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UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.,
Petitioner
v.
Personalized Media Communications, LLC,
Patent Owner

IPR2015-00520
Patent 7,805,749
____________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,805,749

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IPR Petition U.S. Pat. 7,805,749
TABLE OF CONTENTS
TABLE OF CONTENTS .......................................................................................... ii
TABLE OF AUTHORITIES ................................................................................... iv
EXHIBIT LIST ..........................................................................................................v
I.

MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ........................1


A.

Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) ............................1

B.

Related Matters Under 37 C.F.R. 42.8(b)(2) .....................................1

C.

Lead and Back-Up Counsel...................................................................2

D.

Service Information Under 37 C.F.R. 42.8(b)(4) ...............................2

E.

Grounds for Standing Under 37 C.F.R. 42.104(a) .............................2

II.

SUMMARY OF ISSUE PRESENTED ..........................................................3

III.

INTRODUCTION AND BACKGROUND ....................................................4

IV.

A.

PMCs Patent Strategy ..........................................................................4

B.

Exemplary Embodiment Describing the Claimed Invention ................6

C.

Representative Claim ............................................................................8

D.

Prosecution History Summary ............................................................10

THE EARLIEST PRIORITY DATE FOR THE CLAIMS AT ISSUE IS


SEPTEMBER 11, 1987 .................................................................................11

V.

STATEMENT OF PRECISE RELIEF REQUESTED .................................14

VI.

LEVEL OF ORDINARY SKILL IN THE ART ...........................................16

VII. CLAIM CONSTRUCTION ..........................................................................16


VIII. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY .............19
A.

Background and State of the Art .........................................................19

B.

The Claims at Issue Are Anticipated by Jeffers ..................................21

C.

The Claims at Issue Are Obvious Over Campbell ..............................24

D.

The Claims at Issue Are Obvious Over Powell in View of Guillou and
the Knowledge of Person of Ordinary Skill in the Art. ......................45
1.

Powell........................................................................................46

2.

The Knowledge of a Person of..................................................47

Ordinary Skill in the Art......................................................................47

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3.

Guillou ......................................................................................49

IX. SECONDARY CONSIDERATIONS CANNOT OVERCOME THE


STRONG EVIDENCE OF OBVIOUSNESS ...............................................59
X.

CONCLUSION .............................................................................................59

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TABLE OF AUTHORITIES
In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359 (Fed. Cir. 2004) ..................................................................... 16
Leapfrog Enters. Inc. v. FisherPrice, Inc.,
485 F.3d 1157 (Fed. Cir. 2007) ..................................................................... 59
Newell Cos., Inc. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988) ....................................................................... 59
Personalized Media Commcns., LLC v. Amazon.com, Inc.,
No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013) ................................... 1
PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299 (Fed. Cir. 2008) ...............................................................12, 14
In re Trans Texas Holdings Corp.,
498 F.3d 1290 (Fed. Cir. 2007) ..................................................................... 16
OTHER AUTHORITIES
35 U.S.C. 102 ..................................................................................................15, 46
35 U.S.C. 103 ........................................................................................................ 15
35 U.S.C. 120 ........................................................................................................ 12
35 U.S.C. 311-319 ................................................................................................ 1
37 C.F.R. 42.8 ..................................................................................................... 1, 2
37 C.F.R. 42.100 ...............................................................................................1, 16
37 C.F.R. 42.104 ..................................................................................................... 2
The Viewtron Handbook ....................................................................................48, 51

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EXHIBIT LIST
Exhibit No.

Description

1001

U.S. Patent No. 7,805,749 (the 749 patent)

1002

U.S. Patent No. 4,694,490 (the 490 patent)

1003

Excerpts from the Prosecution History of U.S. Patent 7,805,749

1004

Declaration of Michael O. Slinn in Support of Petition for Inter


Partes Revise of U.S. Patent 7,805,749

1005

U.S. Patent No. 4,739,510 (Jeffers)

1006

U.S. Patent No. 4,536,791 (Campbell)

1007

U.S. Application No. 06/135,987

1008

Resume of Michael O. Slinn

1009

U.S. Patent No. 2,843,655 (Gottfried)

1010

U.S. Patent No. 3,211,830 (Sargent)

1011

U.S. Patent No. 4,068,264 (Pires)

1012

U.S. Patent No. 3,924,059 (Horowitz)

1013

U.S. Patent No. 3,886,302 (Kosco)

1014

Chris Powell, Prestel: the opportunity for advertising, VIEWDATA


AND VIDEOTEXT 1980-81: A WORLDWIDE REPORT (Powell)
Robert C. Moore, Home Information Systems: A Primer (July
1981) (Moore)
Hartford Gunn et al., A Public Broadcasters View of Teletext in
The United States (1980) (Gunn)
J.F. Courtney, Videotel: An Extension of the Use of the Display
Equipment of a Prestel TV set for the Travel Industry, VIDEOTEL,
VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE REPORT
(Courtney)
DES Encryption Standard, FIPS PUB 46 (January 15, 1997) (DES
Encryption Standard)

1015
1016
1017

1018

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1019
1020

R. F. Park, The Role of Viewdata in Electronic Funds Transfer,


VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE REPORT
(Park)
Waring, Coxs INDAX System Delivering Future Two-Way
Cable Services Today, Videotex 81 (Waring)

1021

The Viewtron Handbook (1983) (Viewtron Handbook)

1022

U.S. Patent No. 4, 337, 483 (Guillou)

1023

Varadharajan, Some Cryptographic Techniques for Secure Data


Communication, Plymouth Polytechnic, 1984 (Varadharajan)

1024

[Exhibit Number Not Used]

1025

Excerpts from File History of U.S. Appl. No. 08/449,263

1026

January 19, 2010 Decision on Appeal in Appeal No. 2009-6825

1027

December 19, 2008 Decision on Appeal in Appeal No. 2008-4228

1028

International Patent Application No. WO 80/01636 (Guillou


PCT)
Declaration of Annemarie Mattheyse in Support of Petition for
Inter Partes Review of U.S. Patent No. 7,801,304

1029
1030

Petitioners Voluntary Interrogatory Responses

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Under 35 U.S.C. 311319 and 37 C.F.R. 42.100 et seq., Petitioner
Unified Patents Inc., (Unified or Petitioner) requests inter partes review of
U.S. Patent No. 7,805,749 (the 749 patent), issued on Sept. 28, 2010, to Harvey
et al. and is purportedly owned by Personalized Media Communications, LLC
(PMC or Patent Owner). Petitioner files a motion for joinder concurrently
herewith to join this proceeding with Amazon.Com, Inc. and Amazon Web Svcs.,
LLC v. Personalized Media Comm., LLC, Case IPR2014-01533 (the Amazon
IPR), in which the Petition was filed on September 22, 2014. This petition is
substantively identical to the one in the Amazon IPR.
I.

MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)

The following mandatory notices are provided as part of this petition.


A.

Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real


party-in-interest, and further certifies that no other party exercised control or could
exercise control over Unifieds participation in this proceeding, the filing of this
petition, or the conduct of any ensuing trial. See Ex. 1030.
B.

Related Matters Under 37 C.F.R. 42.8(b)(2)

The 749 patent is involved in the Amazon IPR, which is pending, as well as
in co-pending litigation captioned Personalized Media Commcns., LLC v.
Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013).

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IPR Petition U.S. Pat. 7,805,749
C.

Lead and Back-Up Counsel

Unified provides the following designation of counsel, all of whom are


included in Customer No. 22,850 identified in Unifieds Power of Attorney.
Lead Counsel

Back-up Counsel

Michael L. Kiklis (Reg. No. 38,939)

Scott A. McKeown (Reg. No. 42,866)

cpdocketkiklis@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 413-2707
Facsimile: (703) 413-2220

cpdocketmckeown@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 413-6297
Facsimile: (703) 413-2220
Katherine D. Cappaert (Reg. No. 71,639)
cpdocketcappaert@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 236-2674
Facsimile: (703) 413-2220

D.

Service Information Under 37 C.F.R. 42.8(b)(4)

Please address all correspondence to lead counsel and back-up counsel at the
address shown above. Unified also consents to electronic service by email to:
cpdocketkiklis@oblon.com.
E.

Grounds for Standing Under 37 C.F.R. 42.104(a)

Unified certifies that the 749 patent is available for inter partes review and
that Unified is not barred or estopped from requesting an inter partes review
challenging the patent claims on the grounds identified in this petition.
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II.

SUMMARY OF ISSUE PRESENTED

The twelve claims at issue in this petition relate to a process for promoting
encrypted programming. In general, the claimed process requires receiving and
outputting (e.g., in audio or video) a first portion of programming, prompting a
subscriber as to whether the subscriber would like to receive a second portion of
programming, and, upon the subscribers reply, receiving, decrypting, and
outputting the second portion of programming.
The prior art relied on herein falls into two general categories. The first
category of prior art relates to pay-per-view television systems, which provided
previews, messages, etc. in a first portion of the programming.

When a

subscribers station received and processed the signal, the user was prompted as to
whether they wanted to purchase the pay-per-view program. If so, the user would
input the necessary information to authorize delivery of, and decrypt, the
programming. Data transmitted with the program, or entered by the user, was used
to identify and decrypt the program.
The second category of prior art relates to teletext and videotex systems that
were available in the 1970s and 1980s. Those systems used one-line banner
advertisements and video to promote related pages and prompted users to request
the related information. The prior art also taught that the videotex pages could be
encrypted such that they would be decrypted by the users terminal. The issue is
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whether the claims of the 749 patent would have been obvious in view of this art.
III.

INTRODUCTION AND BACKGROUND


A.

PMCs Patent Strategy

PMC is a patent licensing entity. In 1981, inventors Harvey and Cuddihy


filed Application No. 317,510 which had a 22-column specification and issued as
U.S. Patent No. 4,694,490 (the 490 patent). The 490 patent and one other
continuation application issued in 1987 and expired a decade ago. Six years after
the filing of the original 1981 application, PMC filed a continuation-in-part that
discarded the original 22-column specification filed in 1981 and substituted a new
specification that spanned over 300 columns.
Hoping to take advantage of the patent term applicable to applications filed
before June 8, 1995 (the date that the new patent term laws took effect), PMC filed
328 virtually identical continuation applications in the months leading up to that
date.

PMCs strategy was clear: to overburden the Patent Office, delay the

prosecution of its patent applications, watch various industries develop, pursue


broad and overlapping claims in hundreds of patent applications containing claim
sets that bear little resemblance to the original disclosure, and assert its patents
against later-developed technology.
PMCs prosecution strategy has proved to be successful. As described in
more detail below, the Patent Office has been unable to meaningfully examine the

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IPR Petition U.S. Pat. 7,805,749
applications, even when anticipatory prior art has been identified, due to the
burdens caused by PMCs filing and prosecution strategy. Moreover, as a result of
PMCs prosecution strategy, the 749 patent did not issue until September 20,
2010, and will not expire until 2027. Thus, PMC has managed to secure at least 40
years of patent protection for claims that far exceed the scope of any invention that
Harvey and Cuddihy may have conceived in the 1980s.
Over time, PMC sought broader and broader claims, including claims that
contained no reference at all to the broadcast or cablecast (point-to-multipoint)
transmissions described in its specifications. Instead, PMC began referring to
transmissions instead of broadcast or cablecast transmissions, programming
instead of television programming, and eliminating television-specific
components such as tuners and television receivers, all in an attempt to cover laterdeveloped technology that PMC did not inventthe Internet.
PMC now contends that the 749 patent covers every website that makes
encrypted content available for downloadevery website in which you can read a
description of a book before downloading it, every website in which you can watch
a preview before viewing a movie, and every website that sells music. PMC now
contends that its claims cover point-to-point, on-demand, Internet-based
communicationsthe very opposite of the systems described in the 749 patent.
In view of PMCs contentions regarding the scope of the 749 patents
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IPR Petition U.S. Pat. 7,805,749
claims, and the Patent Offices inability to meaningfully review the claims at issue
during prosecution, Unified respectfully requests that the Board grant this petition
and revisit the patentability of the claims of the 749 patent.
B.

