Amazon.Com, Inc. v. Personalized Media Communications, LLC

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

FINAL WRITTEN DECISION 35 U.S.C. § 318 (A) AND 37 C.F.R. § 42.73

EASTHOM, Administrative Patent Judge.

I. INTRODUCTION

Petitioner filed a Petition requesting an inter partes review of claims 1-3, 5, 9-14, 18-23, 27-32, 36-41, 45, 46, and 50-52 of U.S. Patent No. 7,783,252 B1 (Ex. 1001, "the '252 patent"). Paper 1 ("Pet."). Patent Owner filed a Preliminary Response. Paper 6 ("Prelim. Resp."). The panel instituted an inter partes review on all the challenged claims. Paper 7, 2 ("Dec. on Inst." or "Institution Decision").

Patent Owner filed a Response (Paper 22, "PO Resp.") and a contingent Motion to Amend Claims (Paper 23, "Mot. to Amend"). In response, Petitioner filed a Reply (Paper 32, "Pet. Reply") and an Opposition to the Motion to Amend (Paper 33, "Pet. Opp."). Patent Owner filed a Reply to Petitioner's Opposition. Paper 39 ("PO Reply"). The parties filed other papers, each considered but discussed below only where material. The parties presented arguments at an oral hearing before the panel, which was transcribed by a court reporter. See Paper 30 ("Tr.).

In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we determine that Petitioner has shown by a preponderance of the evidence that challenged claims 1-3, 5, 9-14, 18-23, 27-32, 36-41, 45, 46, and 50-52 are unpatentable. We also determine Patent Owner has not met its burden regarding its proposed substitute claims, and therefore, deny its Motion to Amend.

A. Related Proceedings

According to the Petition, the '252 patent is involved in Personalized Media Communications, LLC v. Amazon.com, Inc., No. l:13-cv-1608-RGA (D. Del., filed Sept. 23, 2014). Pet. 1. Granting a motion for judgment on the pleadings, the U.S. District Court for the District of Delaware found claim 13 of the '243 patent invalid as not directed to patentable subject matter. See Ex. 1040, 6-8; Pet. Reply 4-5, Paper 35, 1. Petitioner states that Patent Owner appealed that judgment in the Court of Appeals for the Federal Circuit as Appeal No. 15-2008. Paper 35, 1.

Petitioner filed petitions seeking inter partes review of related U.S. PatentNos. 5,887,243 B1 (IPR2014-001527); 7,864,956 B1 (IPR2014-01530); 8,046,791 B1 (IPR2014-01531); 7,801,304 B1 (IPR2014-01532); 7,805,749 B1 (IPR2014-01533); and 7,827,587 B1 (IPR2014-01534).

B. The '252 Patent

The '252 patent discloses a method of reprogramming a receiver station by revising an operating system of a programmable device in the receiver system. Ex. 1001, 265:20-273:25. Examples of an operating system include "PC-DOS" or "MS-DOS" for an IBM personal computer ("IBM PC"). Id. at 265:29-35. Receiver stations may include different types of programmable devices, for example, microcomputer 205, controllers 12 and 20 of signal processor 200, the RAMs associated with the processors, 39B and 39D, and decoders 203 and 282. Id. at 265:62-266:4.

C Challenged Independent Claims

Challenged claims 1, 10, 19, 28, 37, and 45 are independent. Independent claim 1 is representative and follows:

1. A method of reprogramming a receiver station, said receiver station including a programmable device of a specific version having a memory, a signal detector, and a receiver operatively connected to said signal detector, said method comprising the steps of

[a] storing information specifying said specific version of said programmable device, wherein said specific version indicates a version of an operating system executing on said

programmable device and controlling the processing capabilities of said programmable device

[b]receiving an information transmission at said receiver said information transmission including a control signal which designates a designated version of programmable device

[c] passing said information transmission to said signal detector and detecting said control signal;

[d] determining whether said specific version is said designated version in response to said control signal;

[e] communicating operating system instructions to said memory only when said step of determining determines that said specific version is said designated version, wherein said communicating comprises erasing any operating system instructions stored within an erasable portion of said memory and then storing said communicated operating system instructions within said erasable portion of said memory; and

[f] executing said communicated operating system instructions to control operation of said programmable device.

