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

Decision Date22 March 2016
Docket NumberIPR2014-01534
CourtPatent Trial and Appeal Board
PartiesAMAZON.COM, INC. and AMAZON WEB SERVICES, LLC, Petitioner, v. PERSONALIZED MEDIA COMMUNICATIONS, LLC, Patent Owner. Patent 7, 827, 587 B1

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 AND 37 C.F.R. § 42.73

BRADEN, Administrative Patent Judge.


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 claim 9 of U.S. Patent No. 7, 827, 587 B1 (Ex. 1002, "the '587 patent") is unpatentable. We also determine that Patent Owner has not met its burden on its Motion to Amend regarding entry of proposed substitute claim 22, 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 claim 9 of the '587 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 of claim 9 as (1) unpatentable under 35 U.S.C. § 103 in view of Monat, [1] and (2) unpatentable under 35 U.S.C. § 103 in view of Calo[2]. See Paper 7 ("Dec. to Inst."), 41.

After institution of trial, Patent Owner filed a Patent Owner Response (Paper 20, "PO Resp."), to which Petitioner filed a Reply (Paper 32, "Reply"). In addition, Patent Owner also filed a Contingent Motion to Amend the Claim (Paper 21), to which Petitioner filed an Opposition (Paper 33). Patent Owner then filed a Reply to Petitioner's Opposition to the Motion to Amend the Claims. Paper 40 ("PO Reply").

Patent Owner filed observations on the cross-examination of Petitioner's declarant (Paper 46), to which Petitioner filed a response (Paper 49). Petitioner filed observations and amended observations on the cross-examination of Patent Owner's declarant (Papers 48, 53), to which Patent Owner filed a response and an amended response (Papers 50, 53).

An oral argument was held on December 8, 2015. A transcript of the oral argument is included in the record. Paper 54 ("Tr.").

B. Related Proceedings

Petitioner informs us that the '587 patent is the subject of a lawsuit: Personalized Media Commc'ns, LLC v., 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 35, 1. Petitioner also informs us that six patents related to the '587 patent are the subject of concurrently-filed petitions for inter partes review. Pet. 1; Paper 35, 1; see IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01531, IPR2014-01532, and IPR2014-01533.

C. The '587 Patent

The '587 patent discloses a system for using embedded signals to deliver personalized program content to a subscriber station. Ex. 1002, 7:47-48, 15:14-46. One embodiment of the '587 patent describes a remote program originating studio that transmits a commercial ("program unit Q") in a network transmission to a number of intermediate transmission stations, where each intermediate transmission station generates additional information that is included in a transmission sent to ultimate receiver stations. Id. at 193:25-57. This embodiment is illustrated in Figures 6A and 6B, reproduced below.

(Image Omitted)

Figure 6A shows one intermediate transmission station 50 controlled by a program originating studio. Id. at 19347-48. The station receives network transmissions at receiver 53 and retransmits the transmission immediately via modulator 83, shown in Figure 6B. Id. at 193:48-51.

According to the '587 patent, computer 73 of a given intermediate transmission station contains "information relevant to the particular discounts and specials in effect at the particular markets in the vicinity of said station." Id. at 193:58-66, Fig. 6A. Specifically, the information may be "local-formula-and-item information" in the form of specific values for various variables ("a, p, q, d, Z, r, s, and dd") corresponding to information such as the cost of gasoline ("p") and the distance between a given warehouse and market ("Z"). See id. at 187:9-54, 193:65-194:30. With each transmission of the commercial information from the transmitter station to a subscriber station, the computer program instructions compute the cost of delivery of a product to a particular subscriber. Id. at 186:38-46, 187:1- 9.

The '587 patent discloses that after a program originating studio transmits a "generate-set-information message (#10)" to intermediate transmission station computers 73 that includes, among other information, an execution segment, information segment information of an "intermediate generation set of Q, " and an end of file signal, then computer 73 executes a program to compile and link "local-formula-and-item information" so that computer 73 generates a specific program instruction set version-the program instruction set of Q1-that applies to the particular discounts and specials in effect at the particular markets in the vicinity of the subscriber station and at the particular time of the network transmission of Q. Id. at 195:16-196:7.

The '587 patent further discloses transmitting the complete information of the program instruction set (e.g., the first portion of the completed program unit Q1) to a receiver station based on the information of a "01" header and the address of the subscriber station microcomputers 205 (e.g., the second portion of the completed program unit Q1). Id. at 28:1-29, 46:5-24, 49:6-56. Upon receiving the completed processor instructions, the receiver station "load[s] and execute[s] at microcomputer 205, the information segment of the message." Id. Thus, the second portion of the completed processor instructions informs the receiver station to load and execute the information segment of the message, the program instruction set, at a specific processor (microcomputer 205) of the receiver station. Id. The instructions (and some data) are downloaded and each receiver station executes the instructions. Id. at 249:48-251:63. Each receiver station is a different distance from the warehouse and will compute different estimated costs for delivery of a product. Id.

Another embodiment of the '587 patent discloses that stations that send out programming transmissions use "SPAM" signals to control the handling, generating, and displaying of programming at subscriber stations. Ex. 1002, 21:34-39. SPAM signals control and coordinate a wide variety of subscriber stations. Said stations include so-called "local affiliate" broadcast stations that receive and retransmit single network transmissions. Id. at 21:40-43. The information of SPAM signals includes data, computer program instructions, and commands. Id. Data and program instructions are often recorded in computer memories at subscriber stations for deferred execution. Id. at 22:4-7. In combined medium communications (television, radio, and other media) (id. at 22:12-13), particular SPAM commands control the execution of intermediate generation sets and program instruction sets and the transmission and display of information generated by said sets (id. at 22:31-34).

According to the '587 patent, SPAM signals contain binary information of the sort well known in the art, for example: (i) including bit information required for error correction using forward error correction techniques in point to multi-point communications; (ii) using request retransmission techniques in point to point communications; and/or (iii) other error correction techniques, as appropriate. Id. at 23:17-24. The composition of a SPAM signal is shown in Figure 2E, reproduced below.

(Image Omitted)

Figure 2E illustrates that a SPAM signal commences with a header, followed by an execution segment, a meter-monitor segment, and an information segment. Id. at 23:25-33. The header, execution, and meter-monitor segments constitute a command. Id. at 23:33-35. Figure 2E also illustrates the use of "padding bits" in a SPAM signal. Id. at 28:50-56.

The '587 patent explains that to determine the composition of signal information, the fact that most computer systems communicate information in signal words that are of a constant binary length that exceeds one bit must be taken into account. Id. at 28:30-34. According to the '587 patent, most computer information is communicated in so-called "bytes, " each of which consists of eight digital bits. Id. at 28:34-36. The '587 patent cautions that failure to recognize this fact could result in incomplete signals and/or in erroneous processing in signal information. Id. at 28:36-38.

Figure 2G, reproduced below, shows an incomplete signal. Id.

(Image Omitted)

Figure 2G illustrates a command with a header, an execution segment and a meter-monitor segment, each of which is of particular bit length. Id. at 28:38-40. The command of Figure 2G, however, is only twenty-one bits long. Id. at 28:41-42. As Figure 2G shows, the command constitutes two bytes of eight bits each with five bits left over. Id. at 28:42-43. The '587 patent explains that in a system that communicates...

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