Exemplary Embodiment Describing the Claimed Invention

During prosecution, the applicants asserted that the claims of the 749 patent
are supported by the Julia Childs example (490 patent at 20:16-68) and the
Exotic Meals of India example (749 patent at 241:50-246:58). Ex. 1003 at 679681. The Julia Childs example in the 490 patent is less than one column long and
describes a viewer watching a television program on cooking techniques. Ex. 1002
at 20:16-68.1 Halfway through the program, the host says, If you are interested
in cooking what we are preparing here and want a printed copy of the recipe for a
charge of only 10 cents, press 567[.] Id. at 20:19-23. A user can then press 567
on their input device.

Five minutes later, another signal is transmitted that

determines whether 567 has been entered by the user, and if so, the tuner tunes
the cable converter box to the appropriate channel to receive the recipe in encoded
form. Id. at 20:28-38.
When the encrypted recipe is received, a signal word (e.g., a decryption
key) is passed to a processor, which uses the signal word to decrypt the recipe. Id.
at 20:38-43. The processor then conveys to its data recorder, 16, information that
1

References to patents are provided herein as column:line.


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the 567 order was placed by the viewer and all necessary equipment was enabled.
Id. at 20:43-47. The signal processor subsequently transfers the data in its data
recorder via telephone to a remote site for billing purposes, which can determine
that the recipe was received. Id. at 20:55-59.
The Julia Childs example is neither incorporated by reference nor copied in
the 749 patent. Instead, the applicants included a different embodiment, in which
the cooking show is the Exotic Meals of India. A recipe for the cooking show is
promoted in a similar manner as in the Julia Childs example, and subscribers are
prompted to enter a code, TV567#. Ex. 1001 at 242:63-243:23. At each receiver
station where the code has been entered, certain information (including particular
program unit information and TV567# information) is stored at the buffer. Id. at
243:24-56. One minute later, the program originating studio embeds a second
signal that includes unit code identification information that identifies the
programming of the information segment of said message and a computer
program for generating a user-specific recipe. Id. at 243:60-244:3. Receipt of this
second signal causes the receiver stations where the TV567# code was entered to
execute the program (instructions) to generate a user-specific recipe. Id. at 244:459. The 749 patent states that the information of the second message, i.e., the
message containing the instructions for generating the recipe and shopping list,
can be encrypted and caused to be decrypted in any of the methods described
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abovefor example, in the method of the first message of example #4. Id. at
246:26-29.
Example #4 describes a process for decrypting a message in which the
receiver station selects a program unit identification code, selects preprogrammed key information, decrypts a message using a key, and stores the
program unit information and decryption key information in a meter record at a
recorder. Id. at 102:25-117:2. The 749 patent teaches that information in the
record may be transferred to a remote billing station via a telephone connection.
Id. at 48:45-60.
C.

Representative Claim

Independent Claim 2 is representative of the independent claims at issue,


and is produced below with lettering for convenience:
2. A method for mass medium programming promotion and delivery for use
with an interactive video viewing apparatus comprising the steps of:
[a] receiving a first portion of said mass medium programming in a first
programming signal, said first portion of mass medium programming including a
video image that promotes a second portion of said mass medium programming;
[b] displaying said video image, said interactive video viewing apparatus
having an input device to receive input from a subscriber;
[c] prompting said subscriber for a reply, during said step of displaying said
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video image, as to whether said subscriber wants said second portion of said mass
medium programming promoted in said step of displaying of said video image,
said interactive video viewing apparatus having a transmitter for communicating
said reply to a remote site;
[d] receiving said reply from said subscriber at said input device in response
to said step of prompting said subscriber, said interactive video viewing apparatus
having a processor for processing said reply;
[e] processing said reply and selecting at least one of a code and a datum
designating said second portion of said mass medium programming to authorize
delivery of said second portion of said mass medium programming;
[f] communicating said selected at least one of a code and a datum to a
remote site;
[g] receiving said second portion of said mass medium programming in a
second programming signal;
[h] decrypting said second portion of said mass medium programming by
using said at least one of a code and a datum in response to said step of processing
said reply; and
[i] delivering said mass medium programming to an output device.
Other than the basic steps of receiving the promotional material, prompting
the user, and decrypting the second portion of the programming, the additional
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elements of this claim require that the receiver station: (1) select at least one of a
code or datum designating said second portion of said mass medium
programming; (2) communicate that code/datum to a remote site; and (3) decrypt
the second portion of the mass medium programming by using the code/datum. In
this claim, the communicating step may occur after the decryption of the content,
such as when the code is transmitted via phone to a billing station, as described in
the 749 patent.
D.

Prosecution History Summary

The 749 patent was filed on June 7, 1995, one day before the patent term
adjustments under GATT took effect. Ex. 1001 at 1. In a 1997 Office Action, the
examiner rejected the claims, including the claim that ultimately issued as Claim 2
(claim 3 during prosecution), as anticipated by Campbell. Ex. 1003 at 638-639.
As discussed in more detail below, Campbell describes a method for descrambling
pay-per-view programming.

In the rejection, the examiner construed the

subscribers channel selection as the reply recited in step [d] above. Id. at 638
(referring to step 310). Although there are several readings of Campbell that
anticipate the claims, the examiner did not correctly apply Campbell.
In response, PMC argued (incorrectly) that Campbell was not prior art. Id.
at 688-689.

PMC then summarily argued that Campbell did not teach the

necessary limitations, including that the subscribers selection of the channel could
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not be the selecting a code or datum. Id. at 692. The examiner subsequently
indicated that the claims were allowable over the prior art of record (Ex. 1003 at
738), and a Notice of Allowance issued in August, 1998 (id. at 841). Rather than
allowing the claims to issue, PMC added 210 new claims. Id. at 940 and 943.
On March 30, 2000, a new examiner rejected all of the then-pending claims
as obvious over Jeffers (id. at 1174-1177) and Campbell (id. at 1183-1188);
however, in view of the burden associated with applying the references to all of the
limitations of the 252 pending claims, the examiner did not apply the references on
a claim-by-claim basis. Applicants responded by adding 47 more claims and
arguing that the Patent Office failed to meet its burden because it did not apply the
prior art to each pending claim. Id. at 1547-1550. Without further discussion of
Jeffers and Campbell, prosecution was suspended while related PMC applications
were reexamined. Id. at 3153. Examination of the 749 patent resumed with
another new examiner in 2010, and the pending claims were allowed without any
further analysis of Jeffers or Campbell. Id. at 3172-3216. Accordingly, although
Jeffers and Campbell were of record during prosecution, PMCs prosecution
strategy prevented the examiners from properly considering and applying those
references.
IV.

THE EARLIEST PRIORITY DATE FOR THE CLAIMS AT


ISSUE IS SEPTEMBER 11, 1987

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Under 35 U.S.C. 120, a later-filed patent application may rely on the filing
date of an earlier application only if the claim has written description support in the
specification of the earlier-filed application. PowerOasis, Inc. v. T-Mobile USA,
Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). Any claim that depends on any new
matter in the later-filed application is only entitled to the filing date of the laterfiled CIP application. Id. at 1310. Where a claim term would receive a broader or
more inclusive claim construction in view of the later specification which includes
new matter, the claim is not entitled to the earlier filing date. Id. at 1311.
The claims at issue in the 749 patent are not entitled to the 1981 filing date
of the 490 patent because the claims contain terms that were defined more broadly
in the 749 patent and therefore encompass new matter. In particular, all of the
independent claims at issue relate to methods of receiving mass medium
programming. The 490 patent recognizes that numerous types of transmissions
existed. For example, the 490 patent discloses that an intermediate transmission
station may receive satellite transmissions, microwave transmissions, television, or
other electronic input means. Ex. 1002 at 10:30-39. The 490 patent provides that
the apparatus described therein is configured to receive broadcast TV
transmissions and cablecast TV and radio transmissions. Id. at 7:22-30. The
patent teaches that, if other transmissions such as broadcast microwave
transmissions or cablecast transmission on other than standard TV and radio
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IPR Petition U.S. Pat. 7,805,749
frequencies were to be received, the components would have to be
reconfigured. Id. Despite its recognition of alternative transmission types, the
490 patent expressly limits the term programming to mean everything
transmitted over television or radio intended for communication of entertainment
or to instruct or inform. Ex. 1002 at Abstract (emphasis added). Consistent with
this definition, the 490 patent uses the term programming to refer to television
and radio transmissions.

See, e.g., id. at 1:11-13; 1:17-18; 2:13-14; 3:35-37;

17:39-41; 19:42-49.
In contrast, the 1987 specification redefined programming more broadly to
include everything that is transmitted electronically to entertain, instruct or
inform, including television, radio, broadcast print, and computer programming as
well as combined medium programming.

Ex. 1001 at 6:28-32.

The 1987

specification also added new disclosures relating to the use of, for example,
satellite receiver circuitry at the receiver station for receiving satellite
transmissions. Ex. 1001 at 202:14-26; 268:5-10; Fig. 7. Thus, the applicants
redefined programming to be commensurate the newly added subject matter.
A person of ordinary skill in the art would have understood that the
definition provided in the 1987 specification expands the definition of
programming that was provided in the 490 patent to include other types of
transmission, such as transmissions via satellite or telephone lines. Ex. 1004 37.
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Moreover, the 1987 specification expressly included in the definition of mass
programming certain types of programming, such as broadcast print, and
computer programming, which are not disclosed in the 490 patent.
Accordingly, the scope of the term programming, as used in the 749 patent,
relies on new matter from the 1987 specification and the full scope of the claim
does not have written description support in the 490 patent. As a result, the claims
at issue in the 749 patent cannot obtain the benefit of the 1981 filing date.
PowerOasis, 522 F.3d at 1311.
In addition, each of the claims at issue recite the step of decrypting
programming. As discussed in more detail below, this term, as used in the 1987
specification, encompasses analog descramblers. Ex. 1001 at 161:27-31. To the
extent that PMC argues that the term decrypting, as used in the 490 patent,
excludes analog descrambling, then the scope of the term decrypting was
necessarily broadened by the addition of the new matter in the 1987 CIP
application. Accordingly, the claims at issue, all of which recite decrypting,
cannot obtain the benefit of the 1981 filing date for this reason as well.
V.

STATEMENT OF PRECISE RELIEF REQUESTED


Unified requests that the Board cancel Claims 2, 3, 9-13, 18, 24, 49 and 52-

53 of the 749 patent based on the following grounds for unpatentability:


Ground 1: Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are unpatentable under
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IPR Petition U.S. Pat. 7,805,749
35 U.S.C. 102 as anticipated by Jeffers.
Ground 2: Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are unpatentable under
35 U.S.C. 103 as obvious over Campbell in view of the knowledge of a person of
ordinary skill in the art.
Ground 3: Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are unpatentable under
35 U.S.C. 103(a) as obvious over Powell in view of Guillou and the knowledge
of a person of ordinary skill in the art.
A detailed explanation of how Claims 2, 3, 9-13, 18, 24, 49 and 52-53 are
unpatentable is set forth below in Section VIII. Additional support for each ground
of rejection are included in the Declaration of Michael O. Slinn. Ex. 1004.
Although Jeffers and Campbell both disclose pay-per-view television
systems, Grounds 1 and 2 are not redundant. Jeffers is based on an application
filed on May 1, 1985. Ex. 1005. Accordingly, Unified believes that Jeffers
constitutes prior art to the 749 patent under 35 U.S.C. 102(e), as the claims of
the 749 patent are only entitled to a 1987 priority date. To the extent the claims at
issue are entitled to a 1981 filing date, or to the extent PMC attempts to pre-date
Jeffers, that reference will be inapplicable.
Campbell (Ex. 1006) was filed as a PCT application on March 31, 1981,
published as WO81/02961 on October 15, 1981, and claims priority to a U.S.
application filed on March 31, 1980 (Ex. 1007).
15

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IPR Petition U.S. Pat. 7,805,749
constitutes prior art regardless of whether the claims are entitled to a 1987 or 1981
priority date. Because the applicable reference may depend on PMCs arguments
regarding the relevant priority date, and possibly claim construction, this petition
should be granted on both grounds.
Ground 3 is based on computer technologies rather than pay-per-view
television technologies, and is therefore not redundant of Grounds 1 and 2.
VI.

