elicit a selection/purchase: “It may be

desirable to design the system such that a particular subscriber can preview a


22

program and then, at that time, decide whether he/she wishes to watch the program

and, hence, pay for the privilege.” Ex. 1005 at 1:48-51. “The subscriber is

notified that a program is available for authorization when the subscriber tunes to

the particular program during the preview time or show time. If the subscriber

enters the necessary authorization information, the program will be descrambled so

that it can be viewed.” Id. at 11:3-8.

Thus, Jeffers teaches the basic “promotion” steps of the claims at issue,

namely receiving a first portion of a mass medium programming (the preview),

said first portion including a video image (preview) that promotes a second portion

(premium television or teletext programming) of the mass medium programming,

displaying the video image (preview), prompting the user as to whether the user

would like to receive the second portion of the mass medium programming

(notification that authorization is necessary), receiving a reply from the subscriber

at an input device (entering necessary authorization information), and delivering

the second portion of the mass medium programming (premium television or

teletext programming) to an output device (television). Ex. 1004 ¶¶ 49-50.

Jeffers also teaches that the television signal includes a “data stream.” Id. at

3:64-66, 4:22-27; 7:7-12. The data stream includes, among other things, “program

tag information” (14:45-47) and a “common audio key” (13:60-64, 14:41-45).

Jeffers teaches that the video portion of the signal is scrambled and that the


23

audio portion is encrypted. The scrambled video is descrambled in a “video

control circuit,” where “the data stream is used to control the reconstruction of the

video signal.” Id. at 13:14-50, 23:19-30. The “encrypted audio portion” of the

data stream is then “passed to the audio decryption circuit.” Id. at 13:55-57. “The

common audio key and other program tag information” forms “the decryption key

which is fed to the audio decryption circuit.” Id. at 14:45-47. Jeffers also teaches

that the program tag number in the data stream is communicated to a billing center

via a telephone modem. Id. at 14:58-67; see also id. at 1:51-54, 15:34-41.

Thus, with respect to Claim 2, Jeffers teaches all of the remaining

limitations, namely processing the subscriber’s reply and selecting at least one of a

code and a datum (information in the data stream, including the common audio

key, other program information, and a program tag number) designating the pay-

per-view programming to authorize delivery, communicating the code or datum to

a remote site (communicating the program tag number to a billing facility via

telephone modem), and decrypting the pay-per-view programming using the code

or datum (the common audio key and program tag information). Ex. 1004 ¶¶ 49-

55. Thus, Jeffers anticipates Claim 2 and, as set forth in the claim chart below,

also anticipates the other claims at issue. Id. ¶¶ 56-62.

With respect to Claim 18, the encrypted audio constitutes “data.” Ex. 1004 ¶

58. Therefore, the analysis is the same for Claim 18 as for Claim 2, since the


24

promoted data (pay-per-view audio) is related to the mass medium programming

(preview). The “signal word” that is passed to the processor and used to decrypt

the audio data is the “common audio key.” Ex. 1005 at 14:33-47, 13:50–68.

Alternatively, Jeffers also discloses that the promoted pay-per-view

programming may be encrypted text or teletext pages. Id. at 2:15-17 (“In other

applications, one of the audio channels may be configured as a data channel for

services such as transmission of text”); 22:1-23:47 (teletext pages are decrypted).

Jeffers teaches that the teletext pages are decrypted using “decryption information

in the packet,” including the common audio key (signal word). Id. at 22:61-65,

22:17-22. Therefore, Claim 18 is also anticipated. Ex. 1004 ¶ 59.

With respect to independent Claim 49, the transmission in Jeffers includes

mass medium programming (the preview) and a control signal (data stream,

including the program information and common audio key), the mass medium

program (preview) promotes additional material related to the programming (the

pay-per-view program), and the additional material is decrypted based on the

information in the control signal (program information and common audio key).

Therefore, Claim 49 is also anticipated. Id. ¶¶ 60. Jeffers also anticipates the

dependent claims of the ’749 patent, as set forth in the claim chart below. Id. ¶¶

49-62.

C. The Claims at Issue Are Obvious Over Campbell


25

Similar to Jeffers, Campbell discloses methods for controlling access to pay-

per-view programming and information by transmitting data signals with television

broadcast signals. Ex. 1006 at 2:53-63. The video is scrambled. Id. at 5:25-35.

The data signals include both “control data” for controlling the subscriber’s

addressable converter (the receiver station) and “textual data” that may either

supplement a television program or be output on a separate all text/graphic

channel. Id.; see also id. at 12:58-68. The data may be inserted into the vertical

blanking interval of the video signal. Id. at 5:25-51.

The control data includes “channel control data” and “subscriber addressing

data.” Id. at 12:58-68. The “channel control data” includes several codes,

including a “program identification code,” which indicates whether the program is

a special event, and a “descrambling code,” which provides the converter with the

code necessary to descramble the video. Id. at 13:9-24.

The “subscriber addressing data” includes, among other things, a “channel

number code 226 and a program enable code 228 which together provide the data

necessary for the converter to be enabled so that the user can view the special

event.” Id. at 13:61-14:8. This data identifies the special event to be viewed. Id.

The “subscriber addressing data” also includes an “eligibility word 230,” which

includes a “key numbercode 236 and an eligibility threshold code 238.” Id. at

14:9-28. The key numbercode is a “special confidential authorization code which


26

is made known only to an authori[z]ed party at a given user station.” Id. The key

numbercode operates like a parental control password. If a program’s eligibility

code exceeds the eligibility threshold (for example, if a program is rated “R” and

the eligibility threshold only permits viewing of programs rated “G” or “PG”), then

the microprocessor disables the converter until the key numbercode 236 is input by

a user. Id.; see also at 13:15-18.

When the signal is received at the subscriber’s converter, a series of checks

are performed automatically by the converter to determine whether the subscriber

may have access to the program. See id. at 15:3-50; Fig. 12. In the final step of

this process, the processor (“control logic”) compares the eligibility code of the

program to the eligibility threshold in the eligibility word. Id. at 15:51-65. If the

threshold is exceeded, the control logic enables the text/graphics generator to

“generate an appropriate message for display on the television set of the user. The

message instructs the user to enter his confidential key number on the converter

keyboard 139 in order to enable viewing of the program in question.” Id. at 15:66-

16:10. The entered number is then compared with the subscriber’s key number as

provided in the key numbercode 236 of eligibility word 230. Id.; see also id. at

Fig. 12. If a match results, the control logic proceeds to enable viewing of the

programming (i.e., using the descrambling code to descramble the video). Id.

Campell further discloses that the process described therein may be used in


27

either one-way or two-way communications systems. Id. at 3:19-26, 16:17-20,

17:42-49. In the two-way communication system, pay-per-view programming is

authorized in a similar manner as for special event access in the one-way system.

Id. at 16:15-20 (“Similar procedures are followed by converter 40 in performing a

broad spectrum of functions involving one-way and two-way interactive television

and data transmission.”); 17:50-64. If the subscriber selects a channel that is “a

premium channel requiring additional billing, the system prints a message on the

television screen requiring that the subscriber key number be entered on keyboard

168.” Id. When the key number is entered correctly, the converter sends a signal

to the data control system at the head end to authorize reception of the channel. Id.

