Google LLC v. Personalized Media Commc'ns, LLC

JUDGMENT Final Written Decision Determining Some Challenged Claims Unpatentable 35 U.S.C.§ 318(a)

PETITIONER: Erika H. Arner Daniel C. Cooley Joshua L. Goldberg Cory C. Bell Sydney R. Kestle A. Grace Mills FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

PATENT OWNER: Dmitry Kheyfits Andrey Belenky Brandon Moore KHEYFITS BELENKY LLP, Thomas J. Scott, Jr.

Before GEORGIANNA W. BRADEN, JON M. JURGOVAN, and STEVEN M. AMUNDSON, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine Petitioner has shown by a preponderance of the evidence that claim 4 of U.S. Patent No. 9, 674, 560 B1 is unpatentable, but has failed to demonstrate claims 5-10 are unpatentable.

I. INTRODUCTION AND BACKGROUND

A. Procedural History

Google LLC ("Petitioner") filed a Petition requesting an inter partes review of claims 4-10 of U.S. Patent No. 9, 674, 560 (Ex. 1001, "the '560 patent"). Paper 1 ("Pet."). Personalized Media Communications, LLC ("Patent Owner") filed a Preliminary Response. Paper 9 ("Prelim. Resp."). Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims on all proposed grounds of unpatentability. See Paper 13 ("Dec. to Inst."), 58.

After institution of trial, Patent Owner filed a Patent Owner Response (Paper 15, "PO Resp."), to which Petitioner filed a Reply (Paper 21, "Pet. Reply"). Patent Owner then filed a Sur-Reply (Paper 23, "PO Sur-Reply").

An oral argument was held on June 30, 2021. A transcript of the oral argument is included in the record. Paper 29 ("Tr.").

B. Real Parties in Interest

Petitioner identifies itself as the real party-in-interest pursuant to 37 C.F.R. § 42.8. Pet. 81. Petitioner denies that its parent companies XXVI Holdings Inc. and Alphabet Inc. are real parties-in-interest. Id. at n.1. Patent Owner identifies only itself as the real party-in-interest pursuant to 37 C.F.R. § 42.8. Paper 5 (Patent Owner's Mandatory Notices), 1. There is no dispute regarding the identification of the real parties-in-interest.

C. Related Proceedings

Petitioner informs us of three district court proceedings based on the '560 patent, one of which is pending against Petitioner. Pet. 81. Patent Owner informs us of the same pending district court proceeding against Petitioner:

● Personalized Media Communications, LLC v. Akamai Technologies, Inc., No. 2:19-cv-00089 (E.D. Tex. filed March 21, 2019)

● Personalized Media Communications, LLC v. Google LLC, No. 2:19-cv-00090 (E.D. Tex. filed March 21, 2019) and

● Personalized Media Communications, LLC v Netflix, Inc., No. 2:19-cv-00091 (E.D. Tex. filed March 21, 2019).

Paper 5, 1. Although the Netflix case was filed in the Eastern District of Texas, the case was transferred to the Southern District of New York. Ex. 2003, 16-17. Patent Owner also informs us of numerous administrative matters before the USPTO such as reissue applications, ex parte reexaminations, or inter partes review proceedings of patents that belong to the same patent family as the '560 patent. Paper 5, 1-3.

D. The '560 Patent

The '560 patent was filed on May 23, 1995, issued on June 6, 2017, and is titled "Signal Processing Apparatus and Methods." Ex. 1001, codes (22), (45), (54). The '560 patent claims priority to Aug. 30, 1993 through a continuation application of related patent No. 7, 856, 650.

I. Written Description

The '560 patent describes a "unified system of programming communication" where the "system encompasses the prior art (television, radio, broadcast hardcopy, computer communications, etc.) and new user specific mass media." Ex. 1001, code (57). The '560 patent states that "[w]ithin the unified system, parallel processing computer systems, each having an input (e.g., 77) controlling a plurality of computers (e.g., 205), generate and output user information at receiver stations." Id. According to the '560 patent, its system is capable of combining "user information selectively into prior art communications to exhibit personalized mass media programming at video monitors." Id.