LEVEL OF ORDINARY SKILL IN THE ART


A person having ordinary skill in the art for purposes of the 749 patent

would be an individual having a bachelors degree in electrical engineering, or


equivalent experience, and two to four years of experience in the implementation
of communications systems and controlling these systems through computer
technology. Ex. 1004 24.
VII.

CLAIM CONSTRUCTION

Pursuant to 37 C.F.R. 42.100(b), and solely for the purposes of this


review, Petitioner construes the claim language such that the claims are given their
broadest reasonable interpretation in light of the specification of the 749 Patent.
See In re Trans Texas Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007).
Because the standard for claim construction in this proceeding is different than that
used in a district court, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364,
1369 (Fed. Cir. 2004); MPEP 2111, Petitioners position herein regarding the

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IPR Petition U.S. Pat. 7,805,749
scope of the claims is not an assertion regarding the appropriate claim scope for
purposes of the co-pending litigation.
Consistent with the broadest reasonable construction standard, the Board
should construe the term decrypting as including analog descrambling.
Although PMC has asserted in co-pending litigation that the term decrypting
does not include analog descrambling, this assertion directly contradicts the
specification. The 749 patent expressly states that the invention should not be
unduly restricted, and that it should be construed to include conventional
descramblers, well known in the art, that descramble analog television
transmissions:
It is obvious to one of ordinary skill in the art that the foregoing is
presented by way of example only and that the invention is not to be
unduly restricted thereby since modifications may be made in the
structure of the various parts without functionally departing from the
spirit of the invention. . . . [F]or example, the Wall Street Week
transmission may be of conventional analog television, and the
decryptors, 107, 224, and 231, may be conventional descramblers,
well[] known in the art, that descramble analog television
transmissions and are actuated by receiving digital key information.
Ex. 1001 at 161:16-31. Consistent with the 749 patents teaching, a person of
ordinary skill in the art as of 1987 would understand that the term decrypting in
the 749 patent includes both decrypting digital information and descrambling
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analog signals. Id.; Ex. 1004 38.
In co-pending litigation, PMC has identified three documentstwo
decisions by the BPAI and an examiners office action relying on those decisions,
all of which are from the prosecution of different PMC patentsin support of its
argument that decryption does not include analog descrambling. However, none
of the three documents supports such a construction, because none of the decisions
addresses the portion of the specification quoted above. Ex. 1027 at 53-24; Ex.
1026 at 67-68; Ex. 1025 at 13-32. Instead, the PTO appears to have relied on the
disclosure of the 490 patent. Ex. 1027 at 53-54; Ex. 1026 at 67-68 (incorrectly
concluding that even if the use of decryption, at the time of filing of the instant
invention, would have been understood to include decryption of analog signals,
there is nothing in the instant Specification that would guide such an
interpretation).
The third document on which PMC relies does not support PMCs position.
That document is an excerpt from the prosecution history of a related application,
in which the Examiner allowed the claims over prior art that taught analog
descrambling only when the applicants agreed to amend the claims to clarify that
the decrypting step involved digital programming or signals. Ex. 1025 at 15.
The 749 patent expressly defines decrypting in the context of the
invention as including analog descrambling. Accordingly, a person of skill in the
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art would understand that the broadest reasonable interpretation of the term
decrypting, as used in the 749 patent, includes descrambling analog signals.
Ex. 1004 38.
VIII.

SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY


A.

Background and State of the Art

Promoting pay-per-view programming by providing a preview, prompting


the user for payment and, upon payment, descrambling the pay-per-view program
was well known as early as the 1950s. Ex. 1004 40. For example, U.S. Patent
No. 2,843,655 (Gottfried), which was filed in 1951, describes a method for
providing pay-per-view television programs in a scrambled signal with a
nonscrambled marquee (video) and barker (audio), which would appris[e] the
user or subscriber as to the program which he may see upon acknowledging a coin
demand. Ex. 1009 at 1:34-62. The user was provided with an indication of the
cost of the program and, when the payment was deposited (or price accepted for
later payment), the preview stopped, the scrambled programming was
descrambled, and the descrambled program was output on the television set. Id. at
3:1-5.
The transmission described in Gottfried included a signal that contained
coin demand information (i.e., the cost of the program) and record information
that could be recorded for billing purposes. Id. at 9:50-60. The coin demand

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information designated the program as a program of a certain cost (e.g., 25 cents
instead of 50 cents), the descrambling was based on that information (the program
was descrambled only when the designated amount was entered or accepted), and
the amount could be communicated to a remote station (the amount could be
accepted and paid later); see also Ex. 1010 at 2:49-69 (providing a free preview on
one channel that promotes two separate pay-per-view channels).
U.S. Patent No. 4,068,264 (Pires), which was filed in 1976, describes an
improvement to the pay television system disclosed in U.S. Pat. No. 3,924,059
(Horowitz). Horowitz teaches a pay-per-view television programming system in
which an audio signal provides the information necessary for the subscriber to
decide whether or not to pay for the particular program. Ex. 1012 at 1:52-56. The
pay-per-view program itself is encoded. Id. at 1:63-2:22. Pires describes an
improvement in which a code number and a program identification number are
transmitted in the television signal.

Ex. 1011 at 3:46-62.

The program

identification number serves two purposes at the subscribers decoder: (1) the
decoder uses the program identification number to select the appropriate program
assignment code stored in memory, which will be used to descramble the
program; and (2) the number is stored in memory for later billing purposes. Id. at
7:40-48; 7:59-63; 2:37-43.
U.S. Patent No. 3,886,302 (Kosco), which was filed in 1974, describes a
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two-way cable distribution network in which a subscriber may view a preview of
the subscription TV program and, if the proper button is pressed, a pay TV request
signal is generated and applied to an upstream signal, along with a channel code
identifier and subscriber station address code, that is sent to the providers
computer. Id. The providers computer returns a video enable command that
allows the viewer to watch the program. Id.; Ex. 1013 at 5:45-6:21.
PMCs applications acknowledge that prior art pay-per-view systems
existed, but asserts that those systems are limited because they lacked capacity
to identify encrypted signals then decrypt them, and lacked capacity to record
and also transfer information to a remote geographic location. Ex. 1002 at 2:2863; Ex. 1001 at 4:64-68. This is simply incorrect. The prior art disclosed above
teaches both of these features. As discussed in greater detail below, each of Jeffers
(filed in 1985) and Campbell (filed in 1980) also disclosed these features and
render the claims at issue unpatentable.
B.

The Claims at Issue Are Anticipated by Jeffers

Jeffers discloses methods for providing premium television programming or


teletext data, referred to as impulse pay-per-view programming, to subscribers.
Jeffers teaches that a preview of the available impulse pay-per-view
programming may be displayed on the TV to elicit a selection/purchase: It may be
desirable to design the system such that a particular subscriber can preview a
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program and then, at that time, decide whether he/she wishes to watch the program
and, hence, pay for the privilege. Ex. 1005 at 1:48-51. The subscriber is
notified that a program is available for authorization when the subscriber tunes to
the particular program during the preview time or show time. If the subscriber
enters the necessary authorization information, the program will be descrambled so
that it can be viewed. Id. at 11:3-8.
Thus, Jeffers teaches the basic promotion steps of the claims at issue,
namely receiving a first portion of a mass medium programming (the preview),
said first portion including a video image (preview) that promotes a second portion
(premium television or teletext programming) of the mass medium programming,
displaying the video image (preview), prompting the user as to whether the user
would like to receive the second portion of the mass medium programming
(notification that authorization is necessary), receiving a reply from the subscriber
at an input device (entering necessary authorization information), and delivering
the second portion of the mass medium programming (premium television or
teletext programming) to an output device (television). Ex. 1004 49-50.
Jeffers also teaches that the television signal includes a data stream. Id. at
3:64-66, 4:22-27; 7:7-12. The data stream includes, among other things, program
tag information (14:45-47) and a common audio key (13:60-64, 14:41-45).
Jeffers teaches that the video portion of the signal is scrambled and that the
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audio portion is encrypted. The scrambled video is descrambled in a video
control circuit, where the data stream is used to control the reconstruction of the
video signal. Id. at 13:14-50, 23:19-30. The encrypted audio portion of the
data stream is then passed to the audio decryption circuit. Id. at 13:55-57. The
common audio key and other program tag information forms the decryption key
which is fed to the audio decryption circuit. Id. at 14:45-47. Jeffers also teaches
that the program tag number in the data stream is communicated to a billing center
via a telephone modem. Id. at 14:58-67; see also id. at 1:51-54, 15:34-41.
Thus, with respect to Claim 2, Jeffers teaches all of the remaining
limitations, namely processing the subscribers reply and selecting at least one of a
code and a datum (information in the data stream, including the common audio
key, other program information, and a program tag number) designating the payper-view programming to authorize delivery, communicating the code or datum to
a remote site (communicating the program tag number to a billing facility via
telephone modem), and decrypting the pay-per-view programming using the code
or datum (the common audio key and program tag information). Ex. 1004 4955. Thus, Jeffers anticipates Claim 2 and, as set forth in the claim chart below,
also anticipates the other claims at issue. Id. 56-62.
With respect to Claim 18, the encrypted audio constitutes data. Ex. 1004
58. Therefore, the analysis is the same for Claim 18 as for Claim 2, since the
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promoted data (pay-per-view audio) is related to the mass medium programming
(preview). The signal word that is passed to the processor and used to decrypt
the audio data is the common audio key. Ex. 1005 at 14:33-47, 13:5068.
Alternatively, Jeffers also discloses that the promoted pay-per-view
programming may be encrypted text or teletext pages. Id. at 2:15-17 (In other
applications, one of the audio channels may be configured as a data channel for
services such as transmission of text); 22:1-23:47 (teletext pages are decrypted).
Jeffers teaches that the teletext pages are decrypted using decryption information
in the packet, including the common audio key (signal word). Id. at 22:61-65,
22:17-22. Therefore, Claim 18 is also anticipated. Ex. 1004 59.
With respect to independent Claim 49, the transmission in Jeffers includes
mass medium programming (the preview) and a control signal (data stream,
including the program information and common audio key), the mass medium
program (preview) promotes additional material related to the programming (the
pay-per-view program), and the additional material is decrypted based on the
information in the control signal (program information and common audio key).
Therefore, Claim 49 is also anticipated. Id. 60. Jeffers also anticipates the
dependent claims of the 749 patent, as set forth in the claim chart below. Id.
49-62.
C.

The Claims at Issue Are Obvious Over Campbell


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IPR Petition U.S. Pat. 7,805,749
Similar to Jeffers, Campbell discloses methods for controlling access to payper-view programming and information by transmitting data signals with television
broadcast signals. Ex. 1006 at 2:53-63. The video is scrambled. Id. at 5:25-35.
The data signals include both control data for controlling the subscribers
addressable converter (the receiver station) and textual data that may either
supplement a television program or be output on a separate all text/graphic
channel. Id.; see also id. at 12:58-68. The data may be inserted into the vertical
blanking interval of the video signal. Id. at 5:25-51.
The control data includes channel control data and subscriber addressing
data.