The data control system then “commands the converter to allow or disallow the

selected program and retains billing information for the service as required.” Id.

Campbell also teaches that text channels may be authorized in a similar

fashion. Id. at 16:17-20; 18:36-48. Text channels may contain information such as

weather, news, and stock information (5:5-9) or it may supplement the television

programming by, for example, amplifying various news stories, shopping

advertisements, etc. (17:28-34). The 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.” Id. at

17:24-28.


28

Thus, with respect to Claim 2, Campbell teaches a method for mass medium

programming promotion and delivery (pay-per-view programming) for use with an

interactive video viewing apparatus (an addressable converter unit with television

display) comprising the steps of: (a) receiving a first portion of said mass medium

programming (portion that is used to generate message instructing user to enter key

number) in a first programming signal, said first portion including a video image

(message generated by graphics generator) that promotes a second portion of said

mass medium programming (pay-per-view video or text); (b) displaying the video

image (message), said apparatus (addressable converter unit) having an input

device (a keyboard or controller) to receive input from a subscriber; (c) prompting

said subscriber for a reply (message requesting user key numbercode), during said

step of displaying said video image, as to whether the subscriber wants the second

portion (pay-per-view video or text) of the mass medium programming, said

interactive video viewing apparatus having a transmitter for communicating said

reply to a remote site (two-way communication components); (d) receiving a reply

from said subscriber (entry of key numbercode) at said input device (the keyboard

input), said apparatus having a processor (“microprocessor”) for processing a

reply; (e) processing said reply and selecting at least one of a code and a datum

(subscriber key numbercode, program identification code, channel number code,

and/or a program enable code) designating said second portion of said mass


29

medium programming to authorize delivery of said second portion of mass

medium programming; (f) communicating said selected at least one of a code and a

datum to a remote site (request for head end to authorize reception of the

channel/program); (g) receiving the second portion of said mass medium

programming (the requested programming) in a second programming signal (video

signal); (h) decrypting (descrambling) said second portion of said mass medium

programming by using said at least one of a code and a datum (subscriber key

numbercode, program identification code, channel number code, program enable

code, descrambling code) in response to said step of processing said reply; and

delivering said mass medium programming (the requested pay-per-view premium

programming) to an output device (television set). Accordingly, and as set forth in

the claim chart below, the claims are unpatentable as anticipated by Campbell,

provided that “decrypting” is construed to include descrambling. Ex 1004 ¶ 69.

To the extent that “decrypting” is construed to exclude analog descrambling,

the claims are unpatentable as obvious over Campbell in view of the knowledge of

a person of ordinary skill in the art, as those of skill of the art would have readily

understood, based on Campbell, that the same system could be implemented with

encrypted digital signals. Ex 1004 ¶ 72.

An alternative reading of Campbell also renders the claims at issue

unpatentable. Campbell teaches that the television program (first portion of mass


30

medium programming) may promote “textual material” (second portion of mass

medium programming) that “may amplify various new stories, shopping

advertisements and other programming briefly presented over the television

program channel.” Ex. 1006 at 17:28-34; 2:58-63 (data may “supplement a

channel television program”). Inherent in this description, or at least obvious to a

person of ordinary skill in the art, is that there must be some notification or

indication (prompt) during the television programming that the supplemental

textual information is available. Ex. 1004 ¶ 70. Even if a prompt is not displayed

on the television screen or output in audio, the presence of a TEXT button on the

keyboard would prompt the user for a reply. Ex. 1006 at Fig. 13 and 17:23-24.

The remainder of the analysis is the same as above because the text channels may

be “authorized independent of the program channels” (Ex. 1006 at 17:24-28) and

the authorization process is the same as for the pay-per-view television described

above (16:17-20). Thus, the claims at issue are alternatively unpatentable as

obvious under this reading.

The analysis above is based on the construction of “video image” that PMC

has proposed in the co-pending litigation, which is a “visual presentation that can

include single graphic.” However, to the extent that the “message” displayed in

Campbell does not constitute a “video image,” it would have been obvious to a

person of ordinary skill in the art that a “preview” for the pay-per-view


31

programming could also be provided, given the teachings of Gottfried, Sargent,

Pires, Horowitz, and Kosco. Ex. 1004 ¶ 71.

With respect to Claim 18, Campbell discloses that the promoted pay-per-

view programming may be a “complementary text channel” that may be authorized

independent of the program channels, as described above. Ex. 1006 at 16:48-59;

see also 1:65-2:3; 2:58-63; 3:8-26; 4:37-39; 14:51-66; 17:21-41; 16:17-20; 18:30-

49. In another embodiment, Campbell teaches that the data described above may

be teletext pages, which are authorized using the same process as used for other

text. See Fig. 17 & 18:50-22:34. Because the text pages are authorized in the

same manner, a “signal word,” such as a “descrambling code,” “channel number

code,” or “program enable code” would be used to descramble the text channel.

Therefore, Claim 18 is anticipated. Ex. 1004 ¶ 74.

Campbell also renders Claim 49 unpatentable because the receiver station of

Campbell receives a first information transmission that includes mass medium

programming (message indicating the pay-per-view programming is available, or

the video promoting related text) and a control signal (any of data words necessary

for descrambling, for example, the descrambling code), outputs the mass medium

programming (message) and prompts the subscriber for a reply (key number) to

receive additional material (pay-per-view program), inputs information (key

number or data) to the processor based on the subscriber’s input, detects the


32

control signal (e.g., descrambling code), receives a second information

transmission including additional material (pay-per-view television or text) in

encrypted (scrambled) form, decrypts (descrambles) the program based on the

control signal (descrambling code), and causes the programming to be output on

the TV. Ex. 1004 ¶ 76. The disclosures of Jeffers and Campbell are set forth

below:

Claim Language Disclosures in Jeffers and Campbell 2. A method for mass medium programming promotion and delivery for use with an interact-tive video view-ing apparatus comprising the steps of:

Jeffers: Jeffers discloses a method for promoting “impulse pay-per-view” programs by providing a “preview” period. Ex. 1005 at 10:57-11:2, 1:48-51. The pay per view program is output on TV (see Figure 1). The “receiver” of Jeffers includes a “keyboard input” and is interactive. Id. at 9:52-24; 10:61-64.

Campbell: Campbell discloses a two-way interactive broadcast system that allows user selection of programming and controls access to pay-per-view television programming. See Ex. 1006 at Abstract.

(a) receiving a first portion of said mass medi-um programming in a first pro-gramming signal, said first portion of mass medium programming in-cluding a video image that pro-motes a second portion of said mass medium programming;

Jeffers: Jeffers teaches that a preview version and accompa-nying embedded information of available impulse pay-per-view content (first portion of the mass medium programming represented as a video image) is transmitted to the receiver station and displayed to encourage a subscriber to purchase the impulse pay-per-view content (e.g., the second portion of the mass medium programming). Ex. 1005 at 1:48–58, 10:57–11:8, 14:54–15:41.

