Amazon.Com, Inc. v. Personalized Media Communications, LLC

• Decision Date: 01 April 2016
• Docket Number: IPR2014-01531
• Parties: AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC, Petitioner, v. PERSONALIZED MEDIA COMMUNICATIONS, LLC, Patent Owner. Patent 8,046,791 B1
• Court: Patent Trial and Appeal Board

AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC, Petitioner, v. PERSONALIZED MEDIA COMMUNICATIONS, LLC, Patent Owner.

Patent 8,046,791 B1

No. IPR2014-01531

United States Patent and Trademark Office, Patent Trial and Appeal Board

April 1, 2016

PETITIONER: Brenton R. Babcock Colin B. Heideman Kent N. Shum KNOBBE, MARTENS, OLSON & BEAR, LLP

PATENT OWNER: Stephen T. Schreiner Phong Dinh GOODWIN PROCTER LLP Thomas J. Scott, Jr., Vice President & General Counsel PERSONALIZED MEDIA COMMUNICATIONS, LLC

Before KARL D. EASTHOM, TRENTON A. WARD, and GEORGIANNA W. BRADEN Administrative Patent Judges.

FINAL WRITTEN DECISION 35 U.S.C. § 318 AND37 C.F.R. § 42.73

WARD Administrative Patent Judge.

I. INTRODUCTION

We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 18-20 of U.S. Patent No. 8,046,791 B1 (Ex. 1001, "the'791 patent") are unpatentable. We also determine that Patent Owner has not met its burden on its Motion to Amend regarding entry of the proposed substitute claims, and thus, we deny the Motion to Amend.

A. Procedural History

Amazon.Com, Inc. and Amazon Web Services, LLC ("Petitioner") filed a Petition (Paper 1, "Pet.") to institute an inter partes review of claims 18-20 of the '791 patent. Personalized Media Communications, LLC ("Patent Owner") filed a Preliminary Response (Paper 6, "Prelim. Resp."). Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review on two grounds that: (1) claims 18-20 are unpatentable under 35 U.S.C. § 103 in view of Cookbook Guide^[1] and Sedman^[2]; and (2) claims 18-20 are unpatentable under 35 U.S.C. § 103 in view of Lockwood^[3] and Sedman. See Paper 7 ("Dec. to Inst."), 27.

After institution of trial, Patent Owner then filed a Patent Owner Response (Paper 18, "PO Resp."), to which Petitioner filed a Reply (Paper 28, "Pet. Reply").

In addition, Patent Owner also filed a Contingent Motion to Amend (Paper 19), to which Petitioner filed an Opposition (Paper 29). Patent Owner then filed a Reply to Petitioner's Opposition to the Contingent Motion. Paper 43.

Patent Owner filed Observations on the Cross-Examination of Petitioner's Declarant (Paper 41), to which Petitioner filed a Response (Paper 44). Petitioner filed Observations and Amended Observations on the Cross-Examination of Patent Owner's Declarant (Papers 42 and 46), to which Patent Owner filed a Response (Paper 45).

An oral argument was held on Dec. 8, 2015. A transcript of the oral argument is included in the record. Paper 49 ("Tr.").

B. Related Proceedings

Petitioner informs us that the '791 patent is the subject of a lawsuit: Personalized Media Commc'ns, LLC v. Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. According to Petitioner, the District Court's judgment in the lawsuit has been appealed to the Court of Appeals for the Federal Circuit as Appeal No. 15-2008. Paper 31, 1. Six patents related to the '791 patent are the subject of concurrently-filed petitions for inter partes review. Pet. 1; Paper 31, 1; see IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01532, IPR2014-01533, and IPR2014-01534.

C. The 791 Patent

The '791 patent is titled "Signal Processing Apparatus and Methods" and generally relates to a unified system of programming communication. Ex. 1001, Abstr. The challenged claims relate to methods of controlling a subscriber station or receiver station to receive and execute computer programs. Claim 18 is reproduced below:

18. A method of controlling a receiver station, comprising:

storing information about a user of said receiver station at a memory of said receiver station;

receiving, at said receiver station, a first computer program transmitted from a transmitter station;

storing said first computer program in memory at said receiver station;

executing said first computer program using a processor at said receiver station to generate an order for a product by processing said information about a user of said receiver station;

receiving, at said receiver station, a second computer program transmitted from a said transmitter station;

storing said second computer program in memory at said receiver station; and

executing said second computer program using said processor, which causes said receiver station to communicate said order for a product to a remote station.