Id. at 12:58-68.

The channel control data includes several codes,

including a program identification code, which indicates whether the program is


a special event, and a descrambling code, which provides the converter with the
code necessary to descramble the video. Id. at 13:9-24.
The subscriber addressing data includes, among other things, a channel
number code 226 and a program enable code 228 which together provide the data
necessary for the converter to be enabled so that the user can view the special
event. Id. at 13:61-14:8. This data identifies the special event to be viewed. Id.
The subscriber addressing data also includes an eligibility word 230, which
includes a key numbercode 236 and an eligibility threshold code 238. Id. at
14:9-28. The key numbercode is a special confidential authorization code which
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IPR Petition U.S. Pat. 7,805,749
is made known only to an authori[z]ed party at a given user station. Id. The key
numbercode operates like a parental control password. If a programs eligibility
code exceeds the eligibility threshold (for example, if a program is rated R and
the eligibility threshold only permits viewing of programs rated G or PG), then
the microprocessor disables the converter until the key numbercode 236 is input by
a user. Id.; see also at 13:15-18.
When the signal is received at the subscribers converter, a series of checks
are performed automatically by the converter to determine whether the subscriber
may have access to the program. See id. at 15:3-50; Fig. 12. In the final step of
this process, the processor (control logic) compares the eligibility code of the
program to the eligibility threshold in the eligibility word. Id. at 15:51-65. If the
threshold is exceeded, the control logic enables the text/graphics generator to
generate an appropriate message for display on the television set of the user. The
message instructs the user to enter his confidential key number on the converter
keyboard 139 in order to enable viewing of the program in question. Id. at 15:6616:10. The entered number is then compared with the subscribers key number as
provided in the key numbercode 236 of eligibility word 230. Id.; see also id. at
Fig. 12. If a match results, the control logic proceeds to enable viewing of the
programming (i.e., using the descrambling code to descramble the video). Id.
Campell further discloses that the process described therein may be used in
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IPR Petition U.S. Pat. 7,805,749
either one-way or two-way communications systems. Id. at 3:19-26, 16:17-20,
17:42-49. In the two-way communication system, pay-per-view programming is
authorized in a similar manner as for special event access in the one-way system.
Id. at 16:15-20 (Similar procedures are followed by converter 40 in performing a
broad spectrum of functions involving one-way and two-way interactive television
and data transmission.); 17:50-64. If the subscriber selects a channel that is a
premium channel requiring additional billing, the system prints a message on the
television screen requiring that the subscriber key number be entered on keyboard
168. Id. When the key number is entered correctly, the converter sends a signal
to the data control system at the head end to authorize reception of the channel. Id.
The data control system then commands the converter to allow or disallow the
selected program and retains billing information for the service as required. Id.
Campbell also teaches that text channels may be authorized in a similar
fashion. Id. at 16:17-20; 18:36-48. Text channels may contain information such as
weather, news, and stock information (5:5-9) or it may supplement the television
programming by, for example, amplifying various news stories, shopping
advertisements, etc. (17:28-34). The text channels can be authorized independent
of the program channels so that the information may be provided as an additional
service for certain subscribers while others may be available for everyone. Id. at
17:24-28.
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Thus, with respect to Claim 2, Campbell teaches a method for mass medium
programming promotion and delivery (pay-per-view programming) for use with an
interactive video viewing apparatus (an addressable converter unit with television
display) comprising the steps of: (a) receiving a first portion of said mass medium
programming (portion that is used to generate message instructing user to enter key
number) in a first programming signal, said first portion including a video image
(message generated by graphics generator) that promotes a second portion of said
mass medium programming (pay-per-view video or text); (b) displaying the video
image (message), said apparatus (addressable converter unit) having an input
device (a keyboard or controller) to receive input from a subscriber; (c) prompting
said subscriber for a reply (message requesting user key numbercode), during said
step of displaying said video image, as to whether the subscriber wants the second
portion (pay-per-view video or text) of the mass medium programming, said
interactive video viewing apparatus having a transmitter for communicating said
reply to a remote site (two-way communication components); (d) receiving a reply
from said subscriber (entry of key numbercode) at said input device (the keyboard
input), said apparatus having a processor (microprocessor) for processing a
reply; (e) processing said reply and selecting at least one of a code and a datum
(subscriber key numbercode, program identification code, channel number code,
and/or a program enable code) designating said second portion of said mass
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medium programming to authorize delivery of said second portion of mass
medium programming; (f) communicating said selected at least one of a code and a
datum to a remote site (request for head end to authorize reception of the
channel/program); (g) receiving the second portion of said mass medium
programming (the requested programming) in a second programming signal (video
signal); (h) decrypting (descrambling) said second portion of said mass medium
programming by using said at least one of a code and a datum (subscriber key
numbercode, program identification code, channel number code, program enable
code, descrambling code) in response to said step of processing said reply; and
delivering said mass medium programming (the requested pay-per-view premium
programming) to an output device (television set). Accordingly, and as set forth in
the claim chart below, the claims are unpatentable as anticipated by Campbell,
provided that decrypting is construed to include descrambling. Ex 1004 69.
To the extent that decrypting is construed to exclude analog descrambling,
the claims are unpatentable as obvious over Campbell in view of the knowledge of
a person of ordinary skill in the art, as those of skill of the art would have readily
understood, based on Campbell, that the same system could be implemented with
encrypted digital signals. Ex 1004 72.
An alternative reading of Campbell also renders the claims at issue
unpatentable. Campbell teaches that the television program (first portion of mass
29

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IPR Petition U.S. Pat. 7,805,749
medium programming) may promote textual material (second portion of mass
medium programming) that may amplify various new stories, shopping
advertisements and other programming briefly presented over the television
program channel.

Ex. 1006 at 17:28-34; 2:58-63 (data may supplement a

channel television program). Inherent in this description, or at least obvious to a


person of ordinary skill in the art, is that there must be some notification or
indication (prompt) during the television programming that the supplemental
textual information is available. Ex. 1004 70. Even if a prompt is not displayed
on the television screen or output in audio, the presence of a TEXT button on the
keyboard would prompt the user for a reply. Ex. 1006 at Fig. 13 and 17:23-24.
The remainder of the analysis is the same as above because the text channels may
be authorized independent of the program channels (Ex. 1006 at 17:24-28) and
the authorization process is the same as for the pay-per-view television described
above (16:17-20).

Thus, the claims at issue are alternatively unpatentable as

obvious under this reading.


The analysis above is based on the construction of video image that PMC
has proposed in the co-pending litigation, which is a visual presentation that can
include single graphic. However, to the extent that the message displayed in
Campbell does not constitute a video image, it would have been obvious to a
person of ordinary skill in the art that a preview for the pay-per-view
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IPR Petition U.S. Pat. 7,805,749
programming could also be provided, given the teachings of Gottfried, Sargent,
Pires, Horowitz, and Kosco. Ex. 1004 71.
With respect to Claim 18, Campbell discloses that the promoted pay-perview programming may be a complementary text channel that may be authorized
independent of the program channels, as described above. Ex. 1006 at 16:48-59;
see also 1:65-2:3; 2:58-63; 3:8-26; 4:37-39; 14:51-66; 17:21-41; 16:17-20; 18:3049. In another embodiment, Campbell teaches that the data described above may
be teletext pages, which are authorized using the same process as used for other
text. See Fig. 17 & 18:50-22:34. Because the text pages are authorized in the
same manner, a signal word, such as a descrambling code, channel number
code, or program enable code would be used to descramble the text channel.
Therefore, Claim 18 is anticipated. Ex. 1004 74.
Campbell also renders Claim 49 unpatentable because the receiver station of
Campbell receives a first information transmission that includes mass medium
programming (message indicating the pay-per-view programming is available, or
the video promoting related text) and a control signal (any of data words necessary
for descrambling, for example, the descrambling code), outputs the mass medium
programming (message) and prompts the subscriber for a reply (key number) to
receive additional material (pay-per-view program), inputs information (key
number or data) to the processor based on the subscribers input, detects the
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control signal (e.g., descrambling code), receives a second information
transmission including additional material (pay-per-view television or text) in
encrypted (scrambled) form, decrypts (descrambles) the program based on the
control signal (descrambling code), and causes the programming to be output on
the TV. Ex. 1004 76. The disclosures of Jeffers and Campbell are set forth
below:
Claim Language
2. A method for
mass medium
programming
promotion and
delivery for use
with an interacttive video viewing apparatus
comprising the
steps of:
(a) receiving a
first portion of
said mass medium programming
in a first programming signal,
said first portion
of mass medium
programming including a video
image that promotes a second
portion of said
mass medium
programming;

Disclosures in Jeffers and Campbell


Jeffers: Jeffers discloses a method for promoting impulse
pay-per-view programs by providing a preview period. Ex.
1005 at 10:57-11:2, 1:48-51. The pay per view program is
output on TV (see Figure 1). The receiver of Jeffers includes
a keyboard input and is interactive. Id. at 9:52-24;
10:61-64.
Campbell: Campbell discloses a two-way interactive broadcast
system that allows user selection of programming and controls
access to pay-per-view television programming. See Ex. 1006
at Abstract.
Jeffers: Jeffers teaches that a preview version and accompanying embedded information of available impulse
pay-per-view content (first portion of the mass medium
programming represented as a video image) is transmitted to
the receiver station and displayed to encourage a subscriber to
purchase the impulse pay-per-view content (e.g., the second
portion of the mass medium programming). Ex. 1005 at
1:4858, 10:5711:8, 14:5415:41.
Campbell: Campbell teaches that the subscriber receives data
(first portion of mass medium programming) that includes a
message (promotion) that is displayed on the TV and requests
that the user enter his confidential key number to receive
the pay-per-view programming (second portion). Ex. 1006 at
17:55-61, 15:66-16:10, Fig. 12 (Display message to enter
key number.).
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Campbell also teaches that the subscriber receives a television
program (first portion of mass medium programming
including a video image) that promotes a complementary
text channel (second portion of mass medium programming).
Ex. 1006 at 17:21-34, 2:58-63.
Jeffers: Jeffers teaches that the preview version of available
(b) displaying
said video image, impulse pay-per-view content and additional graphics are dissaid interactive
played on the receiver terminal to encourage a subscriber to
video viewing
purchase the impulse pay-per-view content. See limitation
apparatus having 2(a). Jeffers also discloses that the system includes a keyan input device to board input. Ex. 1005 at 10:61-64, 12:5157.
receive input
Campbell: Campbell teaches that the message requesting the
from a subscriber; users confidential key number is displayed on the TV. Ex.
1006 at 17:55-61, 15:66-16:10, Fig. 12 (Display message to
enter key number.). The apparatus has an input device: All
manual user inputs required by the system are preferably
keyed in on keyboard 146 or remote control unit 140. Ex.
1006 at 9:43-50, Fig. 13.
Campbell also teaches displaying a television program. Ex.
1006 at 17:21-34.
Jeffers: Jeffers teaches that, The subscriber is notified that a
(c) prompting
said subscriber
program is available for authorization when the subscriber
for a reply, during tunes to the particular program during the preview time or
said step of disshow time. Ex. 1005 at 11:3-5, 13:59-61. Jeffers discloses
playing said vid- that the receiving unit comprises telephone communication
eo image, as to
capability for communicating information to a remote billing
whether said sub- center. Id. at 1:51-54, 14:58-67.
scriber wants said Campbell: Campbell teaches that, If the selected channel is a
second portion of premium channel requiring additional billing, the system
said mass mediprints a message on the television screen requiring that the
um programming subscriber key number be entered on keyboard 168.). Ex.
promoted in said 1006 at 17:55-61; see also id. at 15:66-16:10 (the subscriber
step of displaying is instructed to enter his confidential key number on the
of said video
converter keyboard 139 in order to enable viewing of the proimage, said inter- gram in question); Id. at Fig. 12 (Display message to enter
active video vie- key number.).
wing apparatus
having a transmit- Campbell also discloses that the converter may be enabled to
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ter for communicating said reply
to a remote site;

talk-back to the two-way interactive data communications


system by way of the subscriber control bus adapter 156 and
the two-way home terminal 34. Ex. 1006 at 11:56-60, 17:5861 (requesting the data control system at the head end
to authorize reception), 3:19-26, 16:15-20, Fig. 10 (item 34).

