Unified Patents, Inc. v. Berman

Trials@uspto.gov Paper 10
571.272.7822 Entered: December 14, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
UNIFIED PATENTS INC.,
Petitioner,
v.
JOHN L. BERMAN,
Patent Owner.
____________
Case IPR2016-01571
Patent 5,523,791
____________
Before KEN B. BARRETT, PATRICK M. BOUCHER, and
MELISSA A. HAAPALA, Administrative Patent Judges.
HAAPALA, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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United Patents Inc. (“Petitioner”) filed a Petition pursuant to 35
U.S.C. §§ 311–319 to institute an inter partes review of claims 2–16 of U.S.
Patent No. 5,523,791 (“the ’791 patent”). Paper 1 (“Pet.”). John L. Berman
(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
Applying the standard set forth in 35 U.S.C. § 314(a), which requires
demonstration of a reasonable likelihood that Petitioner would prevail with
respect to at least one challenged claim, we deny Petitioner’s request and do
not institute an inter partes review.
I. BACKGROUND
A. The ‘791 Patent (Ex. 1001)
The ’791 patent describes techniques for superimposing images over
television scenes. Ex. 1001, 1:5–6. A viewer can use an input device, such
as a joystick, to select an overlay image and position the overlaid image with
respect to the background video to set up humorous or otherwise expressive
effects. See id. at 1:34–52. The ’791 patent further describes warping
(distorting) the background video in a manner similar to a fun-house mirror
by varying the phase of the horizontal or vertical synchronization pulses to
produce a variable phase shift of the horizontal lines. See id. at 3:5–12;
5:43–61.
Figure 1 of the ’571 patent is reproduced below:

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Figure 1 illustrates a preferred embodiment used to overlay an image on
background video and to interact with the overlaid image. See id. at 3:27–
39, 3:39–4:14. A source of demodulated video (e.g., video cassette recorder,
cable converter) is connected to interacting apparatus 102, which combines
demodulated video 94 (background video) with overlayed image 96, such as
the hat illustrated in Figure 1. Id. at 3:39–42. The combination of
background video 94 with overlayed image 96 is supplied to television
receiver 92. Id. at 48–50. Interacting apparatus is controlled by joystick 124
to signal to the interacting apparatus to perform various functions, such as
selecting a particular overlay image, positioning an overlay image relative to
background video, and producing a distortion of the picture. See id. at 3:51–
4:14.

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B. Illustrative Claims
Claims 2 and 16 are illustrative of the subject matter of the claims at
issue:
2. An apparatus for inserting an overlay image onto a
background video image, said apparatus comprising:
video input means, for receiving a video signal
corresponding to said background video image;
synchronization means, coupled to said video input means,
for generating synchronization signals from said background
video signal;
viewer input means, comprising selection means for
receiving an input command from a viewer to select an overlay
image and position input means for receiving a position input
from a viewer and generating a position signal to position an
image on a display;
processor means, coupled to said operator input means, for
receiving said input command and generating overlay image
data;
first memory means, coupled to said processor means, for
storing said overlay image data;
address generator means, coupled to said memory means,
said processor means and said synchronization means for
selectively generating memory addresses for said memory means
in response to said processor means and in synchronization with
said synchronization means; and
video output means, coupled to said memory means, for
selectively reading the overlay image data from said memory
means in synchronization with said synchronization means and
merging said overlay image with said background video image.
16. A method of distorting a video image comprising the
steps of:
receiving a video signal corresponding to said video
image;

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separating vertical and horizontal synchronization signals
from said video signal and generating horizontal and vertical
synchronizing pulses;
receiving an input command from an operator for selecting
a normal or distorted image;
selectively applying, in response to said input command
and a predetermined pattern, said horizontal synchronizing
signals and said horizontal synchronizing pulses to each
horizontal line of said video signal and outputting a distorted
video signal for generating a distorted video image.
C. References
Petitioner relies on the following references:
1. U.S. Patent No. 4,855,813, issued Aug. 8, 1989 (“Russell”)
(Ex. 1003).
2. U.S. Patent No. 5,594,467, issued Jan. 14, 1997 (“Marlton”)
(Ex. 1005).
3. Intel 82786 Graphics Coprocessor User’s Manual (1988) (“Intel
User’s Manual”) (Ex. 1004).
D. Grounds Asserted
Petitioner challenges the patentability of the claims of the ’791 patent
under 35 U.S.C. § 103(a) over the following combinations of references:
Reference(s) Claim(s)
Russell alone or in view of Intel
User’s Manual 2
Russell alone or in view of Intel
User’s Manual 3–8, 10–15
Russel and Marlton 9, 16
E. Related Proceedings
Petitioner and Patent Owner identify the following litigation involving
the ’791 Patent: (1) Berman v. Comcast Corp., Case No. 2-16-cv-00412