The '791 patent describes an embodiment in which a user can view a television program on cooking techniques, titled "Exotic Meals of India." Ex. 1001, 24148-51. The television program is directed to cooking a particular type offish curry that can be "mild or moderately hot and spicy, or as a vindaloo, very hot and spicy." Id. at 242:18-20.

Microcomputer 205 of the subscriber station is preprogrammed to receive and process meal recipe instructions and holds records of the size of the family of the subscriber and the tastes and dietary habits of the members of the family. Id. at 241:21-24. For example, microcomputer 205 of the subscriber station can store that a family prefers very hot and spicy foods, prefers to minimize salt consumption, and consists offour adults. Id. at 241:27-30. The '791 patent discloses that halfway through the program the host says the following:

If you are interested in cooking what we are preparing here and want a your own printed copy of the recipe tailored to your own tastes and your own shopping list for a charge of only 10 cents, enter on your Widget Signal Generator and Local Input the information that you see on your screen.

Id. at 242:21-26. The subscriber may accept the offer by entering the associated code, "TV567#," into the keyboard of specific local input 225, which is then processed by controller 20 at the subscriber station. Id. at 242:28-39.

Figure 7F of the '791 patent, reproduced below, illustrates a subscriber station:

(Image Omitted)

As shown above in Figure 7F, the '791 patent discloses a subscriber station having microcomputer 205, decoder 203, and TV monitor 202M. Id. at 243:29-44. The programming originating studio embeds in the transmission of the "Exotics Meals of India" programming a SPAM message that consists of an "01" header. Id. at 243:18-21. The message is received at the subscriber station and causes controller 39 of decoder 203 to load-and-execute the generate-recipe-and-shopping-list instructions at microcomputer 205, which generates information of the specific fish curry recipe and fish curry shopping list of the family of the subscriber of the subscriber station in Fig. 7F. Id. at 24343-53. The subscriber station also generates an order for ingredients based on the shopping list. Id. at 260:29-54; 262:30-33. The subscriber can be prompted by the announcer in the program to receive a personalized order by entering a code, "TV568." Id. at 260:29-44. If the subscriber enters the code, "TV568," the subscriber's shopping list will be transmitted to a local supermarket, which will deliver the items on the shopping list the following day. Id. at 260:29-50. The subscriber station can access the necessary data in the DATAOF.ITS file and record instructions at a particular location, "A: SHOPPING.EXE," which will cause the subscriber station's controller to dial a telephone number and transmit the shopping list to a computer of the supermarket chain. Id. at 261:55-262:45.

II. DISCUSSION

A. Claim Construction

In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015 ("Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA," and "the standard was properly adopted by PTO regulation), cert, granted, Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)). For sake of completeness, we also observe that the outcome of this decision remains the same under either the broadest reasonable interpretation standard or the claim construction standard under Phillips, 415 F.3d 1303. The claim construction principles discussed above, as applied to the claim terms at issue here, result in the same construction under either standard.

I. "computerprogram"

The specification of the '791 patent does not define expressly the term "computer program." The specification does make, however, multiple references to computer programs and computer program instructions, such as the following: "Computer program instructions, of the sort well known in the art, are also inputted to computer, 73, and computer, 73, is caused to execute said instructions." Ex. 1001, 18347-49 (emphasis added). Furthermore, the specification states that "[i]n order to control fundamental aspects of the processing of any given data file, such as a DATAOF.ITS or DATAOF.URS file, under control of any given computer program, such as a PROGRAM.EXE program, a computer is usually preprogrammed with an operating system that controls such fundamental aspects." Ex. 1001, 265:12-17 (emphasis added).

Patent Owner's use of the term "computer program" in the specification appears to comport with the ordinary and customary meaning of the term....