Campbell also teaches that the subscriber receives a television


program (first portion of mass medium programming) that
promotes a complementary text channel (second portion
of mass medium programming). Id. at 17:21-34, 2:5863. The keyboard input includes a TEXT key. Id. at Fig. 13.
(d) receiving said Jeffers: Jeffers teaches that, in response to the preview and
reply from said
notice that programming is available, the subscriber presses
subscriber at said the correct sequence of keys on the keyboard input. Ex.
input device in
1005 at 10:61-64; see also 11:318 (If the subscriber enters
response to said
the necessary authorization information, the program will be
step of prompting descrambled so that it can be viewed.). Jeffers also teaches
said subscriber,
that the receiver includes a microcomputer. Id. at 12:46
said interactive
13:13, 22:2734.
video viewing
Campbell: Campbell teaches that the subscriber inputs a reply:
apparatus having When the key number is entered correctly, the converter
a processor for
requests the data control system at the head end to authorize
processing said
reception of the channel. Ex. 1006 at 17:58-61, 16:5-14.
reply;
See 2(c), above. Campbell discloses providing instructions to
control logic 104. The central control logic 104 is carried
out by a microprocessor unit. Id. at 9:62-67.
Campbell also teaches that the subscriber receives a television
program (first portion of mass medium programming)
that promotes a complementary text channel (second portion
of mass medium programming). Ex. 1006 at 17:21-34,
2:58-63. To view the complementary text channel, the
TEXT key 186 is pressed. Id.
Jeffers: Jeffers discloses that, If the subscriber enters the
(e) processing
said reply and se- necessary authorization information, the program will be
lecting at least
descrambled so that it can be viewed. Ex. 1005 at 11:3-8. The
one of a code and input from the subscribers keyboard is processed by the
a datum designat- microcomputer. Id. at 12:55-57.
ing said second
Upon input of the authorization information, the system selects
portion of said
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IPR Petition U.S. Pat. 7,805,749
mass medium
programming to
authorize delivery
of said second
portion of said
mass medium
programming;

and stores store various information in the signals data


stream including the common audio key (id. at 13:51-69,
14:33-47) and other program tag information (id. at 14:4547), as well as the program tag number, the day of the month
and the time in hours and minutes related to the purchase.
See id. at 14:5468; see also id. at 14:2228, 15:2231,
22:47-51.
Campbell: Campbell teaches the selection of various codes
(key numbercode, program identification code, channel
number code, and a program enable code) that designate
the pay-per-view programming and are required to authorize
reception of, and enable viewing of, the program. Ex. 1006 at
12:58-68, 13:9-24, 13:61-14:8, 14:9-28, 15:3-16:10, 16:5-14
(key number required to authorize reception of the program),
17:58-61 (When the key number is entered correctly, the
converter requests the data control system at the head end to
authorize reception of the channel.).
Text channels can be authorized independently (id. at 17:2428) and use a similar process (id. at 16:17-20).

(f)communicating
said selected at
least one of a
code and a datum
to a remote site;

(g) receiving said


second portion of
said mass medium programming
in a second pro-

Jeffers: Jeffers teaches that the program tag number and


additional information is passed to the impulse pay-per-view
data communications processor at the billing center, either by
a the telephone modem . . . or by a smart card. Ex. 1005 at
14:5468, 15:2240.
Campbell: Campbell teaches that, when the key number is
entered correctly, the converter requests the data control
system at the head end to authorize reception of the channel.
Ex. 1006 at 17:58-61, 13:64-68 (a special event is identified
by a channel number code 226 and a program enable code
228), 16:15-20 (the converter follows similar procedures in
one-way and two-way interactive television and data
transmission).
Jeffers: Jeffers discloses that the viewer receives the requested
pay-per-view programming. Ex. 1005 at 1:4858, 10:57
11:18, 14:5415:41.
Campbell: Campbell teaches that the requested programming
is received at the receiver station in a scrambled video signal.
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IPR Petition U.S. Pat. 7,805,749
gramming signal;
(h) decrypting
said second portion of said mass
medium programming by
using said at least
one of a code and
a datum in response to said
step of processing
said reply; and

Ex. 1006 at 5:16-35, 9:15-26. Campbell also teaches that


additional data to supplement a channel television program
may be sent. Id. at 2:58-63, 17:21-28.
Jeffers: Jeffers teaches that the program tag information and
the common audio key form the decryption key which is
fed to the audio decryption circuit. Ex. 1005 at 14:45-47,
Figs. 4-5; see also id. at 3:1360, 6:667:4, 7:3149, 13:50
68, 14:3347, 17:2834, 18:918, 18:3447.
Campbell: Campbell teaches that, All television channels are
preferably scrambled by HVP unit 52 at the head end and
descrambled by the converter only after the proper control
parameters are satisfied by the converter. Ex. 1006 at 12:1015. Various data is used to enable the descrambling process,
including a program identification code, descrambling code,
subscriber identification code, channel number code, program
enable code, and key numbercode. Id. at 13:1-14:66, Figs.
11-12.

Text channels can be authorized independently (id. at 17:2428) and use a similar process (id. at 16:17-20).
(i) delivering said Jeffers: Jeffers discloses that the program is descrambled so
mass medium
that it can be viewed. Ex. 1005 at 11:68; Figs. 1; 13:37
programming to
(The TV modulator receives the descrambled video signal
an output device. from the decoder and generates and output to an RF switch
which will provide the necessary signals to the television set
for view the descrambled program.).
Campbell: Campbell teaches that the descrambled programming can be delivered to a television set. Ex. 1006 at 8:47-55,
16:32-34, Fig. 1.
Claim 3
3. The method of
claim 2, wherein
said output device
outputs at least
one of audio, hard
copy, and television, said method
further comprising the steps of:

Jeffers: Jeffers teaches that the signals are sent to the


television set for viewing the descrambled program. Ex. 1005
at 13:3-7.
Campbell: Campbell discloses that the subscriber station
include a television that outputs video, audio, and text. Ex.
1006 at 2:53-63, 8:47-52, Fig. 1, 18:46-47, 46:57-59.

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IPR Petition U.S. Pat. 7,805,749
(a) delivering instructions to said
processor; and

Jeffers: Jeffers teaches that the programming includes


messages, and that [e]ach message contains instructions to
control a function of the addressed receiving unit. Ex. 1005 at
4:18; see also id. at 14:845, 13:4159, Figs. 2A, 2B, 7.
Campbell: Campbell discloses that the converter receives instructions from the data control system: The data control
system then commands the converter to allow or disallow the
selected program . . . . Ex. 1006 at 17:58-64. Campbell also
discloses providing instructions to control logic 104 for
authorizing and descrambling the programming. See generally,
id. at 15:3-16:14. The central control logic 104 is carried out
by a microprocessor unit. Id. at 9:62-67.

(b) communicating said delivered mass medium programming


to said output device in accordance with said delivered instructions.
Claim 9
9. The method
[of] claim 2,
wherein said interactive video
viewing apparatus
comprises a microcomputer.
Claim 10
10. The method
of claim 2,
wherein a storage
device is operatively connected
to said output device, said method
further compris-

Jeffers: Jeffers teaches that the signal is processed (i.e.,


decrypted) according to the instructions and then output on the
television set. Ex. 1005 at 12:46-13:13; see also id. at
13:41-59, 14:1-47.
Campbell: Campbell discloses that the converter processes
the data-loaded television signals and provides video and
audio output for a television set. Ex. 1006 at 8:57-52.

Jeffers: Jeffers discloses that the receiving unit includes a


microcomputer. Ex. 1005 at 12:4613:13, Figs. 2B, 7,
14:8-37.
Campbell: Campbell discloses that,The central control logic
104 is carried out by a microprocessor unit. Ex. 1006 at
9:62-67.
Jeffers: Jeffers discloses that a storage device is operatively
connect to the output device. See Ex. 1005 at Fig. 1, 2A, 2B,
7; see also id. at 14:33-34, 14: 22-26, 14:58-62, 22:47-55.
Jeffers discloses that at least the audio portion of the pay-perview programming is stored at a storage device (buffer). Id.
at 13:55-57 (The encrypted audio portion of the digital bit
stream is buffered and passed to the audio decryption circuit
66 in serial form.). Jeffers also discloses that teletext
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IPR Petition U.S. Pat. 7,805,749
ing the step of
storing said mass
medium programming at said
storage device.

messages will be stored. Id.at 21:65-22:10.


Campbell: Campbell teaches that the converter contains display memory 130 which stores control data (mass medium
programming). Ex. 1006 at 9:27-33. The microprocessor
contains RAM and ROM memory. 9:64-67. When the mass
medium programming is teletext data, the display memory
130 is then filled with appropriate data from converter control
logic unit 104 which is formatted by generator 118 and
transmitted by modulator 134 for display on the user television
set. Ex. 1006 at 22:10-14; see also id. at 22:29-34 (the
selected page or sequence of pages are loaded into display
memory 130).

Claim 11
11. The method
of claim 2,
wherein a storage
device is operatively connected
to said processor,
said method further comprising
the step of:

Jeffers: Jeffers discloses that the receiver unit includes a


storage device. See Claim 10. The storage device is operatively
connected to the microcomputer and the microcontroller.
Ex. 1005 at 14:33-34 (The main functions of microcontroller
74 are to accept, store, and locate decryption keys.); id. at
14:22-26 (storage of subscriber passcode information, the
parental control key, decryption keys, and subscription
authorization data); id. at 14:58-62 (the decoder will store
the program tag number, the day of the months and the time in
hours and minutes when the program was purchased by the
storing, at said
storage device, an subscriber.). See id.; see also id. at Fig. 1, 2A, 2B, 7. Jeffers
teaches that, If the subscriber enters the necessary authorizainstruct signal
which is effective tion information, they program will be descrambled so that it
to process a sub- can be viewed. Ex. 1005 at 11:6-8, Col. 14 Col. 18 (describer reaction to scribing processing).
a content of an
Campbell: See Claim 10, above. Campbell teaches that various
information
data and instructions are stored at the decoder and enable
transmission
the converter to process the subscribers input and enable
which includes
viewing of the programming. Ex. 1006 at 11:66-12:26, 15:66said mass medi16:14, 17:21-28, 17:58-64.
um programming.
Claim 12
12. The method
Jeffers: Jeffers discloses that the decoder will store the program tag information and other information, and that such
of claim 11, furinformation is passed to the impulse pay-per-view data
ther comprising
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IPR Petition U.S. Pat. 7,805,749
communications processor at the billing center, either by the
telephone modem . . . or by a smart card. Ex. 1005 at
storing, at said
storage device, an 14:58-68; id. at 15:34-40 (the real time controller 10 commands the decoder 32 to pulse dial the billing center computer
instruct signal
which is effective 14 to relay the previous period impulse pay-per-view activity
to establish com- to the billing center computer 14); id. at 23:13-27 (the
munications with header contains a unique combination of data which, when
a remote station. used in conjunction with information stored in the decoder
memory . . . controls . . . billing procedures and various other
control functions).
the step of:

Campbell: Campbell discloses that when the key number


(instruct signal) is entered correctly, the converter requests
the data control system at the head end to authorize reception
of the channel. Ex. 1006 at 17:55-64.
Claim 13
13. The method
of claim 2,
wherein a storage
device is operatively connected
to said processor,
said method further comprising
the step of:
storing, at said
storage device, a
signal which is
effective to
control said interactive video viewing apparatus to
receive information to at least
one of supplement said video
image and to process said mass
medium pro-

See Claim 11 for storage device is operatively connected to


said processor.
Jeffers: Jeffers discloses storing control signals in the form
of a data stream (see Abstract), such as the common audio
key, the program tag information, or decryption keys,
which are effective to control the receiver to process (i.e.,
decrypt the audio and descramble the video) the mass medium
programming. Ex. 1005 at 14:15-47.
The subscribers input (id. at 11:6-8) also meets this limitation,
because it controls the receiver to receive information
(the pay-per-view program) that supplements the video image
(preview).
Campbell: Campbell discloses the entry of the subscriber key
number (signal) enables the converter to receive and process
the pay-per-view programming, which supplements the
message (video image). Ex. 1006 at 17:58-61, 16:2-14. The
subscriber may also select data that supplement[s] a channel
television program. Id. at 2:58-63, 17:21-28.
The subscriber input also constitutes the claimed signal.
See limitations 2(e)(i).

