PATROLL Winning Submission

U.S. Patent 7,349,668

Claim 1 of the patent-at-issue, U.S. Patent 7,349,668 (“Optinetix”), which was filed on
Nov. 25, 2002, and claims a May 31, 2000, priority date, is generally directed to a system and
method for information distribution through a broadcast medium. More specifically, claim 1 is
directed to a method of information distribution comprising electronically inserting digital
information (such as a coupon) encoded as a noticeable indicator into a broadcast signal
containing a related content, prompting a user via the noticeable indicator to capture the digital
information, transforming the captured digital information into a format recognizable to a mobile
communication device and thereby producing transformed information, storing the transformed
information on the mobile communication device for display on the device in a manner that can
be read by an optical reader, and activating the mobile communication device to display the
information on its display so the information can be read by an optical reader at a point of sale.

The primary reference, U.S. Patent 7,213,254 (“Koplar”), which was filed on Apr. 9,
2001, and claims priority to at least U.S. Provisional Application 60/195542 filed on Apr. 7,
2000, is generally directed to universal methods and devices for hand-held promotional
opportunities. As shown mapped below in the sample claim chart comparing claim 1 of Optinetix
to Koplar, the prior art disclosure present in US 7,213,254 is indeed supported by US Provisional
Application 60/195542, thereby supporting its use as a prior art reference.

In addition to the primary reference, secondary and tertiary references have also been
identified and mapped against claim 1 of Koplar below. Secondary reference, U.S. Patent
7,150,028 (“Microsoft”), which was filed on Dec. 30, 1999 and without an earlier claimed
priority date, is directed to a method and system for downloading, storing and displaying coupon
data. Tertiary reference, U.S. Patent 6,282,713 (“Sony”), which was filed on Dec. 21, 1998 and
without an earlier claimed priority date, is directed to a method and apparatus for providing on-
demand electronic advertising.

1
 A1. US7213254 (“Koplar”)
A2. Provisional US 60/195542 (“Koplar”)
US7349668 (“Optinetix”)
B. US7150028 (“Microsoft”)
C. US6282713 (“Sony”)
1. (pre) A method for information A1. US7213254
distribution comprising: “A method of interactive advertisement and promotion
signal transmission using interactive hand-held devices in such
a manner that both the mode of transmission of information
and the display of received information and/or value indicative
thereof will attract viewers' attention, stimulate viewers to pay
attention to a transmission (which may be commercial
advertising), and effectively entice viewers to respond and take
action in response to its reception, as well as achieving the
foregoing usage purposes.” Koplar at 4:55-63.

A2. Provisional US 60/195542

“A method of television interactive advertisement and
promotion signal transmission using interactive hand-held
devices in such a manner that both the mode of transmission of
information and the display of received information and/or
value indicative thereof will attract viewers' attention, stimulate
viewers to watch a transmission (which may be commercial
advertising), and effectively entice viewers to respond and take
action in response to its reception, as well as achieving the
foregoing usage purposes.” Koplar at p. 5, par. 2.

B. US7150028
“While coupon data could be delivered during any
transmission session, it is contemplated that advertisers will
prefer to transmit coupon data during an advertisement of the
product/service to which the coupon relates.” Microsoft at 4:58-
62.

C. US6282713
“The present invention relates to television broadcasting, and,
specifically to providing on-demand electronic advertising
information and coupon information along with broadcasts
of television programs.” Sony at 1:6-9.

“The coupon information is received along with the

broadcast of a television program.” Sony at 3:9-11.

2
1.a. electronically inserting digital A1. US7213254
information encoded as a noticeable “1.) Coupon data is encoded onto a video signal, e.g.
indicator into a broadcast signal television signal.” Koplar at 20:35-36
containing a related content, said
inserting comprising providing a “7. A method for providing a promotional opportunity to a user
coupon and converting said coupon of a hand held device comprising:
into digital information; encoding a video signal with an electronic coupon, the
electronic coupon comprising coupon data, additional text
describing the coupon, and a numeric code to be entered at a
point of sale (POS);” Koplar at claim 7.

“Among the several methods herein described may be noted a

method of video interactive advertising and promotion,
comprising normal television programming content
modulated to contain auxiliary data, where the auxiliary
data is associated with a sponsor and carries information of
special significance relative to the sponsor and of special
value to television viewers, . . . .” Koplar at 6:21-27.

“During an event, such as the “Grammys”, performers appear

on the screen and perform a song. The user is then notified
that a promotional opportunity is available, either through
display device 10 or hand-held device 12. This preferably
occurs as modulated video triggers a graphic rendering unit
in decoder box 82, creating an icon to appear on display
device 10.” Koplar at 15:6-10.

