Google LLC v. Personalized Media Communications LLC

1. Case Identification

• Case #: IPR2020-00720
• Patent #: 8,601,528
• Filed: March 21, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Personalized Media Communications, LLC
• Challenged Claims: 21-29, 32, 37-39

2. Patent Overview

• Title: Broadcast Networks and Methods to Control Reception and Presentation of Videotex/Teletext
• Brief Description: The ’528 patent discloses a method for controlling the display of television programming that includes videotex or teletext overlays. The invention addresses situations where a processor is too slow to generate a complete overlay, which the claims describe as "determining the absence of complete generated television image data," and then "advancing to" subsequent information to prevent the display of an incomplete image.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 21-25 and 27 are anticipated by Marti under 35 U.S.C. §102.

• Prior Art Relied Upon: Marti (Patent 4,303,941).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marti, which discloses a videotex system using the ANTIOPE standard, teaches every limitation of the challenged claims. Marti's system was designed to detect and handle transmission errors, such as an "incomplete page" or "page loss." This error detection capability directly corresponds to the claimed step of "determining the absence of complete generated television image data." Upon detecting an error, Marti's system ceases writing the corrupted data to memory and uses control codes (e.g., "row flag code US followed by the row number") to locate and advance to the next valid row of data in the transmission. This process satisfies the limitations of "determining a location of subsequent information" and "advancing to" that information, thereby "preventing said monitor from displaying an incomplete television image."

Ground 2: Obviousness - Claims 21-29 are obvious over Marti in view of Cox.

• Prior Art Relied Upon: Marti (Patent 4,303,941) and Cox (Patent 4,393,404).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Marti provides the foundational system for detecting incomplete data and advancing to subsequent valid information. Cox teaches complementary, well-known techniques in the teletext field, including displaying teletext data as a video overlay "superimposed over the normal video image" and storing teletext data in "individually addressable 8 bit memory locations."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references for several predictable reasons. First, a POSITA would find it obvious to apply Cox's teaching of transmitting teletext within a regularly scheduled broadcast to Marti's system to provide features like closed captioning without interrupting the main program. Second, a POSITA would incorporate Cox’s video overlay method to allow users to view Marti's teletext information (e.g., stock quotes, news) while simultaneously watching the underlying program, which was a known design choice to improve user experience. Finally, a POSITA would use Cox’s addressable memory to more reliably store Marti's row data, preventing accidental overwrites and better handling non-sequential data reception.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying conventional and well-understood techniques (video overlays, addressable memory) to a known type of videotex system to achieve predictable improvements.

Ground 3: Obviousness - Claims 32, 37-39, and 26 are obvious over Marti (or Marti and Cox) in view of Parsons.

• Prior Art Relied Upon: Marti (Patent 4,303,941), Cox (Patent 4,393,404), and Parsons (Patent 4,099,258).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the system disclosed by Marti or the combination of Marti and Cox by adding the teachings of Parsons. Specifically, claim 32 requires a control signal that "clears the incomplete television image data," and claim 26 recites a step of "clearing said memory." Parsons explicitly teaches a teletext system where memory is erased or "cleared" before the "reception of new data."
  • Motivation to Combine: A POSITA would have been motivated to incorporate the memory-clearing step taught by Parsons into Marti's system as a routine design choice. When writing new teletext data to memory, a designer would choose between overwriting existing data or clearing the memory first. Parsons teaches the latter, which provides a more robust method by ensuring that no residual data from a previous page is accidentally displayed. This would be a simple and predictable modification to improve data integrity.
  • Expectation of Success: A POSITA would have expected to succeed, as implementing a memory-clearing function before writing new data was a conventional and well-known data storage technique at the time.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be improper. The IPR petition was asserted to raise different issues than the parallel district court litigation, as it challenges claims (28 and 29) not at issue in that case and relies on specific prior art combinations (Marti with Cox and/or Parsons) not asserted there. Furthermore, Petitioner contended that the asserted prior art is not cumulative of art considered during prosecution. The primary reference relied upon by the examiner (Maney) was argued to be materially different, and the art in this petition (Marti, Cox, Parsons) was never used in a rejection, despite being listed in an Information Disclosure Statement (IDS) containing thousands of references.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 21-29, 32, and 37-39 of the ’528 patent as unpatentable.