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IPR Petition U.S. Pat. 7,805,749
gramming.
Claim 18 (See Claim 2. Only new/different limitations are addressed below)
Jeffers: Jeffers discloses that the promoted pay-per-view proreceiving mass
medium programming may be encrypted data, including teletext pages.
gramming in a
Ex. 1005 at 2:15-17 (In other applications, one of the audio
first programming channels may be configured as a data channel for services
signal, said mass such as transmission of text); id. at 22:1-23:47 (describing an
medium proembodiment in which teletext pages are decrypted).
gramming inclu- Campbell: See Claim 2.
ding information
that promotes [re- In addition, Campbell teaches that data such as weather,
stock market quotations, continually-updated news stories,
lated] data
shopping information, television listings and so forth may be
provided on a complementary channel. Ex. 1006 at 16:48-59;
see also 1:65-2:3, 2:58-63, 3:8-26, 4:37-39, 14:51-66. Text
channels can be authorized independent of the program channels. Id. at 17:21-41. Text channels may be authorized in a
process similar to the television programming. Id. at 16:17-20;
see also id. at 18:30-49. In another embodiment, Campbell
teaches that the data described above may be teletext
pages, which are authorized using the same process as used
for other text. See id. at Fig. 17 & 18:50-22:34.
Jeffers: Jeffers teaches that the teletext pages are decrypted
passing a signal
word to said pro- using decryption information in the packet (signal word).
cessor in response Ex. 1005 at 22:61-65; see id. at 22:17-22 (disclosing program
to said step of
authorization information, encrypted common audio key,
processing said
program blocking information necessary for decryption of the
reply;
data).
decrypting said
data by using information included in said signal
word

Campbell: Campbell teaches that Text channels can be authorized independent of the program channels so that the
information may be provided as an additional service for
certain subscribers while others may be available for
everyone. Ex. 1006 at 17:21-41. The authorization process is
the same for text as for scrambled television. Id. at 16:15-20;
see also id. at 18:30-49, 3:8-12. See Claim 2, above. The
signals are scrambled at the head end and descrambled by the
converter only after the proper control parameters are
satisfied by the converter. Ex. 1006 at 12:10-15. Data is
used to enable the descrambling process, including a program
40

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IPR Petition U.S. Pat. 7,805,749

delivering said
data to said processor.

Claim 24
Claim 49
[Preamble]

receiving a first
information
transmission including mass medium programming and said
control signal;

identification code, descrambling code, subscriber


identification code, channel number code, program enable
code, and key numbercode. Id. at 13:1-14:66, Figs. 11-12. For
text, the subscriber must also push the ENTER key enable
descrambling. Id. at 18:40-49.
Jeffers: The data is sent to the processor for decryption. Jeffers also discloses that A message type 7 will then be provided to instruct the addressable controller-decoder to route the
previously trapped message to the teletext display peripheral.
Ex. 1005 at 22:1-10; Fig. 7.
Campbell: Logic 104 receives input data from the vertical
interval data extractor 114 . . . Converter control logic 104
processes this information[.] Ex. 1006 at 9:54-61; see also
id. at 18:47-48 (The converter than [sic] displays data directed to it by the information computer.).
See Claim 9.
Jeffers: The converter of Jeffers includes all of the recited
components (receiver, processor, input device, output device),
all of which are operatively connected as claimed. See Ex.
1005 at 9:50-9, 12:46-14:53, Figs. 1, 2A, 2B.
Campbell: The converter of Campbell includes all of the
recited components (receiver, processor, input device, output
device), all of which are operatively connected as claimed.
See Ex. 1006 at 8:46-10:36, Figs. 6-7.
Jeffers: Jeffers discloses an information transmission including
mass medium programming (the preview) and a control
signal (data stream, including the program information and
common audio key). See Claim 2.
Campbell: Campbell discloses that the signal includes a
message (mass medium programming) for display on the
television set of the user that instructs the user to enter his
confidential key number . . . to enable viewing of the program. Ex. 1006 at 15:66-16:14. The signal may also include
various codes (control signals), including a program identifycation code, descrambling code, key numbercode, program
enable code, etc. Id. at 13:1-14:28. The authorization process
is the same for text as for scrambled television. Id. 16:15-20.
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IPR Petition U.S. Pat. 7,805,749
passing said mass
medium programming to said
at least one output
device;

Jeffers: Jeffers teaches that the preview version of available


impulse pay-per-view content and additional graphics are
displayed on the receiver terminal to encourage a subscriber to
purchase the impulse pay-per-view content. See limitation
2(a).

outputting said
mass medium
programming at
said at least one
output device;

Campbell: Campbell teaches that the message requesting the


users confidential key number is displayed on the TV. Ex.
1006 at 17:55-61, 15:66-16:10, Fig. 12 (Display message to
enter key number.).
Campbell also teaches displaying a television program. Ex.
1006 at 17:21-34.
Jeffers: Jeffers teaches that, The subscriber is notified that a
program is available for authorization when the subscriber
tunes to the particular program during the preview time or
show time. Ex. 1005 at 11:3-5, 13:59-61. Jeffers discloses
that the related material (pay-per-view program or teletext
data) relates to the preview.

prompting a subscriber during


said mass medium programming
for a subscriber
reply to receive
additional materi- Campbell: Campbell discloses that the signal includes a
al related to said
message (mass medium programming) for display on the
programming;
television set of the user that instructs the user to enter his
confidential key number . . . to enable viewing of the
program. Ex. 1006 at 15:66-16:14. A subscriber may also be
prompted to receive text information that may supplement
the television programs. Id. at 17:21-34.
Jeffers: Ex. 1005 at 10:61-64; see also 11:318 (If the subreceiving said
subscriber reply
scriber enters the necessary authorization information, the
from said subprogram will be descrambled so that it can be viewed.).
scriber at said in- Campbell: When the key number is entered correctly, the
put device in reconverter requests the data control system at the head end to
sponse to said
authorize reception of the channel. Ex. 1006 at 17:58-61;
step of prompting 16:5-14; see also id. at 17:21-34 (To view the complementary
said subscriber;
text channel, the TEXT key 186 is pressed.).
See limitations 2(c) and (d) above.
inputting inforJeffers: Jeffers discloses that the data stream is processed
mation to said
once the subscriber enters the authorization information: If
processor based
the subscriber enteres the necessary authorization information,
on said subscriber the program will be descrambled[.] Ex. 1005 at 11:6-8. The
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IPR Petition U.S. Pat. 7,805,749
reply;

detecting said
control signal;

digital bit stream is then passed on to the digital processing


circuit 62 which includes a data processing circuit 64, a
decryption circuit 66, various memories 68, 70, and 72, and a
microcontroller 74. Ex. 1005 at 13:47-50; see also id. at
13:51-47.
Campbell: Based on the subscribers reply, the key number as
entered is compared with the subscribers key number as
given in key number code 236 of the eligibility word 230 as
indicated at decision step 338. If the key number matches with
the entered number, the converter control logic 104 proceeds
to the enabling step 332[.] Ex. 1006 at 16:5-10.
Jeffers: Jeffers discloses detectors for detecting data in the data
stream, which includes the common audio key and program
information used for decryption. Ex. 1005 at 13:29-69.

Campbell: Campbell discloses, among other things, a data


extractor. Ex. 1006 at 9:3-14, 10:37-11:24.
passing said con- Jeffers: Jeffers discloses that the control signals are passed to
trol signal to said a processor: subscriber unit signature key and address code
processor based
will be combined with the encrypted common audio key and
on said subscriber will be processed by the microcontroller in a proprietary
reply;
manner such that a common audio key will be derived. The
common audio key and other program tag information will
form the decryption key which is fed to the audio decryption
circuit. Ex. 1005 at 14:41-47, 13:60-69.
Campbell: Campbell discloses that logic 104 receives input
data from the vertical interval data extractor 114 and from the
subscriber via the keyboard 146 . . . . In two-way cable systems input is also received from the subscriber control bus
102. Converter control logic 104 processes this information
and operates the various modules in converter 40 under
program control. Ex. 1006 at 9:58-61.
decrypting said
Jeffers: Jeffers teaches that the pay-per-view program is
additional materi- decrypted based on information in the data stream (program
al based on said
information and common audio key). See Claim 2.
control signal
Campbell: Campbell teaches that, All television channels are
preferably scrambled by HVP unit 52 at the head end and
descrambled by the converter only after the proper control
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IPR Petition U.S. Pat. 7,805,749
parameters are satisfied by the converter. Ex. 1006 at 12:1015. Various data is used to enable the descrambling process,
including a program identification code, descrambling code,
subscriber identification code, channel number code, program
enable code, and key numbercode. Ex. 1006 at 13:1-14:66,
Figs. 11-12. Any related text is also descrambled based on
those control signals. Id. at 17:24-28 (text channels can be
authorized independent of the program).
Claim 52
The method of
claim 49, wherein
said step of controlling further
comprises the
steps of:
enabling said
control signal
based on said
subscriber reply;
and
controlling said at
least one output
device based on
said enabled control signal.
Claim 53
The method of
claim 49, wherein
said receiver station includes a
storage device,
said additional
material includes
at least one of
video, text, and a
graphic and said
step of controlling further com-

Jeffers: Jeffers discloses that the video is descrambled and


audio decrypted (control signal enabled) based on the users
input (Ex. 1005 at 11:6-8) and that the programming is output
to the television set based on the information in the data
stream (id. at 13:3-7).
Campbell: Campbell teaches that any code use for
descrambling (control signal) is enabled by the users entry of
the correct key number. Ex. 1006 at 15:64-16:14.

Jeffers: Jeffers discloses that the additional material is


premium television programming (video and audio) or text,
and it is output following the preview (i.e., sequentially). Ex.
1005 at 11:3-8.
Campbell: As shown above, Campbell teaches that the
additional material can include television programming (video
and audio) or text/graphics. Ex. 1006 at 16:48-59 (in addition
to television program channels, the converter unit provides
complementary television text and graphics channel). The
programming is output following the message (mass medium
program), i.e., sequentially. In some embodiments, the textual
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IPR Petition U.S. Pat. 7,805,749
material may amplify various news stories . . . briefly
controlling said at presented over the television program channel. Id. at 17:3134.
least one output
device to output
at least one of a
combined presentation and sequential presentation of said programming and
said at least one
of video, text, and
a graphic.
prises the step of:

D.