A2. Provisional US 60/195542

“Auxiliary data is encoded by modulation of a video signal,
thereby creating a composite video signal consisting of
auxiliary data and continuos video program data.” Koplar at
p. 6, par. 2.

“Among the several methods herein described may be noted a

method of video interactive advertising and promotion,
comprising normal television programming content
modulated to contain auxiliary data, where the auxiliary
data is associated with a sponsor and carries information of
special significance relative to the sponsor and of special
value to television viewers, . . . .” Koplar at p. 7, par. 2.

“Upon watching an event, such as the Grammys, performers

appear on the screen and performs their song. The users is then
notified that an interactive opportunity is available, either
through their display device or their hand-held device. This may
occurs as the modulated video triggers a graphic rendering

3
(cont.) unit in decoder box, creating an icon to appear on display
1.a. electronically inserting digital device.” Koplar at p. 27, par. 2.
information encoded as a noticeable
indicator into a broadcast signal “After watching a commercial, auxiliary data causes the hand-
containing a related content, said held device's preprogrammed textual information to indicate a
inserting comprising providing a product, discount, or other coupon available until an expiration
coupon and converting said coupon date.” Koplar at p. 19, par. 3.
into digital information;
B. US7150028
“The invention thus provides a method and system for decoding
and storing encoded coupon data delivered via the horizontal
overscan area of a video signal. An electronic coupon
displays a UPC bar code corresponding to coupon data that
can be encoded into a video signal that can be broadcast or
played-back from video tape.” Microsoft at 6:31-36.

“While coupon data could be delivered during any

transmission session, it is contemplated that advertisers will
prefer to transmit coupon data during an advertisement of the
product/service to which the coupon relates.” Microsoft at
4:58-62.

C. US6282713
“The viewer alert comprises a tone and at least one displayed
mark, wherein the displayed marks may be superimposed
over the broadcast of the television program on the screen,
but the embodiment is not so limited. The displayed marks of
one embodiment comprise an indicator for each item for
which coupon data is available, and the indicators may be
representative of the items to which the indicators
correspond, but the embodiment is not so limited.” Sony at
11:7-14.

“If coupon information is selected for display by the viewer,

operation continues at step 812, at which the full coupon
information is displayed on the display along with the
broadcast of the currently selected television program. The
coupon information may be displayed by superimposing the
information over the broadcast of the television program on
the screen, but the embodiment is not so limited. Furthermore,
the coupon information may be displayed on a portion of the
display along with the television program broadcast,
wherein either the coupon information or the television program
is displayed on a picture-in-a-picture inset, but the embodiment
is not so limited.” Sony at 11:20-32.

4
1.b. prompting a user, via said A1. US7213254
noticeable indicator, to capture said “A typical manner in which hand-held device 12 is used to
digital information from said optically receive auxiliary data is as follows: A user watches a
noticeable indicator within said television presentation such as a commercial, television
broadcast signal; program, movie, or other video-displayed program. When
such a presentation is displayed, the user may then hold hand-
held device 12 device as shown in FIGS. 2B or 2C, depending
on the type of device 12 used. The user then positions hand-
held device 12 so that leading edge 18 of device 12 will be
positioned for receiving video signals from display device 10.
Hand-held device 12 or display device 10 may have indicia
informing the viewer to press the pressure membrane or
button 22 at a preferred time, such as when a commercial of
a sponsoring entity appears. Although the term “button” is
used herein, it is considered to include membrane switches,
pressure or touch regions capable of activation and carrying out
the function of button 22. When the user presses button 22,
the video signal will be detected and received by a
photodetector (the process to be described below) within
housing 14. The composite video signal comprises a video
signal modulated with auxiliary data, in accordance with the
teaching of the above-referenced Broughton and/or Ciardullo
each of which are herein incorporated by reference.” Koplar at
10:19-41.

“2.) The user points the multi-use card 12O at the television
screen when the television signal containing the coupon data
is airing. The electronic coupon data is then captured by
card 12O by optically receiving the data that is presented on
the display.” Koplar at 20:39-43.

“During an event, such as the “Grammys”, performers appear

on the screen and perform a song. The user is then notified
that a promotional opportunity is available, either through
display device 10 or hand-held device 12. This preferably
occurs as modulated video triggers a graphic rendering unit
in decoder box 82, creating an icon to appear on display
device 10.” Koplar at 15:6-10.