Campbell: Campbell teaches that the subscriber receives data (first portion of mass medium programming) that includes a message (promotion) that is displayed on the TV and requests that the user enter his “confidential key number” to receive the pay-per-view programming (second portion). Ex. 1006 at 17:55-61, 15:66-16:10, Fig. 12 (“Display message to enter key number.”).


33

Campbell also teaches that the subscriber receives a “televisionprogram” (first portion of mass medium programming including a video image) that promotes a “complementary text channel” (second portion of mass medium programming). Ex. 1006 at 17:21-34, 2:58-63.

(b) displaying said video image, said interactive video viewing apparatus having an input device to receive input from a subscriber;

Jeffers: Jeffers teaches that the preview version of available impulse pay-per-view content and additional graphics are displayed on the receiver terminal to encourage a subscriber to purchase the impulse pay-per-view content. See limitation 2(a). Jeffers also discloses that the system includes a “key-board input.” Ex. 1005 at 10:61-64, 12:51–57.

Campbell: Campbell teaches that the message requesting the user’s confidential key number is displayed on the TV. Ex. 1006 at 17:55-61, 15:66-16:10, Fig. 12 (“Display message to enter key number.”). The apparatus has an input device: “All manual user inputs required by the system are preferably keyed in on keyboard 146” or “remote control unit 140”. Ex. 1006 at 9:43-50, Fig. 13.

Campbell also teaches displaying a “television program.” Ex. 1006 at 17:21-34.

(c) prompting said subscriber for a reply, during said step of dis-playing said vid-eo image, as to whether said sub-scriber wants said second portion of said mass medi-um programming promoted in said step of displaying of said video image, said inter-active video vie-wing apparatus having a transmit-

Jeffers: Jeffers teaches that, “The subscriber is notified that a program is available for authorization when the subscriber tunes to the particular program during the preview time or show time.” Ex. 1005 at 11:3-5, 13:59-61. Jeffers discloses that the receiving unit comprises telephone communication capability for communicating information to a remote “billing center.” Id. at 1:51-54, 14:58-67.

Campbell: Campbell teaches that, “If the selected channel is a premium channel requiring additional billing, the system prints a message on the television screen requiring that the subscriber key number be entered on keyboard 168.”). Ex. 1006 at 17:55-61; see also id. at 15:66-16:10 (the subscriber is “instructed” to “enter his confidential key number on the converter keyboard 139 in order to enable viewing of the pro-gram in question”); Id. at Fig. 12 (“Display message to enter key number.”).

Campbell also discloses that the converter may be “enabled to


34

ter for communi-cating said reply to a remote site;

‘talk-back’ to the two-way interactive data communications system by way of the subscriber control bus adapter 156 and the two-way home terminal 34’.” Ex. 1006 at 11:56-60, 17:58-61 (requesting the data control system at the head end to authorize reception”), 3:19-26, 16:15-20, Fig. 10 (item 34).

Campbell also teaches that the subscriber receives a “televisionprogram” (first portion of mass medium programming) that promotes a “complementary text channel” (second portion of mass medium programming). Id. at 17:21-34, 2:58- 63. The keyboard input includes a TEXT key. Id. at Fig. 13.

(d) 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;

Jeffers: Jeffers teaches that, in response to the preview and notice that programming is available, the subscriber “presses the correct sequence of keys on the keyboard input.” Ex. 1005 at 10:61-64; see also 11:3–18 (“If the subscriber enters the necessary authorization information, the program will be descrambled so that it can be viewed.”). Jeffers also teaches that the receiver includes a “microcomputer.” Id. at 12:46– 13:13, 22:27–34.

Campbell: Campbell teaches that the subscriber inputs a reply: “When the key number is entered correctly, the converter requests the data control system at the head end to authorize reception of the channel.” Ex. 1006 at 17:58-61, 16:5-14. See 2(c), above. Campbell discloses providing instructions to “control logic 104.” “The central control logic 104 is carried out by a microprocessor unit.” Id. at 9:62-67.

Campbell also teaches that the subscriber receives a “televisionprogram” (first portion of mass medium programming) that promotes a “complementary text channel” (second portion of mass medium programming). Ex. 1006 at 17:21-34, 2:58-63. “To view the complementary text channel, the TEXT key 186 is pressed.” Id.

(e) processing said reply and se-lecting at least one of a code and a datum designat-ing said second portion of said

Jeffers: Jeffers discloses that, “If the subscriber enters the necessary authorization information, the program will be descrambled so that it can be viewed.” Ex. 1005 at 11:3-8. The input from the subscriber’s keyboard is processed by the microcomputer. Id. at 12:55-57.

Upon input of the authorization information, the system selects


35

mass medium programming to authorize delivery of said second portion of said mass medium programming;

and stores store various information in the signal’s “data stream” including the “common audio key” (id. at 13:51-69, 14:33-47) and other “program tag information” (id. at 14:45- 47), as well as the “program tag number, the day of the month and the time in hours and minutes” related to the purchase. See id. at 14:54–68; see also id. at 14:22–28, 15:22–31, 22:47-51.

Campbell: Campbell teaches the selection of various codes (“key numbercode,” “program identification code,” “channel number code,” and a “program enable code”) that designate the pay-per-view programming and are required to authorize reception of, and enable viewing of, the program. Ex. 1006 at 12:58-68, 13:9-24, 13:61-14:8, 14:9-28, 15:3-16:10, 16:5-14 (key number required to authorize reception of the program), 17:58-61 (“When the key number is entered correctly, the converter requests the data control system at the head end to authorize reception of the channel.”).

Text channels can be authorized independently (id. at 17:24- 28) and use a similar process (id. at 16:17-20).

(f)communicating said selected at least one of a code and a datum to a remote site;

Jeffers: Jeffers teaches that the “program tag number” and additional information “is passed to the impulse pay-per-view data communications processor at the billing center, either by a the telephone modem . . . or by a ‘smart card.’” Ex. 1005 at 14:54–68, 15:22–40.

Campbell: Campbell teaches that, “when the key number is entered correctly, the converter requests the data control system at the head end to authorize reception of the channel.” Ex. 1006 at 17:58-61, 13:64-68 (a special event is “identified by a channel number code 226 and a program enable code 228”), 16:15-20 (the converter follows similar procedures in one-way and two-way interactive television and data transmission).

(g) receiving said second portion of said mass medi-um programming in a second pro-

Jeffers: Jeffers discloses that the viewer receives the requested pay-per-view programming. Ex. 1005 at 1:48–58, 10:57– 11:18, 14:54–15:41.

Campbell: Campbell teaches that the requested programming is received at the receiver station in a scrambled video signal.


36

gramming signal; Ex. 1006 at 5:16-35, 9:15-26. Campbell also teaches that “additional data to supplement a channel television program” may be sent. Id. at 2:58-63, 17:21-28.

(h) decrypting said second por-tion of said mass medium pro-gramming by using said at least one of a code and a datum in re-sponse to said step of processing said reply; and

Jeffers: Jeffers teaches that the “program tag information” and the “common audio key” “form the decryption key which is fed to the audio decryption circuit.” Ex. 1005 at 14:45-47, Figs. 4-5; see also id. at 3:13–60, 6:66–7:4, 7:31–49, 13:50–68, 14:33–47, 17:28–34, 18:9–18, 18:34–47.

