PTAB

IPR2020-00722

Google LLC v. Personalized Media Communications LLC

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1. Case Identification

2. Patent Overview

  • Title: Method of Programming Communication in a Network
  • Brief Description: The ’217 patent describes a television network and method for controlling the presentation of multimedia content. The system combines a traditional television program with embedded digital data, which is used to generate and superimpose text and graphics onto the video display for the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Millar and Keiser - Claims 1-3, 7-9, 11-12, 16-18, and 20-22 are obvious over Millar in view of Keiser.

  • Prior Art Relied Upon: Millar (GB 1,370,535) and Keiser (Patent 4,390,901).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Millar, a teletext system, teaches the core functionality of the challenged claims. Millar discloses transmitting digital data (a first medium, e.g., captions) within the vertical interval of a television signal (containing a second medium, e.g., video and audio). At the receiver, Millar separates this digital data, stores it, and generates alphanumeric information to superimpose on the television picture, creating a multimedia presentation. However, Millar does not explicitly teach determining the content of the primary television program using an identifier. Petitioner asserted that Keiser supplies this missing element. Keiser discloses a method for controlling a television receiver by transmitting program information (an identifier for content like program category, age rating, etc.) in the vertical interval. The receiver in Keiser processes this identifier, compares it to predetermined criteria, and actuates the receiver to display or record the program. The combination of Millar's multimedia display system with Keiser's content identification and control system allegedly renders the claims obvious.
    • Motivation to Combine: A POSITA would combine Keiser’s content identification with Millar’s teletext system to improve efficiency and control. This would allow a user to ensure that desired television content is automatically recorded or displayed, and that the associated data (like captions from Millar) is properly synchronized with the correct program, which is a known challenge in broadcasting.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Keiser explicitly states its method is compatible with existing teletext systems like Millar's. The program information taught by Keiser can be transmitted in the vertical interval alongside the caption data taught by Millar. Furthermore, Millar’s receiver already includes the necessary programmable components (e.g., data separators, storage, character generators) that could be readily adapted to process Keiser’s program identifiers without undue experimentation.

Ground 2: Obviousness over Millar, Keiser, and Thonnart - Claims 11-12 and 16-18 are obvious over Millar, Keiser, and Thonnart.

  • Prior Art Relied Upon: Millar (GB 1,370,535), Keiser (Patent 4,390,901), and Thonnart (Patent 4,413,281).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative for specific claims requiring "identifying content of said second medium" (i.e., the digital caption data). Petitioner argued that if the Board were to find that the combination of Millar and Keiser did not adequately teach the identification of the caption data content, Thonnart would remedy this deficiency. Thonnart discloses a system for ensuring teletext data is transmitted synchronously with its corresponding analog program information by using specific "identifying messages." These messages are received and processed by a detector in the receiver to ensure the digital text and analog video are properly aligned.
    • Motivation to Combine: A POSITA would be motivated to incorporate Thonnart’s identifying messages into the Millar/Keiser system to further improve its effectiveness. While Millar’s system uses page codes, Thonnart provides a more robust method for explicitly tethering caption data to its associated television program. This would optimize the system to ensure the correct captions are always displayed with the correct program, a clear and desirable improvement.
    • Expectation of Success: Thonnart was designed for use with a "conventional receiving set," such as the one described in Millar, meaning no significant hardware modification to the base system would be required. The only necessary change would be to adjust the code transmitted with the teletext data to implement Thonnart's design, a task well within the skill of a POSITA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314 or §325 would be improper.
  • Regarding co-pending district court litigation, Petitioner asserted that this IPR raises distinct issues, including challenges to dependent claims not at issue in the court case, and that any overlap in invalidity arguments was speculative as court contentions were not finalized.
  • Regarding §325, Petitioner argued that the Patent Owner had hampered the original prosecution process by filing over 300 related applications with up to 20,000 claims, creating a "moving target." It contended that while the Examiner had noted the asserted prior art references individually among over 2,000 cited documents, the specific invalidating combination of Millar, Keiser, and Thonnart was never considered on the merits.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 7-9, 11-12, 16-18, and 20-22 of the ’217 patent as unpatentable.