A2. Provisional US 60/195542

“A typical manner in which the hand-held device is used and
the lights are operated is as follows: A user watches a
television presentation such as a commercial, television
program, movie, or other video-displayed program. When
such a presentation is displayed, the user may then hold the
device as in FIG. 2A. The user positions the hand-held device

5
(cont.) so that the leading edge 18 of the device will be in a position for
1.b. prompting a user, via said receiving video signals from display device 10. The hand-held
noticeable indicator, to capture said device or display device may have indicia informing the
digital information from said viewer to press the pressure membrane or button 22 at a
noticeable indicator within said preferred time, such as when a commercial of a sponsoring
broadcast signal; entity appears. Although the term "button" is used herein, it is
considered to include membrane switches, pressure or touch
regions capable of activation and carrying out the function of a
button. When the user presses button 22, the video signal
will be detected and received by a photodetector (the process
to be described below) within enclosure 14. The composite
video signal comprises a video signal modulated with
auxiliary data, in accordance with the teaching of the above-
referenced Broughton and/or Ciardullo each of which are herein
incorporated by reference.” Koplar at p. 12, par. 5 through p.
13, par. 1.

“Upon watching an event, such as the Grammys, performers

appear on the screen and performs their song. The users is then
notified that an interactive opportunity is available, either
through their display device or their hand-held device. This may
occurs as the modulated video triggers a graphic rendering
unit in decoder box, creating an icon to appear on display
device.” Koplar at p. 27, par. 2.

B. US7150028
“The invention thus provides a method and system for decoding
and storing encoded coupon data delivered via the horizontal
overscan area of a video signal. An electronic coupon
displays a UPC bar code corresponding to coupon data that
can be encoded into a video signal that can be broadcast or
played-back from video tape.” Microsoft at 6:31-36.

“When the user finds a product or service for which the

user wants to receive and store a coupon, the user can
indicate this by pressing the SELECT button 218 to mark the
checkbox next to the product/service menu entry.” Microsoft at
4:36-39.

C. US6282713
“If a coupon mode is selected, operation continues at step 808,
at which the viewer is alerted when coupon information is
available. The viewer alert comprises a tone and at least one
displayed mark, wherein the displayed marks may be
superimposed over the broadcast of the television program
on the screen, but the embodiment is not so limited.” Sony at

6
(cont.) 11:5-10.
1.b. prompting a user, via said
noticeable indicator, to capture said “A first mode, the coupon mode, enables the display of coupon
digital information from said information and corresponding coupon alerts, but the
noticeable indicator within said embodiment is not so limited.” Sony at 12:37-39.
broadcast signal;
“When coupon information is available for a particular
item, a corresponding coupon mark will be displayed on the
screen. The coupon mark may be accompanied by a viewer-
controlled alert tone, but the embodiment is not so limited.
The displayed coupon marks may be superimposed over the
program scene on any portion of the display screen, but the
embodiment is not so limited.” Sony at 12:67 through 13:1-6.

“In a system in which a coupon mark is displayed for each item

for which available, the coupon marks 1006-1007 indicate
coupon information is available for the clothing and the
bicycle.” Sony at 14:7-10.

“Following display of the coupon information 1010, the

viewer is provided with two selections 1012, but the
embodiment is not so limited. For a first selection, the viewer
may dismiss the coupon information, wherein the coupon
information is removed from the program broadcast. For a
second selection, the viewer may store the coupon
information, wherein the coupon information is stored on a
removable recording medium.” Sony at 14:20-28.
1.c. transforming said captured A1. US7213254
digital information from said “7. A method for providing a promotional opportunity to a user
noticeable indicator into a format of a hand held device comprising:
recognizable to a mobile ...
communication device, thereby to receiving the encoded video signal on a hand-held device,
produce transformed information; decoding the encoded video signal on the hand-held device
and to recover the electronic coupon;” Koplar at claim 7.

A2. Provisional US 60/195542

“The hand-held devices, which optionally contain optical
detection and decoding means, respond to composite video
signals, from a video display, comprising auxiliary data and
continuous video program data.” Koplar at p. 4, par. 1.

“Among the several methods herein described may be noted a

method of video interactive advertising and promotion,
comprising normal television programming content modulated
to contain auxiliary data, where the auxiliary data is associated

7
(cont.) with a sponsor and carries information of special significance
1.c. transforming said captured relative to the sponsor and of special value to television
digital information from said viewers, distributing interactive devices of hand-held
noticeable indicator into a format character, auxiliary computer devices, or software to television
recognizable to a mobile viewers for their use and convenience, the devices and auxiliary
communication device, thereby to computer devices being capable of selectively receiving
produce transformed information; auxiliary data or receiving and decoding composite video
and signals, providing incentives for viewers to use the interactive
devices for obtaining the auxiliary data by rewarding the
viewers with information of special value, the interactive
devices being capable of retaining indication of having received
the information, and providing redemption of the special value
for users at a redemption site where users may present the
interactive devices.” Koplar at p. 7, par. 2.