The Claims at Issue Are Obvious Over Powell in View of


Guillou and the Knowledge of Person of Ordinary Skill in
the Art.

In the late 1970s and early 1980s, teletext and videotex systems were
widely known. Teletext generally referred to point-to-multipoint systems in which
pages of text were encoded into a non-viewable portion of the television
broadcast signal, which could then be decoded by properly-equipped receivers.
Ex. 1004 77. Users could select and store particular pages for display on their
TV. Id. Videotex was a point-to-point computer network system in which a user
could query a host computer for pages of information through a telephone line
using a modem, and the retrieved information would be displayed on a TV. Id. at
78. The references below relate to the promotion and encryption of content on
these systems.

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IPR Petition U.S. Pat. 7,805,749
1.

Powell2

Powell discusses the advertising opportunities available on Britains Prestel


system, which a videotex system. Ex. 1014. Videotex terminals, including Prestel
terminals, include a microcomputer, added memory, a keyboard (or other input
device), a television display, and a modem for communicating with a host
computer. Ex. 1015 at 9-10. Powell discloses that there is already a fairly well
developed advertising use of Prestel, and that one form of advertising is by way of
a one-line banner advertisement at the bottom of the page. Ex. 1014 at 237-38.
Powell teaches that Prestel provides the opportunity to promote related information
on another page and thereby prompt the user to select that page:
Then there will be that advertising that cannot be squeezed into a
single line and here I think we will have something of a come on
advertisement slotted into related interest pages. This will be the sort
of find out more go to Page 2617. There has already been some
development along these lines by corporate advertisers: I can imagine
much more. For example, one could imagine Cadbury Schweppes
taking one line on pages giving their company details offering more
information and some other bonus like a Chairmans statement on the
prospects for the next year by turning to their page.

Powell was published in March, 1980 and therefore constitutes prior art to the

749 patent under 35 U.S.C. 102(b). Ex. 1014.

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IPR Petition U.S. Pat. 7,805,749
Id. at 240. This promotion and prompting is virtually identical to the promotion
and prompting disclosed in the 749 patent, wherein a cooking show is aired and
the customer is prompted to receive additional related material (the recipe) by
entering a code. This type of cross-promotion was widely known. Ex. 1004 83;
Ex. 1016 at 179-80 (disclosing teletext pages that contain program-related statistics
and information); Ex. 1017 at 373-75 (disclosing a Prestel page promotion system
in which promotional travel videos are cross-referenced to Prestel pages).
In general, the only limitations of the claims at issue that are not expressly
disclosed by Powell are the limitations that require the second portion of the
programming (or the data in Claim 18, or the related material in Claim 49) to
be encrypted and decrypted at the receiver station on the basis of a code/datum
(claim 1), signal word (claim 18), or control signal (claim 49). Ex. 1004 82-85.
However, as set forth below, it was known in the art at the time that programming
provided via teletext or viewdata systems could be received in an encrypted format
and therefore require decryption.
2.

The Knowledge of a Person of


Ordinary Skill in the Art

Encryption and decryption processes were well known in the 1970s. Ex.
1004 86. In 1976, a decryption standard called DES was approved by the United
States National Bureau of Standards. Ex. 1018. This decryption standard was

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IPR Petition U.S. Pat. 7,805,749
widely adopted for a variety of uses, including the encryption of information
provided via videotex systems. Ex. 1004 86. People of ordinary skill in the art at
the time recognized and understood that information provided on videotex systems,
like Prestel, could be encrypted.

Id. at 87.

Indeed, this need was well

documented, and at the same conference at which Powell was presented, another
presentation described the need for encryption when such systems are used for
home banking applications. See, e.g., Ex. 1019 at 193, 197. Not surprisingly,
encryption became commonplace in such systems. Ex. 1004 88; Ex. 1020 at
289-90 (at-home banking application occurs on a dedicated, scrambled channel);
Ex. 1021 at 4-3 (All of the information . . . while doing Home Banking is encoded
by a method called DES encryption.).
Accordingly, it would have been obvious to a person of ordinary skill in the
art as of 1980 that the one-line banner advertisement taught by Powell (find out
more -- go to Page 2617) could be used by a bank to direct customers from a
generally available, non-secure video, teletext or viewdata page to an encrypted,
secure page in which the customer could perform his/her banking. Ex. 1004 89.
In any such system, a code or datum designating the second portion of the mass
medium programming (the requested page) would be selected, that code would be
communicated to a remote site (the host computer), and it would be used in the
decryption process, because the decryption key would be specific to the page being
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IPR Petition U.S. Pat. 7,805,749
requested and decrypted. Id.
3.

Guillou3

U.S. Patent No. 4,337,483 (Guillou) teaches a method for providing and
receiving encrypted content in teletext and viewdata systems, such as the Prestel
system described in Powell. Ex. 1022 at 1:8-20; id. at 21:23-28 (the encryption/
decryption techniques can be applied to the Prestel system). Guillou teaches that,
in a teletext system, the decryption key would be specific to a magazine, i.e., a
set of teletext pages. Id. at 5:8-10. Guillou teaches that the control portion
(heading) of a page, which includes the page number, is not encrypted, but that the
information portion of the page is encrypted.

Id. at 3:29-61, 5:17-25.

The

information portion is encrypted using the page number and an operating key K.
Id. at 5:34-37. At the receiver station, the information portion is decrypted using
the same information, i.e., the operating key K and the page number. Id. at 6:1729, 7:64-69.
Guillou further teaches that a double key system may be used, wherein the

Guillou was filed on January 31, 1980, and issued on June 29, 1982. Ex. 1022.

By virtue of its publication on August 7, 1980 as WO 80/01636 (see Ex. 1028,


1029), Guillous disclosure is prior art under 102(b) regardless of the priority
date to which the claims at issue are entitled.

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operating key K may be encrypted using a subscriber key Ci, resulting in a message
Mi. Id. at 8:1558. The subscribers keys Ci are distributed separately to the
subscribers. Id. at 15:4650; 16:2629. The encrypted pages and the encrypted
messages Mi are transmitted to the users receiver, which uses a stored subscribers
key Ci to decrypt and extract the operating key K from the encrypted messages Mi.
Id. at 15:6616:10; 20:3421:12. After decrypting operating key K, the receiver
station uses this operating key K to decrypt the encrypted content. Id. at 10:4166.
Based on Guillous teaching that the encryption/decryption process
disclosed therein could apply to videotext systems in which individual pages,
rather than entire magazines, are requested and provided, a person of ordinary skill
in the art would have understood that each encrypted videotext page would have
been encrypted based on the page number as well. Ex. 1004 93. Indeed, this is
precisely the methodology described in Varadharagjan. Ex. 1023 at xii, 134-42,
165-66 (Prestel pages are comprised of one or more frames, each of which may
be encrypted and decrypted using a frame key); Ex. 1004 99-101.
A person skilled in the art would have been motivated to combine the
teaching of Powell and Guillou because Guillou itself explains that one of the
problems encountered by those providing content through such systems is how to
charge users for access to certain information. Ex. 1022 at 4:4-7; Ex. 1004 98.
Guillous system is intended to solve this problem. Id. Thus, in addition to
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numerous prior art references that teach that encryption should be used for security
purposes (Exs. 1019, 1020, 1021), Guillou teaches that the promoted content may
be encrypted to provide for access control and billing. Id. at 4:4-38. Applying
Guillou to the videotext context, it is clear that Guillou and Powell disclose all of
the claim limitations:
Claim Language
2. A method for mass medium
programming promotion and
delivery for use with an interactive video viewing apparatus
comprising the steps of:
(a) receiving a first portion of
said mass medium programming in a first programming
signal, said first portion of
mass medium programming
including a video image that
promotes a second portion of
said mass medium programming;

(b) displaying said video image, said interactive video


viewing apparatus having an
input device to receive input
from a subscriber;

Prior Art Disclosures


Powell: Powell discloses a method for advertising
information pages (mass medium programming)
on the Prestel viewdata system. Ex. 1014 at 233.
Prestel is interactive (id.) and information is
output on a television set.
Powell: Powell discloses a Prestel page (a first
portion of mass medium programming in a first
signal) that contains a visual banner advertisement (a video image that promotes) for related
information that is available on Page 2617 (a
second portion of the mass medium programming). Ex. 1014 at 240. Powell teaches that a
page containing Cadbury Schweppes company
details (a first portion of mass medium programming in a first signal) would include one
line (a video image) that offer[s] more information and some other bonus like a Chairmans
statement on the prospects for the next year by
turning to their page (promoting a second portion of mass medium programming). Id.
Powell: Powell discloses that the one-line come
on advertisement is displayed. Ex. 1014 at 240.
Powell discloses that the Prestel terminal has an
input device to receive input from a subscriber, as
the user must be able to turn to the page. Id.;
see also, e.g., P. 235; P. 236 (the motorist
can . . . fill in replies to questions). Prestel terminal have input devices. Ex. 1015 (Moore) at
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(c) prompting said subscriber
for a reply, during said step of
displaying said video image,
as to whether said sub-scriber
wants said second portion of
said mass medium programming promoted in said step of
displaying of said video image, said inter-active video
viewing apparatus having a
transmitter for communicating
said reply to a remote site;
(d) receiving said reply from
said subscriber at said input
device in response to said step
of prompting said subscriber,
said interactive video viewing
apparatus having a processor
for processing said reply;
(e) processing said reply and
selecting at least one of a code
and a datum designating said
second portion of said mass
medium programming to authorize delivery of said second
portion of said mass medium
programming;

7, 9.
Powell: Powell teaches a Prestel page that includes a one line advertisement stating find
out more go to Page 2617. Ex. 1014 at 240.
Powell discloses that the Prestel system is interactive. Ex. 1017 at 233. Prestel terminals included a transmitter for communicating a users
input to a remote site. Ex. 1015 (Moore) at 7, 9.

Powell: Powell discloses that the user can go to


Page 2617 or turn[] to [the promoted] page.
Ex. 1014 at 240.
Prestel terminals included a processor for processing a users input. Ex. 1015 (Moore) at 7, 9.
Powell: Powell discloses that the promoted page
could be identified by Page 2617 (a code or
datum designating said second portion of said
mass medium programming). Ex. 1014 at 240.
Entering this page number authorizes the Prestel
database to deliver that page to the user.

Guillou: Pages are identified by page number.


Ex. 1022 at 3:34-36.
(f)communicating said selecPowell: The Page 2617 information (the
ted at least one of a code and a code/datum) is communicated to the Prestel dadatum to a remote site;
tabase. Ex. 1014 at 240; Ex. 1015 (Moore) at 7, 9
(A viewdata system does not grab a page of
information, it sends a request to the host computer for a specific item which is then specially
sent to that address.).
(g) receiving said second por- Powell: Powell discloses that the user would retion of said mass medium
ceive the information on Page 2617 (the secprogramming in a second pro- ond portion of said mass medium programming).

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gramming signal;
(h) decrypting said second
portion of said mass medium
programming by using said at
least one of a code and a datum in response to said step of
processing said reply; and
(i) delivering said mass
medium programming to an
output device.
Claim 3
3. The method of claim 2,
wherein said output device
outputs at least one of audio,
hard copy, and television, said
method further comprising the
steps of:
(a) delivering instructions to
said processor; and

The page would be received in a separate


programming signal. Ex. 1015 (Moore) at 7, 9.
Guillou: Guillou teaches that the page number is
used to decrypt the page. Ex. 1022 at 6:17-29,
Claim 1 at (B)(f).