Campbell: Campbell teaches that, “All television channels are preferably scrambled by HVP unit 52 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. Various data is used to enable the descrambling process, including a program identification code, descrambling code, subscriber identification code, channel number code, program enable code, and key numbercode. Id. at 13:1-14:66, Figs. 11-12.

Text channels can be authorized independently (id. at 17:24- 28) and use a similar process (id. at 16:17-20).

(i) delivering said mass medium programming to an output device.

Jeffers: Jeffers discloses that the program is “descrambled so that it can be viewed.” Ex. 1005 at 11:6–8; Figs. 1; 13:3–7 (“The TV modulator receives the descrambled video signal 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 program-ming 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 televi-sion, said method further compris-ing the steps of:

Jeffers: Jeffers teaches that the signals are sent “to the television set for viewing the descrambled program.” Ex. 1005 at 13:3-7. Campbell: Campbell discloses that the subscriber station include a television that outputs video, audio, and text. Ex. 1006 at 2:53-63, 8:47-52, Fig. 1, 18:46-47, 46:57-59.


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(a) delivering in-structions to said processor; and

Jeffers: Jeffers teaches that the programming includes messages, and that “[e]ach message contains instructions to control a function of the addressed receiving unit.” Ex. 1005 at 4:1–8; see also id. at 14:8–45, 13:41–59, Figs. 2A, 2B, 7.

Campbell: Campbell discloses that the converter receives in-structions from the data control system: “The data control system then commands the converter to allow or disallow the selected program . . . .” Ex. 1006 at 17:58-64. Campbell also discloses providing instructions to “control logic 104” for authorizing and descrambling the programming. See generally, id. at 15:3-16:14. “The central control logic 104 is carried out by a microprocessor unit.” Id. at 9:62-67.

(b) communi-cating said deliv-ered mass medi-um programming to said output de-vice in accord-ance with said de-livered instruct-ions.

Jeffers: Jeffers teaches that the signal is processed (i.e., decrypted) according to the instructions and then output on the “television set.” Ex. 1005 at 12:46-13:13; see also id. at 13:41-59, 14:1-47.

Campbell: Campbell discloses that the converter “processes” the data-loaded television signals “and provides video and audio output for a television set.” Ex. 1006 at 8:57-52.

Claim 9 9. The method [of] claim 2, wherein said in-teractive video viewing apparatus comprises a mi-crocomputer.

Jeffers: Jeffers discloses that the receiving unit includes a “microcomputer.” Ex. 1005 at 12:46–13:13, Figs. 2B, 7, 14:8-37.

Campbell: Campbell discloses that,“The central control logic 104 is carried out by a microprocessor unit.” Ex. 1006 at 9:62-67.

Claim 10 10. The method of claim 2, wherein a storage device is opera-tively connected to said output de-vice, said method further compris-

Jeffers: Jeffers discloses that a storage device is operatively connect to the output device. See Ex. 1005 at Fig. 1, 2A, 2B, 7; see also id. at 14:33-34, 14: 22-26, 14:58-62, 22:47-55. Jeffers discloses that at least the audio portion of the pay-per-view programming is stored at a storage device (buffer). Id. at 13:55-57 (“The encrypted audio portion of the digital bit stream is buffered and passed to the audio decryption circuit 66 in serial form.”). Jeffers also discloses that teletext


38

ing the step of storing said mass medium pro-gramming at said storage device.

messages will be stored. Id.at 21:65-22:10.

Campbell: Campbell teaches that the converter contains “dis-play memory 130” which stores control data (mass medium programming). Ex. 1006 at 9:27-33. The microprocessor contains RAM and ROM memory. 9:64-67. When the mass medium programming is teletext data, “the display memory 130 is then filled with appropriate data from converter control logic unit 104 which is formatted by generator 118 and transmitted by modulator 134 for display on the user television set.” Ex. 1006 at 22:10-14; see also id. at 22:29-34 (“the selected page or sequence of pages are loaded into display memory 130”).

Claim 11 11. The method of claim 2, wherein a storage device is opera-tively connected to said processor, said method fur-ther comprising the step of:

storing, at said storage device, an instruct signal which is effective to process a sub-scriber reaction to a content of an information transmission which includes said mass medi-um programming.

Jeffers: Jeffers discloses that the receiver unit includes a storage device. See Claim 10. The storage device is operativelyconnected to the “microcomputer” and the “microcontroller.” Ex. 1005 at 14:33-34 (“The main functions of microcontroller 74 are to accept, store, and locate decryption keys.”); id. at 14:22-26 (storage of “subscriber passcode information, the parental control key, decryption keys, and subscription authorization data”); id. at 14:58-62 (“the decoder will store the program tag number, the day of the months and the time in hours and minutes when the program was purchased by the subscriber.”). See id.; see also id. at Fig. 1, 2A, 2B, 7. Jeffers teaches that, “If the subscriber enters the necessary authoriza-tion information, they program will be descrambled so that it can be viewed.” Ex. 1005 at 11:6-8, Col. 14 – Col. 18 (de-scribing processing).

Campbell: See Claim 10, above. Campbell teaches that various data and instructions are stored at the decoder and enable the converter to process the subscriber’s input and enable viewing of the programming. Ex. 1006 at 11:66-12:26, 15:66- 16:14, 17:21-28, 17:58-64.

Claim 12 12. The method of claim 11, fur-ther comprising

Jeffers: Jeffers discloses that “the decoder will store the pro-gram tag information” and other information, and that such information is “passed to the impulse pay-per-view data


39

the step of:

storing, at said storage device, an instruct signal which is effective to establish com-munications with a remote station.

communications processor at the billing center, either by the telephone modem . . . or by a ‘smart card.’” Ex. 1005 at 14:58-68; id. at 15:34-40 (“the real time controller 10 com-mands the decoder 32 to pulse dial the billing center computer 14 to relay the previous period impulse pay-per-view activity to the billing center computer 14”); id. at 23:13-27 (“the header contains a unique combination of data” which, “when used in conjunction with information stored in the decoder memory . . . controls . . . billing procedures and various other control functions”).

Campbell: Campbell discloses that when the “key number” (instruct signal) is entered correctly, “the converter requests the data control system at the head end to authorize reception of the channel.” Ex. 1006 at 17:55-64.

Claim 13 13. The method of claim 2, wherein a storage device is opera-tively connected to said processor, said method fur-ther comprising the step of:

storing, at said storage device, a signal which is effective to control said inter-active video vie-wing apparatus to receive infor-mation to at least one of supple-ment said video image and to pro-cess said mass medium pro-

See Claim 11 for “storage device is operatively connected to said processor.”

Jeffers: Jeffers discloses storing “control signals” in the form of a “data stream” (see Abstract), such as the “common audio key,” the “program tag information,” or decryption keys, which are effective to control the receiver to process (i.e., decrypt the audio and descramble the video) the mass medium programming. Ex. 1005 at 14:15-47.

The subscriber’s input (id. at 11:6-8) also meets this limitation, because it controls the receiver to receive information (the pay-per-view program) that supplements the video image (preview).

