Barco Inc v. T Rex Property Ab

1. Case Identification

• Case #: IPR2017-01909
• Patent #: RE39,470
• Filed: August 3, 2017
• Petitioner(s): Barco, Inc.
• Patent Owner(s): T-Rex Property Ab
• Challenged Claims: 25 and 26

2. Patent Overview

• Title: Digital Information System
• Brief Description: The ’470 patent discloses a digital information system where a central computerized control center receives control instructions from external "information mediators" (e.g., advertisers). The control center uses these instructions to generate an "exposure list" (a schedule) that is transmitted to remote station computers, which in turn control projectors or displays at a plurality of locations.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nakamura and Cho - Claims 25 and 26 are obvious over Nakamura in view of Cho.

• Prior Art Relied Upon: Nakamura (Japanese Patent Application Heisei 07-168544) and Cho (Patent 5,566,353).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Nakamura disclosed the foundational elements of the challenged claims. Nakamura described an advertising display control system with a central "master station" (analogous to the control center) that receives control instructions from external users via terminal devices. These instructions are used to create a "reservation record" (analogous to the exposure list) that dictates what content is shown on remote "slave stations" (analogous to the display locations). The reservation record specifies the content, location, and time of display.

    Petitioner contended that while Nakamura taught a system for updating reservations, it did not explicitly teach the claimed feature of "permitting said exposure list to be dynamically updated," interpreted as updating "when and as needed." To bridge this gap, Petitioner introduced Cho. Cho disclosed a point-of-purchase video distribution network where playlists (analogous to exposure lists) could be modified "when and as needed," including "last minute" modifications made via modem to a local PC at a store. Petitioner argued that adding Cho’s flexible, "when and as needed" updating capability to Nakamura’s base system rendered the claimed invention obvious.

  • Motivation to Combine: A POSITA would combine Nakamura and Cho to achieve greater flexibility and control for end-users, a goal explicitly shared by both references. Cho taught that its "massive flexibility" in allowing last-minute updates was extremely valuable and resulted in significant savings in transmission costs, time, and memory space. Petitioner asserted these stated benefits would provide a strong motivation for a POSITA to modify Nakamura's system to incorporate Cho's method for dynamic, on-demand playlist updates.

  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success because implementing Cho's teachings would be a trivial modification. Nakamura's system already included the necessary hardware infrastructure, such as computers ("slave stations") equipped with modems at each remote location, which could receive schedule updates directly. Therefore, no significant hardware changes would be required to enable the "when and as needed" playlist updating taught by Cho.

4. Key Claim Construction Positions

• "permitting said exposure list to be dynamically updated" (Claim 25): Petitioner proposed this term should be construed as "permitting said updates to said exposure list to be updated when and as needed." Critically, Petitioner argued this construction does not require that updates are automatically or instantaneously incorporated into the exposure list in all cases, especially if the list is full. This interpretation was central to Petitioner's argument that Nakamura’s system, which queues instructions, meets the claim limitation when combined with Cho’s teachings.

• "means for generating and dynamically updating an exposure list..." (Claim 26): Petitioner contended this is a means-plus-function term under 35 U.S.C. §112, para. 6.

  • Function: (1) generating an exposure list from control instructions, and (2) dynamically updating the exposure list from control instructions.
  • Structure: A special purpose server computer programmed to perform a specific algorithm: to create an exposure list covering a set time period, and to collect, create, or allocate information relating to display control instructions and then sort or file them into the exposure list "when and as needed" (e.g., using a FIFO queue if the list is full).

5. Arguments Regarding Discretionary Denial

• Petitioner’s arguments focused on distinguishing this petition from a previously denied petition on the same patent (IPR2016-01869), effectively arguing against discretionary denial under 35 U.S.C. §325(d). Petitioner asserted that the instant petition cured the deficiencies of the prior one by:
  • Presenting a new combination of prior art: This petition asserted an obviousness ground over Nakamura in view of Cho, whereas the prior petition relied solely on an anticipation argument over Nakamura.
  • Providing proper claim construction: This petition offered a detailed construction for "dynamically updating," a term the Board found was not adequately addressed in the prior proceeding, thereby presenting a new and more complete unpatentability theory.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 25 and 26 of the ’470 patent as unpatentable.