Powell: Powell discloses that Page 2617 (the


second portion of the mass medium programming) is output on a television set in the corner
of the sitting room. Ex. 1014 at 236.
Powell: Powell discloses that the Prestel pages
are output on a television set in the corner of the
sitting room. Ex. 1014 at 236.

Powell: The Prestel terminals operated by processing information received from a host computer on a microcomputer. Ex. 1015 (Moore) at
9-10.
Guillou: Guillou discloses delivering processing
instruction (for decryption) to a processor. Ex.
1022 at 20:18-21:14, Figs. 9-10.
Powell: The processed information is output to a
television set. Ex. 1015 (Moore) at 8.

(b) communicating said delivered mass medium programming to said output device in
Guillou: Guillou further teaches that the operating
accordance with said delivered key is used to decrypt the broadcast prior to
instructions.
display. Ex. 1022 at 7:43-8:14.
Claim 9
9. The method [of] claim 2,
Powell: Prestel terminals contain a microcomwherein said interactive video puter. Ex. 1015 (Moore) at 9 (The user interacts
viewing apparatus comprises a directly with [a host] computer by accessing it
microcomputer.
directly through his own microcomputer).
Guillou: Guillou discloses that the system disclosed therein may apply to the Prestel system.
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IPR Petition U.S. Pat. 7,805,749
Figs. 9-10.
Claim 10
10. The method of claim 2,
wherein a storage device is
operatively connected to said
output device, said method
further comprising the step of
storing said mass medium
programming at said storage
device.
Claim 11
11. The method of claim 2,
wherein a storage device is
operatively connected to said
processor, said method further
comprising the step of:
storing, at said storage device,
an instruct signal which is effective to process a subscriber
reaction to a content of an information transmission which
includes said mass medium
programming.
Claim 12
12. The method of claim 11,
further comprising the step of:
storing, at said storage device,
an instruct signal which is effective to establish communications with a remote station.
Claim 13
13. The method of claim 2,
wherein a storage device is
operatively connected to said
processor, said method further
comprising the step of:
storing, at said storage device,
a signal which is effective to

Powell: Prestel terminals had memory to store


[retrieved] information for later use. Ex. 1015
(Moore) at 9.
Guillou: Guillou discloses that receiving stations
may comprise a page memory, which decrypted
pages pass through prior to being displayed via a
display means. Ex. 1022 at 19:4-22; Fig. 9.
Powell: The users request for page 2617 constitutes an instruct signal. Ex. 1015 (Moore) at 9
(viewdata terminals have the ability to store [retrieved] information for later use and can
produce, store, edit, and transmit information on
command.).
Guillou: Guillou teaches that the operating key
(instruct signal) is used to decrypt (effective to
process) the broadcast prior to display. Ex. 1022
at 7:43-8:14.

Powell: The users request for Page 2617


constitutes an instruct signal that is effective to
establish communication with a remote station,
e.g., the Prestel host computer.

See Claim 11 for storage device is operatively


connected to said processor.
Powell: Powell teaches that a signal (containing
Page 2617) would be received. The information
of Page 2617 is related (i.e., the information
supplements the video image). Ex. 1014 at 240.
The Prestel terminal stores the page (signal). Ex.
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IPR Petition U.S. Pat. 7,805,749
control said interactive video
viewing apparatus to receive
information to at least one of
supplement said video image
and to process said mass
medium programming.

1015 (Moore) at 7-9.

information included in said


signal word

In addition, Guillou discloses a message Mi,


which may be considered to be the signal word
that is passed to the processor, and the data is decrypted by using information included in the
message.
See Claim 9.

Guillou: Guillou teaches storing a decryption key


(signal) that allows the system to decrypt (process) the information received (mass medium
programming). Ex. 1022 at 1:12-20, 7:43-47.
See limitations 2(e)(i).
Claim 18 (new or different limitations only)
receiving mass medium pro- Powell: Powell teaches promoting related data,
gramming in a first programi.e., the information on Prestel page 2617. Ex.
ming signal, said mass med1014 at 233.
ium programming including
information that promotes [related] data
passing a signal word to said
Guillou: Guillou discloses passing operating key
processor in response to said
K (signal word) to a processor and decrypting
step of processing said reply;
the page by using that key. Ex. 1022 at 6:23-25,
7:64-69, Claim 1.
decrypting said data by using

Claim 24

With respect to Claim 49, Guillou teaches that the key may be transmitted
separate from the encrypted content. Ex. 1022 at 8:59-67. A person of ordinary
skill in the art would have recognized that the decryption of videotext pages may
be page-specific, and that the key could be transmitted prior to receiving the
encrypted page. Ex. 1004 97. Thus, it would have been obvious to a person of
ordinary skill in the art that Guillous message (Mi) for decrypting the related
material (encrypted Page 2617) could be sent with the promotional page itself. Id.

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IPR Petition U.S. Pat. 7,805,749
Alternatively, a person of ordinary skill in the art would have recognized
that the banner advertisement described in Powell could be used to promote
teletext pages. Id. 96. Combining Powell and Guillou in the teletext context
renders Claim 49, and its dependent claims, unpatentable. Specifically, Guillou
teaches that, in one example, the messages Mi are grouped in a special page,
known as the access control page, which is updated each time the operating key is
changed. Id. at 8:60-63. The access control page is distributed cyclically, like the
ordinary pages of information, and is not locked. Id. at 8:63-66. Thus, Guillou
teaches receiving a first information transmission that includes mass medium
programming (teletext information pages) and a control signal (access control
page).
Thus, the combination of Powell and Guillou teach prompting a subscriber
during said mass medium programming (display of first teletext page) for a reply
to receive additional material (information on page 2617) related to said programming, receiving a reply, and inputting information to a processor. Ex. 1004 96.
Upon selection of the additional material (page 2617), the control signal (message
Mi) would be detected, passed to the processor, and the encrypted teletext page
would be decrypted based on the control signal, Mi.

Id.

Therefore, the

combination of Powell and Guillou disclose all of the elements of Claim 49, and it
would have been obvious to a person of ordinary skill in the art.
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IPR Petition U.S. Pat. 7,805,749
Claim 49
[Preamble]
(a) receiving a first
information transmission
including mass medium
programming and said
control signal;

(b) passing said mass medium programming to said at


least one output device;
(c) outputting said mass
medium programming at said
at least one output device;
(d) prompting a subscriber
during said mass medium
programming for a
subscriber reply to receive
additional material related to
said programming;
(d) receiving said subscriber
reply from said subscriber at
said input device in response
to said step of prompting
said subscriber;
(e) inputting information to
said processor based on said
subscriber reply;

The receiver of Guillou contains the recited


components. See Figs. 9-10.
Powell: Powell discloses receiving and output-ting
a Prestel page (a first information transmission
including mass medium programming).
Guillou: Guillou teaches receiving a first
information transmission that includes mass
medium programming (teletext information pages)
and a control signal (access control page). Ex. 1022
at 8:60-66. Guillou teaches that the message (Mi)
for decrypting the related material (encrypted Page
2617) could be sent separate from the encrypted
page. 8:60-66.
See Claim 2.
See Claim 2.
See Claim 2.

See Claim 2.

See Claim 2. Powell discloses that the requested


page (information) is input to a processor based on
the subscribers request. Ex. 1014 at 233. Guillou
also discloses that information (message Mi) is
input to the processor based on the subscriber reply
(page selection). Ex. 1022 at 9:3-12,19:35-41,
20:40-21:12, Figs. 9-10.
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IPR Petition U.S. Pat. 7,805,749
(f) detecting said control
signal;

Guillou: Guillou teaches that a control signal


(message Mi) is detected. Ex. 1022 at Figs. 7, 9, 10;
8:559:12; 17:1918:51; 19:4220:17; 20:4052;
see also claim 1.
(g) passing said control
Guillou: Guillou teaches that the control signal
signal to said processor
message Mi is passed to the selection circuit 143,
based on said subscriber
which passes the encrypted digital control signal
reply;
message to the decoding circuit 145, which passes
the encrypted digital control signal to a K-restoring
circuit 110. Ex. 1022 at Figs. 7, 9, 10; see also id.
at 16:110; 20:617.
(h) decrypting said additional Powell: Powell teaches that the additional material
material based on said
(page 2617) would be received. Ex. 1014 at 233.
control signal; and
Guillou: Guillou teaches that the pages may be
received in encrypted form. See next limitation.
(j) controlling said at least
Powell: Powell discloses that the information on
one output device to output
page 2617 would be output.
said additional material
Guillou: Guillou discloses that the digital inbased on subscriber reply.
formation portion (i.e., from digital line element
18) along with video programming (i.e., from video
line element 16) are presented on a display device
20. Id. at Figs. 1, 2, 7, 9; 2:19; 7:4; 10:56; see also
claim 1.
Claim 52
The method of claim 49,
wherein said step of
controlling further comprises
the steps of:
enabling said control signal
based on said subscriber
reply; and controlling said at
least one output device based
on said enabled control
signal.
Claim 53
The method of claim 49,
wherein said receiver station
includes a storage device,

Guillou: Guillou teaches that decrypting Prestel


pages using a decryption key (control signal) will
cause the page to be displayed. Ex. 1022 at 7:43
8:14. The control signal is enabled based on the
subscribers request for a page.

See Claim 2.
Powell: Page 2617 is at least one of video, text,
and a graphic and is presented sequentially.
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IPR Petition U.S. Pat. 7,805,749
said additional material
includes at least one of
video, text, and a graphic and
said step of controlling
further comprises the step of:
controlling said at least one
output device to output at
least one of a combined
presentation and sequential
presentation of said programming and said at least one of
video, text, and a graphic.
IX.

SECONDARY CONSIDERATIONS CANNOT OVERCOME


THE STRONG EVIDENCE OF OBVIOUSNESS
Secondary considerations do not control the obviousness conclusion. Newell

Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Where, as here,
a strong prima facie obviousness showing exists, even relevant secondary
considerations supported by substantial evidence may be inadequate to overcome
a final conclusion . . . [of] obvious[ness]. Leapfrog Enters. Inc. v. FisherPrice,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Unified is not aware of any evidence
of secondary considerations that would support a finding of non-obviousness, but
reserves the right to supplement its positions.
X.

CONCLUSION
For the reasons set forth above, Unified has established a reasonable

likelihood of prevailing in showing that Claims 2, 3, 9-13, 18, 24, 49 and 52-53 of
the 749 patent are unpatentable, and therefore requests that the Board order an

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IPR Petition U.S. Pat. 7,805,749
Inter Partes Review trial and cancel those claims. Unified authorizes the Patent
and Trademark Office to charge any required fees to Deposit Account No. 150030, including the fee as set forth in 37 C.F.R. 42.15(a) and any excess claim
fees.
Respectfully submitted,
OBLON SPIVAK
Dated: December 31, 2014
Customer Number

22850

/Michael L. Kiklis/
Michael L. Kiklis (Reg. No. 38,939)
Attorney for UNIFIED PATENTS INC.

Tel: (703) 413-3000


Fax: (703) 413 -2220
(OSMMN 07/09)

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IPR Petition U.S. Pat. 7,805,749
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105(b), the undersigned certifies
service of a copy of this Petition for Inter Partes Review and supporting materials
on the Patent Owner by USPS Express Mail at the correspondence address of
record for the 749 patent:
Goodwin Procter LLP
901 New York Avenue, N.W.
Washington, D.C. 20001
Courtesy copies of the foregoing Petition for Inter Partes Review and supporting
materials have also been served via USPS Express Mail on Patent Owners counsel
in the co-pending litigation:
Brian E. Farnan
Farnan LLP
919 North Market Street
12th Floor
Wilmington, DE 19801

Dated: December 31, 2014

By:

61

/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939