Google LLC v. Personalized Media Communications LLC

1. Case Identification

• Case #: IPR2020-00719
• Patent #: 8,739,241
• Filed: March 21, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Personalized Media Communications LLC
• Challenged Claims: 16, 17, 22, 23, 25, 27, 30, 31, 33-37, and 39

2. Patent Overview

• Title: System for Controlling Media Delivery and Reception
• Brief Description: The ’241 patent relates to a three-part system for controlling television programming, comprising an origination station, an intermediate transmitter station (e.g., a cable head end), and a receiver station. The system uses control signals originating from the first station to manage how the intermediate station transmits content to the end receiver station.

3. Grounds for Unpatentability

Ground 1: Claims 16, 22, 23, 25, 27, 30, 31, 33-35, and 39 are obvious over Cogswell and Cox.

• Prior Art Relied Upon: Cogswell (Patent 4,331,974) and Cox (Patent 4,388,645).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cogswell teaches a system for targeted substitution of commercials at a cable head end (intermediate station) for specific households (receiver stations) based on control signals from a central processor. Cox teaches a system where a satellite (origination station) transmits teletext pages and control data (including time-of-day codes) to a head end, enabling automated, timed rebroadcasting. Petitioner asserted that combining these systems maps to the claimed invention, where Cox’s satellite is the origination station, Cogswell’s head end is the intermediate station, and Cogswell’s panelist station is the receiver station.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to improve Cogswell’s system with known, advantageous techniques from Cox. Specifically, a POSITA would automate Cogswell’s timed commercial transmissions using Cox’s time-of-day code and would use Cox’s efficient satellite delivery to transmit the substitute commercials and control data to the head end.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying known automation and transmission techniques from one cable television system (Cox) to another (Cogswell) to achieve the predictable benefits of automation and efficiency.

Ground 2: Claims 17 and 37 are obvious over Cogswell, Cox, and Campbell.

• Prior Art Relied Upon: Cogswell (Patent 4,331,974), Cox (Patent 4,388,645), and Campbell (Patent 4,536,791).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Campbell’s teachings on content scrambling/descrambling and user feedback to the base combination of Cogswell and Cox. Campbell discloses using embedded control signals (“words”) to authorize descrambling of programming for specific subscribers. Petitioner argued that Cogswell’s terminal commands, which target specific panelists, could analogously be used to authorize decryption of the substitute commercials. Campbell also discloses a two-way system for processing user responses for test marketing.
  • Motivation to Combine: A POSITA would add Campbell’s encryption/decryption functionality to the Cogswell/Cox system to prevent unauthorized interception of the substitute commercials, which are intended only for select panelists in a market research study. Further, a POSITA would integrate Campbell's user-response feature to more efficiently gather panelist feedback on the commercials, a stated objective of the Cogswell system.

Ground 3: Claim 36 is obvious over Cogswell, Cox, and Cox ’404.

• Prior Art Relied Upon: Cogswell (Patent 4,331,974), Cox (Patent 4,388,645), and Cox ’404 (Patent 4,393,404).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds the "mixed format" display capability from Cox ’404 to the base Cogswell/Cox combination. Cox ’404 teaches superimposing a teletext page over a normal video image. Petitioner argued that the substitute commercial from Cogswell could be considered an "incomplete video image" that is completed by delivering supplemental teletext information, as taught by Cox '404.
  • Motivation to Combine: A POSITA would be motivated to enhance the viewing experience of the substitute commercial by supplementing it with related textual or graphical information (e.g., product details, purchasing information). Cox '404 provides a known method for achieving this by superimposing teletext over video, making it a logical addition to the Cogswell/Cox advertising system.

Ground 4: Claims 23, 25, and 27 are obvious over Cogswell, Cox, and Haselwood.

• Prior Art Relied Upon: Cogswell (Patent 4,331,974), Cox (Patent 4,388,645), and Haselwood (Patent 4,025,851).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augments the Cogswell/Cox combination with Haselwood's teaching of embedding a unique "code identifying the program" within a television signal to allow for monitoring. Petitioner asserted this identifying code would be added to the substitute commercials transmitted in the Cogswell/Cox system.
  • Motivation to Combine: A POSITA would add Haselwood's program-identifying code to the substitute commercials to improve the monitoring of which commercials were received and displayed by panelist stations. This directly addresses a primary goal of the Cogswell market research system by applying a known monitoring technique from Haselwood.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on co-pending district court litigation would be improper. The petition asserted that the IPR raises different issues, as it challenges dependent claims not at issue in the litigation and relies on prior art combinations (involving Campbell, Cox ’404, and Haselwood) that have not been briefed or proposed in court.
• Petitioner also argued against denial under §325(d), contending that the asserted art combinations are materially different from the art considered during prosecution. It was argued that the primary reference, Cogswell, though listed in an Information Disclosure Statement, was never used by the examiner to reject any claims. Petitioner asserted the examiner erred by allowing the claims after amendments, because the limitations added were taught by the unconsidered Cogswell and Cox combination.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 16, 17, 22, 23, 25, 27, 30, 31, 33-37, and 39 of Patent 8,739,241 as unpatentable under 35 U.S.C. §103.