Campbell: Campbell discloses the entry of the subscriber key number (signal) enables the converter to receive and process the pay-per-view programming, which supplements the message (video image). Ex. 1006 at 17:58-61, 16:2-14. The subscriber may also select data that “supplement[s] a channel television program.” Id. at 2:58-63, 17:21-28.

The subscriber input also constitutes the claimed “signal.”

See limitations 2(e)–(i).


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gramming. Claim 18 (See Claim 2. Only new/different limitations are addressed below) “receiving mass medium pro-gramming in a first programming signal, said mass medium pro-gramming inclu-ding information that promotes [re-lated] data”

Jeffers: Jeffers discloses that the promoted pay-per-view pro-gramming may be encrypted data, including teletext pages. Ex. 1005 at 2:15-17 (“In other applications, one of the audio channels may be configured as a data channel for services such as transmission of text”); id. at 22:1-23:47 (describing an embodiment in which teletext pages are decrypted).

Campbell: See Claim 2.

In addition, Campbell teaches that data such as “weather, stock market quotations, continually-updated news stories, shopping information, television listings and so forth” may be provided on a complementary channel. Ex. 1006 at 16:48-59; see also 1:65-2:3, 2:58-63, 3:8-26, 4:37-39, 14:51-66. “Text channels can be authorized independent of the program chan-nels.” Id. at 17:21-41. Text channels may be authorized in a process similar to the television programming. Id. at 16:17-20; see also id. at 18:30-49. In another embodiment, Campbell teaches that the data described above may be teletext pages, which are authorized using the same process as used for other text. See id. at Fig. 17 & 18:50-22:34.

passing a signal word to said pro-cessor in response to said step of processing said reply;

decrypting said data by using in-formation includ-ed in said signal word

Jeffers: Jeffers teaches that the teletext pages are decrypted using “decryption information in the packet” (signal word). Ex. 1005 at 22:61-65; see id. at 22:17-22 (disclosing program authorization information, encrypted common audio key, program blocking information necessary for decryption of the data).

Campbell: Campbell teaches that “Text channels can be au-thorized 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


41

identification code, descrambling code, subscriber identification code, channel number code, program enable code, and key numbercode. Id. at 13:1-14:66, Figs. 11-12. For text, the subscriber must also push the ENTER key enable descrambling. Id. at 18:40-49.

delivering said data to said pro-cessor.

Jeffers: The data is sent to the processor for decryption. Jef-fers also discloses that “A message type 7 will then be pro-vided to instruct the addressable controller-decoder to route the previously trapped message to the teletext display peripheral.” Ex. 1005 at 22:1-10; Fig. 7.

Campbell: “Logic 104 receives input data from the vertical interval data extractor 114 . . . Converter control logic 104 processes this information[.]” Ex. 1006 at 9:54-61; see also id. at 18:47-48 (“The converter than [sic] displays data di-rected to it by the information computer.”).

Claim 24 See Claim 9. Claim 49 [Preamble] Jeffers: The converter of Jeffers includes all of the recited

components (receiver, processor, input device, output device), all of which are operatively connected as claimed. See Ex. 1005 at 9:50-9, 12:46-14:53, Figs. 1, 2A, 2B.

Campbell: The converter of Campbell includes all of the recited components (receiver, processor, input device, output device), all of which are operatively connected as claimed. See Ex. 1006 at 8:46-10:36, Figs. 6-7.

receiving a first information transmission in-cluding mass me-dium program-ming and said control signal;

Jeffers: Jeffers discloses an information transmission including mass medium programming (the preview) and a control signal (data stream, including the program information and common audio key). See Claim 2.

Campbell: Campbell discloses that the signal includes a “message” (mass medium programming) for display on the television set of the user that “instructs the user to enter his confidential key number . . . to enable viewing of the pro-gram.” Ex. 1006 at 15:66-16:14. The signal may also include various codes (control signals), including a program identify-cation code, descrambling code, key numbercode, program enable code, etc. Id. at 13:1-14:28. The authorization process is the same for text as for scrambled television. Id. 16:15-20.


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passing said mass medium pro-gramming to said at least one output device;

outputting said mass medium programming at said at least one output device;

Jeffers: Jeffers teaches that the preview version of available impulse pay-per-view content and additional graphics are displayed on the receiver terminal to encourage a subscriber to purchase the impulse pay-per-view content. See limitation 2(a).

Campbell: Campbell teaches that the message requesting the user’s confidential key number is displayed on the TV. Ex. 1006 at 17:55-61, 15:66-16:10, Fig. 12 (“Display message to enter key number.”).

Campbell also teaches displaying a “television program.” Ex. 1006 at 17:21-34.

prompting a sub-scriber during said mass medi-um programming for a subscriber reply to receive additional materi-al related to said programming;

Jeffers: Jeffers teaches that, “The subscriber is notified that a program is available for authorization when the subscriber tunes to the particular program during the preview time or show time.” Ex. 1005 at 11:3-5, 13:59-61. Jeffers discloses that the “related material” (pay-per-view program or teletext data) relates to the preview.

Campbell: Campbell discloses that the signal includes a “message” (mass medium programming) for display on the television set of the user that “instructs the user to enter his confidential key number . . . to enable viewing of the program.” Ex. 1006 at 15:66-16:14. A subscriber may also be prompted to receive “text information” that may “supplement the television programs.” Id. at 17:21-34.

receiving said subscriber reply from said sub-scriber at said in-put device in re-sponse to said step of prompting said subscriber;

Jeffers: Ex. 1005 at 10:61-64; see also 11:3–18 (“If the sub-scriber enters the necessary authorization information, the program will be descrambled so that it can be viewed.”).

Campbell: “When the key number is entered correctly, the converter requests the data control system at the head end to authorize reception of the channel.” Ex. 1006 at 17:58-61; 16:5-14; see also id. at 17:21-34 (“To view the complementary text channel, the TEXT key 186 is pressed.”).

See limitations 2(c) and (d) above. inputting infor-mation to said processor based on said subscriber

Jeffers: Jeffers discloses that the data stream is processed once the subscriber enters the authorization information: “If the subscriber enteres the necessary authorization information, the program will be descrambled[.] Ex. 1005 at 11:6-8. “The


43

reply; digital bit stream is then passed on to the digital processing circuit 62 which includes a data processing circuit 64, a decryption circuit 66, various memories 68, 70, and 72, and a microcontroller 74.” Ex. 1005 at 13:47-50; see also id. at 13:51-47.

Campbell: Based on the subscriber’s reply, the key number as entered is “compared with the subscriber’s key number as given in key number code 236 of the eligibility word 230 as indicated at decision step 338. If the key number matches with the entered number, the converter control logic 104 proceeds to the enabling step 332[.]” Ex. 1006 at 16:5-10.

detecting said control signal;

Jeffers: Jeffers discloses detectors for detecting data in the data stream, which includes the common audio key and program information used for decryption. Ex. 1005 at 13:29-69.

Campbell: Campbell discloses, among other things, a “data extractor.” Ex. 1006 at 9:3-14, 10:37-11:24.

passing said con-trol signal to said processor based on said subscriber reply;

Jeffers: Jeffers discloses that the control signals are passed to a processor: “subscriber unit signature key and address code will be combined with the encrypted common audio key and will be processed by the microcontroller in a proprietary manner such that a common audio key will be derived. The common audio key and other program tag information will form the decryption key which is fed to the audio decryption circuit.” Ex. 1005 at 14:41-47, 13:60-69.

