Google LLC v. Personalized Media Communications LLC

1. Case Identification

• Case #: IPR2020-00725
• Patent #: 9,674,560
• Filed: March 21, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Personalized Media Communications LLC
• Challenged Claims: 4-10

2. Patent Overview

• Title: Method for Controlling an Intermediate Transmission Station
• Brief Description: The ’560 patent describes a three-part system for distributing media content, comprising a programming origination station, an intermediate transmission station (e.g., a cable headend), and a subscriber station. The invention is directed to methods where the origination station transmits control signals to automate the operations of the intermediate station, such as the receipt, storage, and transmission of programming to subscribers.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 4 over Torpey and Cox '645

• Prior Art Relied Upon: Torpey (a 1972 article from the Journal of the SMPTE) and Cox ’645 (Patent 4,388,645).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Torpey disclosed a network where a central office sends a "program log" (a control signal) over dedicated data lines to control a local network television station (an intermediate station). The station then selects and transmits programming to subscribers based on this log. Cox ’645 disclosed a system where a satellite (an origination station) transmits control data embedded within a television signal to control a cable headend (an intermediate station), instructing it on when to store and retransmit teletext pages. The combination of these references taught all elements of claim 4. The satellite from Cox ’645 served as the origination station, transmitting Torpey’s program log as an over-the-air control signal to Torpey’s network television station, which in turn transmitted the designated programming to a subscriber.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to improve the efficiency and reliability of Torpey’s system. Replacing Torpey’s dedicated data lines with the over-the-air transmission method from Cox ’645 would simplify infrastructure and eliminate a potential point of failure. If the data line in Torpey failed, the station would not receive the program log, even if it could still receive the programming. In the combined system, the program log would be received along with the programming itself, ensuring operational integrity.
  • Expectation of Success: Transmitting control signals embedded with television signals was a well-understood and effective technique at the time, as shown by Cox ’645, leading a POSITA to have a high expectation of success in making this combination.

Ground 2: Obviousness of Claims 5-10 over Cox '645 and Cox '404

• Prior Art Relied Upon: Cox ’645 (Patent 4,388,645) and Cox ’404 (Patent 4,393,404).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Cox ’645 taught the overall system for remotely controlling a headend to receive, store, and transmit teletext pages (units of programming) based on control signals. However, Cox ’645 described the method for storing data in page memory only as being done "in a conventional manner." Cox ’404, by the same inventors, disclosed the specific details of such a conventional storage method. Cox ’404 taught storing teletext data by using an internally generated and incremented "column address code" for each character byte stored. Petitioner argued this column address code is an "operating record" that is "alter[ed]" to "indicate... storage," directly mapping onto the key limitations of independent claim 5 that were absent from Cox '645 alone. The combination also taught the dependent claims, including using time-on/time-off codes as a "schedule" (claim 7) and programming a decoder based on a mapping between memory addresses (claims 8-10).
  • Motivation to Combine: A POSITA seeking to implement the system in Cox ’645 would need to supply the details for its "conventional" storage method. It would have been obvious to turn to contemporaneous art from the same inventors, such as Cox ’404, which explicitly described a compatible and detailed solution for storing teletext pages in a decoder's memory. The similarity of the decoders and subject matter in both patents would have provided a strong motivation to combine their teachings.
  • Expectation of Success: Because the patents shared inventors and described complementary aspects of the same technology (teletext decoders), a POSITA would have had a high degree of confidence that the specific storage method of Cox ’404 could be successfully integrated into the broader system of Cox ’645.

4. 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): While a parallel district court litigation existed, the invalidity grounds asserted in this petition were materially different. The specific combinations of Torpey with Cox ’645 and Cox ’404 with Cox ’645 were not proposed in the district court, meaning the Board would be analyzing different issues.
• §325(d): The prior art combinations were not substantively examined during the original prosecution. Torpey and Cox ’404 were merely listed in a lengthy Information Disclosure Statement (IDS) and were never applied by the examiner. While the examiner rejected claims over Cox ’645 alone, the combinations in the petition specifically addressed the deficiencies identified in that rejection by providing the missing elements from Torpey and Cox ’404, respectively. Therefore, the petition raised new arguments not previously considered by the USPTO.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 4-10 of the ’560 patent as unpatentable under 35 U.S.C. §103.