Google LLC v. Personalized Media Communications LLC

1. Case Identification

• Case #: IPR2020-00721
• Patent #: 7,865,920
• Filed: March 21, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Personalized Media Communications LLC
• Challenged Claims: 7-10

2. Patent Overview

• Title: Integrated System of Programming Communication
• Brief Description: The ’920 patent describes a method for communicating programming to subscribers within a network comprising origination stations, intermediate transmission stations (e.g., cable head ends), and subscriber stations. The invention focuses on storing and transferring units of programming based on processing stored data about predetermined transmission station capacities.

3. Grounds for Unpatentability

Ground 1: Claims 7-10 are obvious over Lovett in view of Cox.

• Prior Art Relied Upon: Lovett (Patent 4,450,477) and Cox (Patent 4,388,645).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lovett discloses the fundamental network architecture required by claim 7, including origination stations (sources of satellite signals), intermediate transmission stations (head ends and control stations), and subscriber stations. Lovett’s system stores and transfers programming from a central computer with disk storage to subscriber-side equipment. Cox, a known teletext system, was alleged to supply the missing details for managing content transmission. Cox teaches transmitting units of programming (teletext pages) along with identifying data (headers containing time-on/time-off codes) that instruct an intermediate station (a head end) when to retransmit the content. The combination of Lovett’s architecture with Cox’s content management method was asserted to teach all limitations of independent claim 7. Lovett alone was argued to teach the additional limitations of dependent claims 8 and 9 concerning selective communication devices (switches), and the combination teaches claim 10’s limitation of embedding data in a signal.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the systems to improve Lovett’s architecture with a known and advantageous method for distributing time-dependent content from Cox. This combination would prevent the dissemination of stale information, a known problem that Cox was designed to solve, making the resulting system more efficient and desirable.
  • Expectation of Success: A POSITA would have a high expectation of success because Lovett expressly discloses improving upon known teletext systems, and Cox is an example of such a system. The combination involved applying known techniques for their intended purposes.

Ground 2: Claims 7-10 are obvious over Lovett in view of Cox and Olsen.

• Prior Art Relied Upon: Lovett (Patent 4,450,477), Cox (Patent 4,388,645), and Olsen (Patent 4,536,837).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Olsen to the Lovett/Cox combination to explicitly address the claim limitation of "processing...data of one or more predetermined transmission station capacities" to identify a storage location. Petitioner argued that while Lovett discloses using a computer with magnetic disk storage, it does not detail how disk space is managed. Olsen teaches a conventional disk file management system that uses a free space map (a form of capacity data) to track and allocate available storage pages, thereby preventing data from being overwritten. A computer implementing Lovett's system would inherently use such a conventional operating system feature to manage its storage.
  • Motivation to Combine: A POSITA implementing the storage system in Lovett would not have reinvented a method for disk space management. Instead, they would have been motivated to use a known, conventional, and reliable technique like that taught by Olsen to allow the computer to function properly. Olsen provides express motivation by highlighting its minimal overhead and resistance to failures.
  • Expectation of Success: Success was expected because this combination merely applies a standard, fundamental computer science technique (disk management) to a computer-based system (Lovett’s).

Ground 3: Claims 7-10 are obvious over Lovett in view of Cox and Knight.

• Prior Art Relied Upon: Lovett (Patent 4,450,477), Cox (Patent 4,388,645), and Knight (Patent 4,477,847).
• Core Argument for this Ground:
  • Prior Art Mapping: Similar to Ground 2, this ground adds Knight to the Lovett/Cox combination as an alternative teaching for managing storage based on capacity. Knight discloses a system for recording television signals to discs by storing the status of all available tracks in the computer's memory. The system then automatically records on the next available track. This "available track" information constitutes capacity data that is processed to identify a storage location.
  • Motivation to Combine: The motivation is identical to that for combining Olsen: a POSITA would integrate a known and effective storage management technique into Lovett’s system. Knight provides an express motivation for its use: protecting the system from "inadvertent or unauthorized erasure or over recording."
  • Expectation of Success: A POSITA would have a high expectation of success in applying Knight's conventional storage management solution to the computer system disclosed in Lovett.

4. Key Claim Construction Positions

Petitioner stated the claims are unpatentable under any reasonable construction but noted the following disputed terms from related district court litigation:

• "intermediate transmission station[s]": Petitioner asserted this term should be given its plain and ordinary meaning. The patent owner agreed, while the co-defendant in litigation proposed "A station that receives and retransmits transmissions sent over-the-air from one location to many locations."
• "units of audio or video programming": Petitioner argued for plain and ordinary meaning. The co-defendant proposed that the term must refer to the "same 'units' throughout the claim."

5. Arguments Regarding Discretionary Denial

Petitioner argued that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be improper.

• §314(a) (Fintiv Factors): Petitioner contended that the IPR and the parallel district court proceeding do not analyze the same issues. Specifically, the IPR challenges dependent claim 10, which is not at issue in the district court litigation. Furthermore, the prior art combinations asserted in the petition (relying on Lovett, Olsen, and Knight) were not part of the invalidity contentions in the court case.
• §325(d) (Same or Substantially the Same Art): Petitioner argued the asserted art is materially different from the art considered during prosecution. The Examiner’s allowance was based on overcoming Cox, but the Examiner never considered Lovett, Olsen, or Knight. These new references were argued to directly teach the very features the Examiner found lacking in Cox, namely, storing and transferring programming based on processing capacity data.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 7-10 of Patent 7,865,920 as unpatentable under 35 U.S.C. §103.