One embodiment disclosed in the '560 patent is Figure 1, which is reproduced below.

(Image Omitted)

Figure 1 is a block diagram of a video/computer combined medium receiver station. Ex. 1001, 9:39-40. The '560 patent discloses that via a conventional antenna, the station receives a conventional television broadcast transmission at television tuner 215. Id. at 10:52-54. The '560 patent teaches that TV signal decoder 203 has capacity for receiving a composite video transmission and detecting digitally embedded information. Id. at 10:63-66. According to the '560 patent, TV signal decoder 203 also can convert received information (by means of input protocol techniques) into digital signals that microcomputer 205 can receive and process and that can control the operation of microcomputer 205. Id. at 11:1-5. The '560 patent teaches that microcomputer 205 is a conventional microcomputer system with disk drives that is adapted to have capacity for receiving signals from decoder 203. Id. at 11:6-9.

The '560 patent further discloses that a studio or television station that originates the broadcast transmission of programming is called the "program originating studio." Id. at 1143-44. According to the '560 patent, the program is transmitted from the program originating studio "by conventional television network feed transmission means" to a large number of geographically dispersed intermediate transmission stations that can retransmit the program to millions of subscriber stations where subscribers can then view the program. Id. at 1145-50. The '560 patent teaches that the "network transmission means may include so-called landlines, microwave transmissions, a satellite transponder, or other means." Id. at 11:50-52.

The '560 patent discloses that the programming origination station sends signals to an intermediate transmission station (e.g., a local television station) that receives, performs an action(s) based on a series of embedded control instructions in the televised signal, and retransmits to at least one subscriber station for viewing by the subscriber. Id. at 11:34-12:5. The instructions may allow for content to be embedded that is unique to the subscriber such as the recording of a television program for distribution at a later time, etc. Id. at 181:8-52.

One embodiment of an intermediate transition station disclosed in the '560 patent is Figure 6A, which is reproduced below.

(Image Omitted)

Figure 6A, above, is a "block diagram of one example of signal processing apparatus and methods at an intermediate transmission station, in this case a cable system headend." Ex. 1001, 10:22-24. Figure 6A shows signal processor system 71 where "in field distribution system, 93, amplifier, 94, inputs programming transmissions to signal processor system, 71," while "amplifier, 95, inputs programming transmissions to signal processor, 96, which permits both signal processor apparatus to monitor all programming transmitted by the cable television system head end station to field distribution system 93." Id at 176:26-35. The '560 patent teaches that signal processor system 71 also has signal processor means to control signal processor system 71 to record meter-monitor information of said message information, and to transfer recorded information to external communications network 97. Id at 170:51-55.

The '560 patent specifically discloses that the signal processor is a "focal means for the controlling and monitoring subscriber station operations." Id at 15:32-36. According to the '560 patent, it has the capacity for regulating communications consumption by selectively decrypting or not decrypting encrypted programming and/or control signals and capacity for assembling and retaining meter records at each subscriber station that document the consumption of specific programming and information at said station. Id. at 15:38-44.

2. Illustrative Claims

As noted above, Petitioner challenges claims 4-10. Pet. 22-23. Independent claims 4 and 5 are illustrative of the challenged claims and are reproduced below:

4. A method of communicating image programming and computer programming to at least one subscriber in a network, said network including at least one programming origination station, at least one intermediate transmission station, and at least one subscriber station, said method comprising the steps of:

originating an information transmission containing a control signal from said at least one programming origination station designating at least a portion of a programming presentation, which is effective to accomplish:

effecting said at least one intermediate transmission station to control a computer to select a receiver and communicate said at least a portion of said programming presentation to a transmitter, and transmit to said at least one subscriber station a signal including said at least a portion of a programming presentation; and

transmitting said information transmission containing said control signal from said at least one programming origination station to said at least one intermediate transmission station.

Ex. 1001, 291:6-26.

5. A method of communicating units of programming to a subscriber in a network, said network including at least one programming origination station, an intermediate transmission station, and at least one subscriber station, said intermediate transmission station transmitting said units of programming to said