Campbell: Campbell discloses that “logic 104 receives input data from the vertical interval data extractor 114 and from the subscriber via the keyboard 146 . . . . In two-way cable sys-tems input is also received from the subscriber control bus 102. Converter control logic 104 processes this information and operates the various modules in converter 40 under program control.” Ex. 1006 at 9:58-61.

decrypting said additional materi-al based on said control signal

Jeffers: Jeffers teaches that the pay-per-view program is decrypted based on information in the data stream (program information and common audio key). See Claim 2.

Campbell: Campbell teaches that, “All television channels are preferably scrambled by HVP unit 52 at the head end” and descrambled by the converter “only after the proper control


44

parameters are satisfied by the converter.” Ex. 1006 at 12:10- 15. Various data is used to enable the descrambling process, including a program identification code, descrambling code, subscriber identification code, channel number code, program enable code, and key numbercode. Ex. 1006 at 13:1-14:66, Figs. 11-12. Any related text is also descrambled based on those control signals. Id. at 17:24-28 (text channels can be authorized independent of the program).

Claim 52 The method of claim 49, wherein said step of con-trolling further comprises the steps of:

enabling said control signal based on said subscriber reply; and

controlling said at least one output device based on said enabled con-trol signal.

Jeffers: Jeffers discloses that the video is descrambled and audio decrypted (control signal enabled) based on the user’s input (Ex. 1005 at 11:6-8) and that the programming is output to the television set based on the information in the data stream (id. at 13:3-7).

Campbell: Campbell teaches that any code use for descrambling (control signal) is enabled by the user’s entry of the correct key number. Ex. 1006 at 15:64-16:14.

Claim 53 The method of claim 49, wherein said receiver sta-tion includes a storage device, said additional material includes at least one of video, text, and a graphic and said step of control-ling further com-

Jeffers: Jeffers discloses that the “additional material” is premium television programming (video and audio) or text, and it is output following the preview (i.e., sequentially). Ex. 1005 at 11:3-8. Campbell: As shown above, Campbell teaches that the additional material can include television programming (video and audio) or text/graphics. Ex. 1006 at 16:48-59 (in addition to “television program channels,” the converter unit provides “complementary television text and graphics channel”). The programming is output following the message (mass medium program), i.e., sequentially. In some embodiments, the “textual


45

prises the step of:

controlling said at least one output device to output at least one of a combined presen-tation and se-quential presenta-tion of said pro-gramming and said at least one of video, text, and a graphic.

material may amplify various news stories . . . briefly presented over the television program channel.” Id. at 17:31-34.

D. The Claims at Issue Are Obvious Over Powell in View of

Guillou and the Knowledge of Person of Ordinary Skill in the Art.

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.


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1. Powell2

Powell discusses the advertising opportunities available on Britain’s Prestel

system, which a videotex system. Ex. 1014. Videotex terminals, including Prestel

terminals, include a microcomputer, added memory, a keyboard (or other input

device), a television display, and a modem for communicating with a host

computer. Ex. 1015 at 9-10. Powell discloses that there “is already a fairly well

developed advertising use of Prestel,” and that one form of advertising is by way of

a one-line banner advertisement at the bottom of the page. Ex. 1014 at 237-38.

Powell teaches that Prestel provides the opportunity to promote related information

on another page and thereby prompt the user to select that page:

Then there will be that advertising that cannot be squeezed into a

single line and here I think we will have something of a ‘come on’

advertisement slotted into related interest pages. This will be the sort

of ‘find out more – go to Page 2617.’ There has already been some

development along these lines by corporate advertisers: I can imagine

much more. For example, one could imagine Cadbury Schweppes

taking one line on pages giving their company details offering more

information and some other bonus like a Chairman’s statement on the

prospects for the next year by turning to their page.

2 Powell was published in March, 1980 and therefore constitutes prior art to the

’749 patent under 35 U.S.C. § 102(b). Ex. 1014.


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Id. at 240. This promotion and prompting is virtually identical to the promotion

and prompting disclosed in the ’749 patent, wherein a cooking show is aired and

the customer is prompted to receive additional related material (the recipe) by

entering a code. This type of cross-promotion was widely known. Ex. 1004 ¶ 83;

Ex. 1016 at 179-80 (disclosing teletext pages that contain program-related statistics

and information); Ex. 1017 at 373-75 (disclosing a Prestel page promotion system

in which promotional travel videos are cross-referenced to Prestel pages).

In general, the only limitations of the claims at issue that are not expressly

disclosed by Powell are the limitations that require the second portion of the

programming (or the “data” in Claim 18, or the “related material” in Claim 49) to

be encrypted and decrypted at the receiver station on the basis of a code/datum

(claim 1), signal word (claim 18), or control signal (claim 49). Ex. 1004 ¶¶ 82-85.

However, as set forth below, it was known in the art at the time that programming

provided via teletext or viewdata systems could be received in an encrypted format

and therefore require decryption.

2. The Knowledge of a Person of Ordinary Skill in the Art

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


48

widely adopted for a variety of uses, including the encryption of information

provided via videotex systems. Ex. 1004 ¶ 86. People of ordinary skill in the art at

the time recognized and understood that information provided on videotex systems,

like Prestel, could be encrypted. Id. at ¶ 87. Indeed, this need was well

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


49

requested and decrypted. Id.

3. 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. Id. at 3:29-61, 5:17-25. 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 6:17-

29, 7:64-69.

Guillou further teaches that a “double key system” may be used, wherein the

3 Guillou was filed on January 31, 1980, and issued on June 29, 1982. Ex. 1022.

By virtue of its publication on August 7, 1980 as WO 80/01636 (see Ex. 1028,

1029), Guillou’s disclosure is prior art under § 102(b) regardless of the priority

date to which the claims at issue are entitled.


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operating key K may be encrypted using a subscriber key Ci, resulting in a message

Mi. Id. at 8:15–58. The subscribers’ keys Ci are distributed separately to the

subscribers. Id. at 15:46–50; 16:26–29. The encrypted pages and the encrypted

messages Mi are transmitted to the user’s receiver, which uses a stored subscribers’

key Ci to decrypt and extract the operating key K from the encrypted messages Mi.

Id. at 15:66–16:10; 20:34–21:12. After decrypting operating key K, the receiver

station uses this operating key K to decrypt the encrypted content. Id. at 10:41–66.

Based on Guillou’s teaching that the encryption/decryption process

disclosed therein could apply to videotext systems in which individual pages,

rather than entire magazines, are requested and provided, a person of ordinary skill

in the art would have understood that each encrypted videotext page would have

been encrypted based on the page number as well. Ex. 1004 ¶ 93. Indeed, this is

precisely the methodology described in Varadharagjan. Ex. 1023 at xii, 134-42,

165-66 (Prestel pages are comprised of one or more “frames,” each of which may

be encrypted and decrypted using a “frame key”); Ex. 1004 ¶¶ 99-101.