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(E.D. Tex.); (2) Berman v. DIRECTV, LLC, Case No. 3-16-cv-00382 (N.D.
Tex); and (3) AT&T Serv., Inc. v. Berman, Case. No. 3-16-cv-01106 (N.D.
Tex). Pet. 2–3; Paper 6, 2. Petitioner also identifies the following additional
proceeding as consolidated with Berman v. AT&T: AT&T Services, Inc. v.
Berman, Case No. 3:16-cv-01106 (N.D. Tex.). Pet. 2–3.
II. ANALYSIS
A. Claim Construction
The ’791 patent is expired. Our review of claim terms of an expired
patent is similar to that of a district court’s review. In re Rambus, Inc., 694
F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the principle that the
words of a claim are generally given their ordinary and customary meaning,
as understood by a person of ordinary skill in the art at the time of the
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). In determining the meaning of a claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
1. Means-Plus-Function Terms Appearing in Claim 9
Petitioner proposes constructions for a number of terms that appear in
claim 9 and recite the word “means.” Pet. 11–12. Patent Owner asserts that
construing these terms is not necessary at this time. Prelim. Resp. 13.
As Petitioner correctly notes (Pet. 7), a claim term that includes the
words “means” is presumptively a means-plus-function element under 35

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U.S.C. § 112 ¶ 6.1 See Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1349 (Fed. Cir. 2015). Such terms are construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof. 35 U.S.C. § 112 ¶ 6.
For purposes of this Decision, we agree with Petitioner that the
following terms are presumptively means-plus-function limitations. The
terms all include the word “means” and neither party, on the current record,
presents any challenge rebutting the presumption. Therefore, we construe
them in accordance with 35 U.S.C. § 112 ¶ 6.
a. “operator input means”
The function recited by this term is “receiving an input command
from an operator for selecting a normal or distorted image.” Petitioner
asserts the corresponding structure is “a joystick control unit.” Pet. 12
(citing Ex. 1001, 3:51–53, 5:36–42, Figs. 1, 2). Patent Owner does not
address this construction.
For purposes of this Decision, we adopt Petitioner’s proposed
structure and construe “operator input means” as “a joystick control unit and
equivalents thereof.”
b. “video output means”
The function recited by this term is “selectively applying, in response
to said input command and a predetermined pattern, said horizontal
synchronizing signals and said horizontal synchronizing pulses to each
1 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”)
redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-
29, 125 Stat. 284, 296 (2011). Because the ’791 patent has a filing date
before the effective date of the AIA, we refer to the pre-AIA version of 35
U.S.C. § 112.

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horizontal line of said video signal and outputting a distorted video signal
for generating a distorted video image.” Petitioner asserts the corresponding
structure is “a phase-lock unit and video serializers that supply video and
overlay enable information for outputting the distorted video signal.” Pet.
12 (citing Ex. 1001, 4:66–5:9, Fig. 2). Patent Owner does not address this
construction.
The ’791 patent describes supplying latched video data to video
serializers, which supply serialized red, green, blue, and overlay data to
overlay enable inputs of the phase lock unit. Ex. 1001, 66:5–6. The ’791
patent further describes that variable synchronization delay (VSD) is the
basis for apparent warping (distorting) of the image due to a line-to-line
phase shift of the phase of the horizontal synchronization. Id. at 5:43–47.
The phase-lock unit selects the background video or overlaid image data
based on the state of its overlay enable pin, which also determines selection
of either the horizontal synchronization (HS) pulse or the standard horizontal
synchronization pulse (AHS). Id. at 5:53–59.
In view of the foregoing description, we are not convinced that the
video serializers perform any part of the recited function of the “video
output means.” Rather, the recited functions are described as performed by
the phase lock unit based on the state of its overlay enable pin. Accordingly,
for purposes of this decision, we construe “video output means” as “a phase-
lock unit including an overlay enable pin and equivalents thereof.”
2. Other Terms
Petitioner and Patent Owner propose constructions for a number of
additional terms that appear in the claims of the ’791 patent. See Pet. 8–12;
Prelim. Resp. 14. For purposes of this Decision, we do not find it necessary
to construe these terms, and accord them their ordinary and customary

