PTAB

IPR2020-00723

Google LLC v. Personalized Media Communications LLC

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Television Network Programming and Multimedia Presentation
  • Brief Description: The ’217 patent discloses a television network and method for controlling the reception and presentation of multimedia content. The system combines a standard television program with embedded digital data, which a receiver station uses to generate and superimpose text or graphics onto the video display for the user.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Campbell (WO 81/02961) and Millar (GB 1,370,535).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Campbell taught the fundamental architecture of the challenged claims. Campbell described an addressable cable television system where a head-end station transmits text and graphics (teletext) within the vertical blanking interval of a television broadcast to a subscriber receiver station. The receiver station contains a microprocessor-based converter that extracts this digital data, stores it in memory (display memory 130), and uses a text/graphics generator to display it. Campbell also disclosed using eligibility codes to control access to programming based on content. Petitioner asserted that Millar, which taught superimposing captions or sub-titles on a television picture using similar teletext technology, supplied the missing element of creating a "multimedia presentation." The combination of Campbell's system for transmitting and processing data with Millar's specific application of displaying that data as an overlay on video rendered the claims obvious.
    • Motivation to Combine: A POSITA would combine Campbell and Millar to improve the functionality of Campbell's system. Millar explicitly stated that providing captions benefits deaf viewers. A POSITA would have been motivated to adapt Campbell’s analogous teletext system to provide this well-known feature, thereby enhancing its utility and reaching a broader audience.
    • Expectation of Success: Petitioner contended there was a high expectation of success. Campbell’s system was already capable of superimposing text, such as a channel number, over a video picture. Modifying this existing capability to instead display captions, as taught by Millar, would have been a predictable substitution of one type of text data for another, requiring no undue experimentation.

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

  • Prior Art Relied Upon: Campbell (WO 81/02961), Millar (GB 1,370,535), and Thonnart (Patent 4,413,281).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative for the specific limitation of "identifying content of said second medium" (i.e., the caption data). Petitioner argued that if the Board found the "character codes" in Millar insufficient to teach this limitation, Thonnart provided the missing disclosure. Thonnart taught a system for simultaneous teletext and analog signal transmission that used "identifying messages" to ensure the digital teletext data was transmitted synchronously with its corresponding analog program information. A detector in the receiver was described as being "sensitive to the identifying material." Petitioner argued this directly taught using an identifier to link the secondary data medium (captions) to the primary video medium.
    • Motivation to Combine: A POSITA seeking to implement the captioning feature of Millar into the Campbell system would be motivated to ensure the captions were accurately synchronized with the correct television program. Thonnart provided a known and effective method for achieving this synchronization through the use of identifying messages. This would improve the efficiency and reliability of the combined system by preventing the display of incorrect or mismatched captions.
    • Expectation of Success: Success would have been reasonably expected. Campbell's system already transmitted various forms of control data in the vertical interval. Integrating Thonnart's "identifying messages" into this existing data stream would have been a straightforward and predictable modification for a POSITA.

4. Key Claim Construction Positions

  • "plurality of media": Petitioner’s argument relied on the position that a conventional television signal (carrying picture and sound information) and a digital data signal (carrying text/caption information) constitute two distinct media. This interpretation was crucial for meeting claim limitations requiring "at least two media" or a "plurality of media." Petitioner noted that the Board had previously explained that picture/sound information and text/graphics information are two different media during the patent's prosecution history.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314 or §325 would be improper. It was asserted that the parallel district court proceeding would not analyze the same issues, as the IPR challenged claims (e.g., dependent claims 7 and 8) not at issue in that litigation. Furthermore, Petitioner contended that the examiner during original prosecution never considered the specific prior art combinations of Campbell, Millar, and Thonnart as presented in the petition, meaning the IPR did not present redundant arguments. Petitioner also noted that a prior IPR filed by Samsung on the ’217 patent was terminated before a patent owner response or Board decision and relied on different prior art and theories, making it inconsequential to the present case.

6. Relief Requested

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