A person skilled in the art would have been motivated to combine the

teaching of Powell and Guillou because Guillou itself explains that one of the

problems encountered by those providing content through such systems is how to

charge users for access to certain information. Ex. 1022 at 4:4-7; Ex. 1004 ¶ 98.

Guillou’s system is intended to solve this problem. Id. Thus, in addition to


51

numerous prior art references that teach that encryption should be used for security

purposes (Exs. 1019, 1020, 1021), Guillou teaches that the promoted content may

be encrypted to provide for access control and billing. Id. at 4:4-38. Applying

Guillou to the videotext context, it is clear that Guillou and Powell disclose all of

the claim limitations:

Claim Language Prior Art Disclosures 2. A method for mass medium programming promotion and delivery for use with an inter-active video viewing apparatus comprising the steps of:

Powell: Powell discloses a method for advertising information pages (mass medium programming) on the Prestel viewdata system. Ex. 1014 at 233. Prestel is “interactive” (id.) and information is output on a television set.

(a) receiving a first portion of said mass medium program-ming 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 program-ming;

Powell: Powell discloses a Prestel page (a first portion of mass medium programming in a first signal) that contains a visual banner advertise-ment (a video image that promotes) for related information that is available on Page 2617 (a second portion of the mass medium program-ming). Ex. 1014 at 240. Powell teaches that a page containing Cadbury Schweppes’ company details (a first portion of mass medium pro-gramming in a first signal) would include “one line” (a video image) that “offer[s] more inform-ation and some other bonus like a Chairman’s statement on the prospects for the next year by turning to their page” (promoting a second por-tion of mass medium programming). Id.

(b) displaying said video im-age, said interactive video viewing apparatus having an input device to receive input from a subscriber;

Powell: Powell discloses that the one-line “come on” advertisement is displayed. Ex. 1014 at 240. Powell discloses that the Prestel terminal has an input device to receive input from a subscriber, as the user must be able to “turn to” the page. Id.; see also, e.g., P. 235; P. 236 (“the motorist can . . . fill in replies to questions”). Prestel ter-minal have input devices. Ex. 1015 (Moore) at


52

7, 9. (c) prompting said subscriber for a reply, during said step of displaying said video image, as to whether said sub-scriber wants said second portion of said mass medium program-ming promoted in said step of displaying of said video im-age, said inter-active video viewing apparatus having a transmitter for communicating said reply to a remote site;

Powell: Powell teaches a Prestel page that in-cludes a “one line” advertisement stating “find out more – go to Page 2617”. Ex. 1014 at 240.

Powell discloses that the Prestel system is “intera-ctive.” Ex. 1017 at 233. Prestel terminals in-cluded a transmitter for communicating a user’s input to a remote site. Ex. 1015 (Moore) at 7, 9.

(d) 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;

Powell: Powell discloses that the user can “go to Page 2617” or “turn[] to [the promoted] page.” Ex. 1014 at 240.

Prestel terminals included a processor for pro-cessing a user’s input. Ex. 1015 (Moore) at 7, 9.

(e) processing said reply and selecting at least one of a code and a datum designating said second portion of said mass medium programming to au-thorize delivery of said second portion of said mass medium programming;

Powell: Powell discloses that the promoted page could be identified by “Page 2617” (a code or datum designating said second portion of said mass medium programming). Ex. 1014 at 240. Entering this page number authorizes the Prestel database to deliver that page to the user.

Guillou: Pages are identified by page number. Ex. 1022 at 3:34-36.

(f)communicating said selec-ted at least one of a code and a datum to a remote site;

Powell: The “Page 2617” information (the code/datum) is communicated to the Prestel da-tabase. Ex. 1014 at 240; Ex. 1015 (Moore) at 7, 9 (“A viewdata system does not ‘grab’ a page of information, it sends a request to the host com-puter for a specific item which is then specially sent to that ‘address.’”).

(g) receiving said second por-tion of said mass medium programming in a second pro-

Powell: Powell discloses that the user would re-ceive the information on “Page 2617” (the sec-ond portion of said mass medium programming).


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gramming signal; The page would be received in a separate programming signal. Ex. 1015 (Moore) at 7, 9.

(h) decrypting said second portion of said mass medium programming by using said at least one of a code and a da-tum in response to said step of processing said reply; and

Guillou: Guillou teaches that the page number is used to decrypt the page. Ex. 1022 at 6:17-29, Claim 1 at (B)(f).

(i) delivering said mass medium programming to an output device.

Powell: Powell discloses that “Page 2617” (the second portion of the mass medium programm-ing) is output on a “television set in the corner of the sitting room.” Ex. 1014 at 236.

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:

Powell: Powell discloses that the Prestel pages are output on a “television set in the corner of the sitting room.” Ex. 1014 at 236.

(a) delivering instructions to said processor; and

Powell: The Prestel terminals operated by pro-cessing information received from a host com-puter 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.

(b) communicating said deliv-ered mass medium program-ming to said output device in accordance with said delivered instructions.

Powell: The processed information is output to a television set. Ex. 1015 (Moore) at 8.

Guillou: Guillou further teaches that the operating key is used to decrypt the broadcast prior to display. Ex. 1022 at 7:43-8:14.

Claim 9 9. The method [of] claim 2, wherein said interactive video viewing apparatus comprises a microcomputer.

Powell: Prestel terminals contain a microcom-puter. Ex. 1015 (Moore) at 9 (“The user interacts directly with [a host] computer by accessing it directly through his own microcomputer”). Guillou: Guillou discloses that the system dis-closed therein may apply to the Prestel system.


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Figs. 9-10. Claim 10 10. The method of claim 2, wherein a storage device is operatively connected to said output device, said method further comprising the step of storing said mass medium programming at said storage device.

Powell: Prestel terminals had memory “to store [retrieved] information for later use.” Ex. 1015 (Moore) at 9.

Guillou: Guillou discloses that receiving stations may comprise a page memory, which decrypted pages pass through prior to being displayed via a display means. Ex. 1022 at 19:4-22; Fig. 9.

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:

storing, at said storage device, an instruct signal which is ef-fective to process a subscriber reaction to a content of an in-formation transmission which includes said mass medium programming.

Powell: The user’s request for “page 2617” con-stitutes an instruct signal. Ex. 1015 (Moore) at 9 (viewdata terminals have the “ability to store [re-trieved] information for later use” and can “produce, store, edit, and transmit information on command.”).

Guillou: Guillou teaches that the operating key (instruct signal) is used to decrypt (effective to process) the broadcast prior to display. Ex. 1022 at 7:43-8:14.

Claim 12 12. The method of claim 11, further comprising the step of: storing, at said storage device, an instruct signal which is ef-fective to establish communi-cations with a remote station.

Powell: The user’s request for “Page 2617” constitutes an instruct signal that is effective to establish communication with a remote station, e.g., the Prestel host computer.

Claim 13 13. The method of claim 2, wherein a storage device is operatively connected to said processor, said method further comprising the step of:

storing, at said storage device, a signal which is effective to

See Claim 11 for “storage device is operatively connected to said processor.”

Powell: Powell teaches that a signal (containing Page 2617) would be received. The information of “Page 2617” is “related” (i.e., the information supplements the video image). Ex. 1014 at 240. The Prestel terminal stores the page (signal). Ex.