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meaning. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (holding that “only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”).
B. Discretion Whether to Institute Under 35 U.S.C. § 325(d)
Patent Owner contends we should exercise our discretion to deny
institution on all grounds because the same or substantially the same prior
art or arguments were previously presented to the Office. Prelim. Resp. 2.
Specifically, Patent Owner asserts the same alleged prior art that Petitioner
relies upon (Russell) was already presented to the Office with the ’791
claims clearly distinguished from that prior art. Id.; see also id. at 4–6
(describing the prosecution history of the ’791 patent). Patent Owner further
asserts that Petitioner has deliberately avoided the complete record of the
’791 patent prosecution history and proceedings and fails to address critical
arguments that Applicant made during prosecution that were successful in
overcoming Russell and getting the claims allowed. Id. at 1, 6–7.
Section 325(d) provides: “[i]n determining whether to institute . . . a
proceeding . . . , the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.” Thus, before we decide
whether we should exercise our discretion to deny institution for one or
more grounds, we first must determine whether any of the grounds asserted
in this Petition present the “same or substantially the same prior art or
arguments” as those previously presented to the Office.
The prosecution history of the ’571 patent indicates that in an Office
Action mailed March 31, 1994, the Examiner rejected originally filed claims
1, 2, and 4 as anticipated by Russell. Ex. 1006, 26, 28. The Examiner
rejected originally filed claim 3 as anticipated by Dunbar (U.S. 5,235,423;

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Aug. 10, 1993). Ex. 1006, 28, 30. On January 22, 1994, an Amendment
was filed in response to the March 1994 Office Action in which Applicant
made arguments distinguishing the rejected claims from Russell’s
“superimposing windows over one another in a composite television
display.” See id. at 49. In that Amendment, Applicant also added new
claims 5–18. Id. at 40–48. Subsequent to the Amendment, an Examiner
Interview was conducted and in the Examiner Interview Summary (Aug. 29,
1994), the Examiner indicated claims 5, 11, 12, and 18 overcame Russell.
Id. at 52. The Examiner further indicated Dunbar was circumvented with
the amendment to claim 3. Id. Following a subsequent Amendment (Aug.
25, 1994), in which Applicant amended a subset of the claims and added
claims 19 and 20, the Examiner issued another Office Action (Nov. 25,
1994). In this Office Action, claims 1, 2, 4, 5, 12, 19, and 20 were rejected
as anticipated by a new reference (Wilson), and claims 3, 6–11, and 13–18
were indicated as “allowable over the prior art of record.” Id. at 64, 66.
Applicant made further amendments distinguishing the claims over Wilson
and claims 3, 5–11, and 13–20 were ultimately allowed by a Notice of
Allowance mailed September 14, 1995.2 See id. at 69–74, 80, 82.
Petitioner asserts that claims 2–8 and 10–15 are unpatentable as
obvious over Russell alone or in combination with Intel User’s Manual. Pet.
13–42. Petitioner further asserts that claims 9 and 16 are unpatentable as
obvious over Russell and Marlton. Id. at 42–55. Claims 2–8 and 10–15
relate to inserting an overlay image onto a background video image, while
2 Claims 3, 5–11, and 13–20 were renumbered upon issuance into issued
claims 1–16. See Ex. 1006 41–48, 59–60, 69–72 (claim number edits
indicating issued claim number). The remaining claims were canceled.