Ex. 1001, 286:50-287:10 (bracketed information added).

D. Asserted Prior Art References

Tamaru, U.S. 4,788,637 (issued Nov. 29, 1988) (Ex. 1006).

Schmidt et al., U.S. 4,558,413 (issued Dec. 10, 1985) (Ex. 1007, "Schmidt").

Daniel Nachbar, When Network File Systems Aren 't Enough: Automatic Software Distribution Revisited, USENIX ASSOC. Summer Conf. Proceedings 159-171, © 1986 by The USENIX Association (Ex. 1005).

E. Instituted Claims-35 U.S.C. § 103(a)

Claims	References
1–3, 5, 9–14, 18–23, 27–32, 36–41, 45–46, and 50–52	Nachbar and Schmidt
1–3, 5, 9–14, 18–23, 27–32, 36–39, 41, 45–46, and 50–52	Tamaru, Nachbar, and Schmidt

F. Declarants

Petitioner relies on the Declaration of Michael Lesk, Ex. 1008, and the Rebuttal Declaration of Michael E. Lesk, Ex. 1035. Patent Owner relies on a Declaration of Samuel H. Russ, Ph.D., Ex. 2009, and a Declaration of Gerald Holtzman, Esq., Ex. 2007.

Petitioner alleges that Dr. Russ's testimony should be entitled to no weight. Pet. Reply 1-2. Petitioner contends that Dr. Russ contradicts himself, could not understand several questions in his deposition, lacked sufficient understanding for some terms, and admits that he was not one of skill in the art in 1987. See id. at 1-2 (citing Ex. 1033). Petitioner also contends that Dr. Russ "was unable to explain what was known in 1987." Id. at 1 (citing Ex. 1037, 73-117). It appears from the cited testimony that Dr. Russ for the most part attempted to narrow or clarify his understanding of certain questions. See, e.g., Ex. 1035, 63-65 (discussing software update); 193 (discussing software). Regarding Petitioner's allegation that Dr. Russ was unable to testify about the state of the art in 1987, most of the questioning in the cited Exhibit concerns 1981. See, e.g., Ex. 1037, 81, 83, 177, 178. Whether Dr. Russ was one of skill in the art in 1987 is not material.

On balance, Petitioner does not explain persuasively how the cited testimony goes to a material factual issue in the case apart from the credibility of Dr. Russ. After consideration of the arguments in light of the evidence and the context, we determine that Dr. Russ's testimony is entitled to due consideration as seen below. We have weighed the Declarants' testimony based on the merits of the positions taken, including taking into account deposition testimony and other arguments and record evidence, including Motions for Observation and Responses thereto.

II. ANALYSIS

A. Claim Construction

The claims of an unexpired patent are interpreted using the broadest reasonable interpretation ("BRI") in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279-83 (Fed. Cir. 2015) ("Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA," and "the standard was properly adopted by PTO regulation."), cert, granted, Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under "the best practices for claim construction," a claim term generally carries its "'ordinary and customary meaning'"-"'the meaning that the term would have to a person of ordinary skill in the art in question. ... in view of the specification.'" In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWHCorp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)). The outcome in this case would not be altered under a BRI or Phillips claim construction standard.

Claim 1 recites in step [a] "storing information specifying said specific version of said programmable device, wherein said specific version indicates a version of an operating system executing on said programmable device." The other challenged independent claims recite a similar "storing information" limitation. Claim 1 and the other challenged independent claims also recite a determining step (step d in claim 1) or a similar step, which essentially require using the stored information to determine whether to reprogram the specified programmable device. The "storing" and "determining" limitations are the focus of the discussion below.

1. Initial Institution Decision on Claim Construction

We initially determined that "'said specific version of said programmable device' includes a variation of a programmable device indicated by the operating system it employs." Dec. on Inst. 7. We reasoned that stored information about the operating system ("OS") executing on a specific device specifies said specific version of said programmable device.

Part of our initial reasoning follows:

As the quoted passages indicate, a "version" may indicate a type or latest upgrade of an operating system. Claim 1 specifies "storing information specifying said specific version of said programmable device, wherein said specific version indicates a version of an operating system executing on said programmable device." According to this claim language, specifying a "version of said