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control said interactive video viewing apparatus to receive information to at least one of supplement said video image and to process said mass medium programming.

1015 (Moore) at 7-9.

Guillou: Guillou teaches storing a decryption key (signal) that allows the system to decrypt (pro-cess) the information received (mass medium programming). Ex. 1022 at 1:12-20, 7:43-47. See limitations 2(e)–(i).

Claim 18 (new or different limitations only) “receiving mass medium pro-gramming in a first program-ming signal, said mass med-ium programming including information that promotes [re-lated] data”

Powell: Powell teaches promoting related “data,” i.e., the information on Prestel page 2617. Ex. 1014 at 233.

passing a signal word to said processor in response to said step of processing said reply;

decrypting said data by using information included in said signal word

Guillou: Guillou discloses passing “operating key K” (signal word) to a processor and decrypting the page by using that key. Ex. 1022 at 6:23-25, 7:64-69, Claim 1.

In addition, Guillou discloses a message Mi, which may be considered to be the “signal word” that is passed to the processor, and the data is de-crypted by “using information included in” the message.

Claim 24 See Claim 9.

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 Guillou’s message (Mi) for decrypting the related

material (encrypted Page 2617) could be sent with the promotional page itself. Id.


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Alternatively, a person of ordinary skill in the art would have recognized

that the banner advertisement described in Powell could be used to promote

teletext pages. Id. ¶ 96. Combining Powell and Guillou in the teletext context

renders Claim 49, and its dependent claims, unpatentable. Specifically, Guillou

teaches that, in one example, “the messages Mi are grouped in a special page,

known as the access control page, which is updated each time the operating key is

changed.” Id. at 8:60-63. The access control page is distributed cyclically, like the

ordinary pages of information, and is not locked. Id. at 8:63-66. Thus, Guillou

teaches receiving a first information transmission that includes mass medium

programming (teletext information pages) and a control signal (access control

page).

Thus, the combination of Powell and Guillou teach prompting a subscriber

during said mass medium programming (display of first teletext page) for a reply

to receive additional material (information on page 2617) related to said program-

ming, receiving a reply, and inputting information to a processor. Ex. 1004 ¶ 96.

Upon selection of the additional material (page 2617), the control signal (message

Mi) would be detected, passed to the processor, and the encrypted teletext page

would be decrypted based on the control signal, Mi. 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.


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Claim 49 [Preamble] The receiver of Guillou contains the recited

components. See Figs. 9-10. (a) receiving a first information transmission including mass medium programming and said control signal;

Powell: Powell discloses receiving and output-ting a Prestel page (a first information transmission including mass medium programming).

Guillou: Guillou teaches receiving a first information transmission that includes mass medium programming (teletext information pages) and a control signal (access control page). Ex. 1022 at 8:60-66. Guillou teaches that the message (Mi) for decrypting the related material (encrypted Page 2617) could be sent separate from the encrypted page. 8:60-66.

(b) passing said mass med-ium programming to said at least one output device;

See Claim 2.

(c) outputting said mass medium programming at said at least one output device;

See Claim 2.

(d) prompting a subscriber during said mass medium programming for a subscriber reply to receive additional material related to said programming;

See Claim 2.

(d) receiving said subscriber reply from said subscriber at said input device in response to said step of prompting said subscriber;

See Claim 2.

(e) inputting information to said processor based on said subscriber reply;

See Claim 2. Powell discloses that the requested page (information) is input to a processor based on the subscriber’s request. Ex. 1014 at 233. Guillou also discloses that information (message Mi) is input to the processor based on the subscriber reply (page selection). Ex. 1022 at 9:3-12,19:35-41, 20:40-21:12, Figs. 9-10.


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(f) detecting said control signal;

Guillou: Guillou teaches that a control signal (message Mi) is detected. Ex. 1022 at Figs. 7, 9, 10; 8:55–9:12; 17:19–18:51; 19:42–20:17; 20:40–52; see also claim 1.

(g) passing said control signal to said processor based on said subscriber reply;

Guillou: Guillou teaches that the control signal message Mi is passed to the selection circuit 143, which passes the encrypted digital control signal message to the decoding circuit 145, which passes the encrypted digital control signal to a K-restoring circuit 110. Ex. 1022 at Figs. 7, 9, 10; see also id. at 16:1–10; 20:6–17.

(h) decrypting said additional material based on said control signal; and

Powell: Powell teaches that the additional material (page 2617) would be received. Ex. 1014 at 233. Guillou: Guillou teaches that the pages may be received in encrypted form. See next limitation.

(j) controlling said at least one output device to output said additional material based on subscriber reply.

Powell: Powell discloses that the information on page 2617 would be output.

Guillou: Guillou discloses that the digital in-formation portion (i.e., from digital line element 18) along with video programming (i.e., from video line element 16) are presented on a display device 20. Id. at Figs. 1, 2, 7, 9; 2:19; 7:4; 10:56; see also claim 1.

Claim 52 The method of claim 49, wherein said step of controlling further comprises the steps of: enabling said control signal based on said subscriber reply; and controlling said at least one output device based on said enabled control signal.

Guillou: Guillou teaches that decrypting Prestel pages using a decryption key (control signal) will cause the page to be displayed. Ex. 1022 at 7:43–8:14. The control signal is enabled based on the subscriber’s request for a page.

Claim 53 The method of claim 49, wherein said receiver station includes a storage device,

See Claim 2.

Powell: Page 2617 is “at least one of video, text, and a graphic” and is presented sequentially.


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said additional material includes at least one of video, text, and a graphic and said step of controlling further comprises the step of: controlling said at least one output device to output at least one of a combined presentation and sequential presentation of said program-ming and said at least one of video, text, and a graphic.

IX. SECONDARY CONSIDERATIONS CANNOT OVERCOME

THE STRONG EVIDENCE OF OBVIOUSNESS

Secondary considerations do not control the obviousness conclusion. Newell

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. Fisher–Price,

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


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Inter Partes Review trial and cancel those claims. Unified authorizes the Patent

and Trademark Office to charge any required fees to Deposit Account No. 15-

0030, including the fee as set forth in 37 C.F.R. § 42.15(a) and any excess claim

fees.

Respectfully submitted,

OBLON SPIVAK

Dated: December 31, 2014 /Michael L. Kiklis/ Michael L. Kiklis (Reg. No. 38,939) Attorney for UNIFIED PATENTS INC.

Customer Number

22850 Tel: (703) 413-3000 Fax: (703) 413 -2220 (OSMMN 07/09)


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CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies

service of a copy of this Petition for Inter Partes Review and supporting materials

on the Patent Owner by USPS Express Mail at the correspondence address of

record for the ’749 patent:

Goodwin Procter LLP 901 New York Avenue, N.W.

Washington, D.C. 20001

Courtesy copies of the foregoing Petition for Inter Partes Review and supporting

materials have also been served via USPS Express Mail on Patent Owner’s counsel

in the co-pending litigation:

Brian E. Farnan Farnan LLP

919 North Market Street 12th Floor

Wilmington, DE 19801

Dated: December 31, 2014 By: /Michael L. Kiklis/ Michael L. Kiklis Reg. No. 38,939

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