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claims 9 and 16 relate to distorting a video image. For purposes of our
analysis, we consider each group separately.
1. Claims 2–8 and 10–15
For the grounds challenging claims 2–8 and 10–15, we determine that
Russell was substantially considered by the Examiner during the prosecution
of these claims. Although these issued claims were never rejected over
Russell, they were added in Amendments immediately following the Office
Action (Mar. 31, 1994) rejecting original claims 1, 2, and 4 over Russell,
and preceding the next Office Action (Nov. 25, 1994). The Examiner
Interview Summary evidences consideration by the Examiner of Russell for
the newly added claims. See Ex. 1006, 52 (indicating a subset of the new
claims overcome Russell). Furthermore, in the November 1994 Office
Action, the Examiner withdrew the anticipation rejection over Russell and
explicitly indicated that another subset of the claims appeared to be
allowable over the prior art of record. See Ex. 1006, 63–66. Accordingly,
based on the record before us, we find that Russell was considered
previously by the Office with regards to claims 2–8 and 10–16.
We also determine that the Petition relies on Intel User’s Manual in
substantially the same manner as the Examiner used Russell. The Petition
cites Intel User’s Manual to teach overlay image data by its description of
window management features of the Intel 82786 coprocessor, specifically
manipulation and display of multiple windows on a screen. See Pet. 17, 28–
29, 32. We agree with Patent Owner’s assertion (Prelim Resp. 5–8) that
during prosecution, Applicant submitted arguments distinguishing the claims
over Russell’s superimposing windows over another image. See Ex. 1006,
49; see also Ex. 1003, 1:64–67, Fig. 13 (describing and illustrating a
composite television display in which a number of windows are overlaid

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with other windows). We find the manipulation and display of windows
described in cited sections of Intel User’s Manual is substantially the same
prior art as that presented previously to the Office by Russell.
We conclude that the Petition relies on the same or substantially the
same prior art and arguments presented previously to the Office for the
grounds challenging claims 2–8 and 10–15 over Russell alone, or in
combination with Intel User’s Manual.
We further determine that it is appropriate to exercise our discretion to
deny institution of these grounds. Petitioner acknowledges the Examiner
specifically used Russell to reject the original claims. Pet. 5. Petitioner
further acknowledges that Applicant added the new claims (ultimately
resulting in the issued claims) in response to the Office Action in which the
rejection over Russell was pending. See id. at 5–6. Nevertheless, Petitioner
fails to present any argument distinguishing the Examiner’s prior
consideration of Russell or to provide a compelling reason why we should
readjudicate substantially the same prior art and arguments as those
presented during prosecution and considered by the Examiner. This would
not be an efficient use of Board resources in this matter. Accordingly, we
exercise our discretion and decline to institute review of claims 2–8 and 10–
15 under 35 U.S.C. § 103(a) over Russell, or over Russell and Intel User’s
Manual.
2. Claims 9 and 16
Our analysis differs for the obviousness ground challenging claims 9
and 16 over Russell and Marlton. These claims do not recite overlay image
data, but rather relate to distorting a video image. The Petition relies on
Marlton, not Russell, to disclose distorting a displayed image by using
different scaling factors in the horizontal and vertical directions. Pet. 43,

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46–47. Marlton does not appear on the face of the patent in the list of
references cited during prosecution. See Ex. 1001, 1. Nor does Patent
Owner assert that Marlton, or prior art substantially the same as Marlton,
was considered previously. Rather, Patent Owner merely argues we should
reject the petition because Russell was presented previously to the Office.
See Prelim Resp. 19. This argument is not sufficient to persuade us the
obviousness ground challenging claims 9 and 16 presents the same or
substantially the same prior art and arguments as that presented previously to
the Office. Accordingly, we decline to deny this ground under § 325(d).
C. Obviousness Over Russell and Marlton
Petitioner contends that claims 9 and 16 are unpatentable because they
would have been obvious under 35 U.S.C. § 103(a) over Russell and
Marlton. Pet. 42–55. For the reasons that follow, we are not persuaded that
Petitioner has demonstrated a reasonable likelihood of prevailing on this
ground.
Russell describes an image processing system selectively merging
graphics, text, digitized video frames, and/or full motion video into a user
selectable composite television display. Ex. 1003, 1:59–65. The image
processing system includes a video controller that contains circuitry for
synchronizing the operations of the image processing system and controlling
the mixing of motion video and captured/stored video pictures. Id. at 11:66–
12:4. The video controller includes a phase detector that generates the
synchronizing signals for the image processing system, including composite
sync, horizontal sync, and vertical sync signals. Id. at 12:39–52.
Marlton describes a system for combining video signals and graphics
signals on a common display. Ex. 1005, 1:11–12. The video signals are
from a video source, such as a video disc player, and the graphics signals are

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generated by a computer. Id. at 1:13–15. Marlton further describes the
displayed image can be distorted in its aspect ratio by using different scaling
factors in the horizontal and vertical directions. Id. at 3:35–37; see also id.
at Figs. 37a, 37b, 24:15–27 (illustrating and describing the distortion caused
by scaling an image by a factor of 50% in the vertical direction and 180% in
the horizontal direction). An interpolator can perform horizontal scaling of
the signal by sub-sampling at a predetermined clock rate to allow the video
to be displayed in a reduced size window of the graphics screen. Id. at 7:31–
35.
Claim 16 recites selectively applying, in response to said input
command [for selecting a normal or distorted image] and a predetermined
pattern, said horizontal synchronizing signals and said horizontal
synchronizing pulses to each horizontal line of said video signal and
outputting a distorted video signal (“selectively applying” limitation).
Claim 9 recites similar functions performed by the video output means. For
both limitations, Petitioner relies on the arguments presented for claim 9.
See Pet. 55 (claim map for claim 16 citing to §§ 9B, 9D of Petition).
In particular, Petitioner contends that Russell’s video controller
generates “horizontal and vertical synchronization signals” and a person of
ordinary skill would have understood a typical sync separator creates pulses
for use by the video processing circuitry. Pet. 43–44. Petitioner asserts
Russell and Marlton both have the structure for using synchronizing
information present in the incoming video signal to produce an output video
signal. Id. at 45. Petitioner further asserts Russell discloses applying
horizontal and vertical synchronization signals generated from the
synchronizing signal controller and Marlton discloses an interpolator that
scales an image to create a distorted image. Id. at 45–46. Petitioner argues

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that, therefore, the combination of Russell and Marlton teach techniques that
allow distortion of video images using a processor and thus disclose the
“video output means.” Id. at 46; see also id. at 51–54 (claim map for “video
output means”). In support of its assertions, Petitioner relies on testimony of
its witness, Thomas A. Gafford. See id. at 43–47 (citing Ex. 1002).
Patent Owner argues that Marlton does not disclose a pattern of
variable timing from pulse to selective pulse. Prelim. Resp. 20. Patent
Owner asserts that, at most, Marlton discloses different horizontal and
vertical scaling factors, which refers to scaling imagery on a display whose
horizontal synchronization pulses are evenly displayed and independent of
any image information displayed. Id.
We have reviewed the information provided by Petitioner and
determine that Petitioner does not adequately explain or map the “selectively
applying” limitation of claim 16 and the “video output means” of claim 9 to
the combined teachings of Russell and Marlton. Petitioner’s claim map of
the “video output means” consists of block quotes without an explanation of
how the cited sections disclose the specific elements of the claim limitation.
See Pet. 51–54. Nor does Petitioner adequately explain the mapping in the
discussion of this limitation. Petitioner asserts the references have the
structure to use synchronizing information, Russell discloses applying
horizontal and vertical synchronization signals, and Marlton discloses an
interpolator that scales an image to create a distorted image. Id. at 45–47.
But Petitioner does not explain how the combination of references discloses
selectively applying horizontal synchronizing signals and horizontal
synchronizing pulses to output a distorted video signal. See id. at 45–47.
Furthermore, with respect to claim 9, Petitioner has not met its burden
of demonstrating that the combination of Russell and Marlton discloses the

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elements as construed. For instance, although our Decision adopts
Petitioner’s proposed construction for operator input means to be “a joystick
control unit and equivalents thereof,” the Petition does not map any element
of Russell or Marlton to “a joystick control unit” or contend that the user
manipulation structures in either reference is equivalent to “a joystick
control unit.” See Pet. 44, 50–51.
For the foregoing reasons, we conclude Petitioner has not
demonstrated a reasonable likelihood of prevailing in establishing that
claims 9 and 16 would have been obvious over the combination of Russell
and Marlton.
III. ORDER
In view of the foregoing, it is:
ORDERED that Petitioner’s request for inter partes review of
claims 2–16 of U.S. Patent 5,523,791 is denied.
PETITIONER:
P. Andrew Riley
Andrew.riley@finnegan.com
Yoonhee Kim
Yoonhee.kim@finnegan.com
Jonathan Stroud
jonathan@unifiedpatents.com
PATENT OWNER:
John Weatherspoon
jweatherspoon@kmkpllc.com