B. US7150028
“A decoder extracts the coupon data from an encoded video
signal and transmits the coupon data to the electronic
coupon via a receiver of electronic contacts.” Microsoft at
1:67 through 2:1-2.

C. US6282713
“If the coupon information is selected for storage, operation
continues at step 816, at which the coupon information is
stored on the removable recording medium.” Sony at 11:38-
41.

“For a second selection, the viewer may store the coupon

information, wherein the coupon information is stored on a
removable recording medium.” Sony at 14:25-28.
1.d. storing said transformed A1. US7213254
information on said mobile “3.) After capturing the electronic coupon data, the user can
communication device for display then view coupon information such as requirements, valid
of the digital information dates, valid POS locations, etc. on LCD 44 of card 12O.”
Koplar at 20:47-50.

“Hand-held device 12 has power button 38 which when

depressed will initiate operation of LCD 44 to display a
coupon, a prize notification, or other information indicating
receipt by device 12 of auxiliary data.” Koplar at 12:47-50.

“The microprocessor, clocked by crystal X1 at 8 MHz,

decodes the data provided by the composite video signal,
stores it in internal RAM or DRAM and drives an LCD 44
illustrated as circuit component LCD1 which may be, as shown,

8
(cont.) a 16-character by 2-line display. It may instead be a 12-
1.d. storing said transformed character by 3-line display, for example, or other format
information on said mobile appropriate for the display message to be presented at the
communication device for display surface of the device.” Koplar at 18:2-9.
of the digital information
A2. Provisional US 60/195542
“After receiving the data, users may view the opportunity
directly on the LCD of the hand-held device, or alternatively
be provided with a special Internet link to the opportunity.”
Koplar at p. 15, par. 4.

“Hand-held device version 12B has an on-button 38 which

when depressed will initiate operation of an LCD display 44 to
display a coupon, a prize notification, or other information
indicating receipt by the device of auxiliary data.” Koplar at
p. 18, par. 1.

“The microprocessor, clocked by crystal XI at 8MHz, decodes

the data provided by the composite video signal, stores it in
internal RAM or DRAM and drives an LCD display
illustrated as circuit component LCD 1 which may be, as
shown, a 16-character by 2-line display. It may instead be a 12-
character by 3-line display, for example, or other format
appropriate for the display message to be presented at the
surface of the device.” Koplar at p. 31, par. 3.

“Items displayed on the LCD are coupons which provide

offers, coupon values, validation for discounts or other user
benefits, such as prize merchandise identification or location for
redemption.” Koplar at p. 19, par. 5.

“Among the several methods herein described may be noted a

method of video interactive advertising and promotion,
comprising normal television programming content modulated
to contain auxiliary data, where the auxiliary data is associated
with a sponsor and carries information of special significance
relative to the sponsor and of special value to television
viewers, distributing interactive devices of hand-held
character, auxiliary computer devices, or software to television
viewers for their use and convenience, the devices and auxiliary
computer devices being capable of selectively receiving
auxiliary data or receiving and decoding composite video
signals, providing incentives for viewers to use the interactive
devices for obtaining the auxiliary data by rewarding the
viewers with information of special value, the interactive
devices being capable of retaining indication of having

9
(cont.) received the information, and providing redemption of the
1.d. storing said transformed special value for users at a redemption site where users may
information on said mobile present the interactive devices.” Koplar at p. 7, par. 2.
communication device for display
of the digital information “After watching a commercial, auxiliary data causes the hand-
held device's preprogrammed textual information to indicate a
product, discount, or other coupon available until an expiration
date. The hand-held device, upon receipt of auxiliary data,
retrieves the information and makes the offer available to the
user. Alternatively, the information may be received by the
hand-held device during use and then decoded and
displayed on the LCD display as well as being added to the
linked list.” Koplar at p. 19, par. 3.

B. US7150028
“The present invention may be deployed in a wireless or hard-
wired communication environment that includes an electronic
coupon and a decoder that extracts coupon data from a video
signal and provides the coupon data to the electronic
coupon. The electronic coupon may include a controller and
a Liquid Crystal Display (LCD) display. The controller
receives coupon data from the decoder and produces an
output to the LCD display, in accordance with the coupon
data received from the decoder and in accordance with the
coupon pre-selection choices made by the consumer. The
controller also can store the received coupon data in a non-
volatile memory that is also part of the electronic coupon.”
Microsoft at 2:62-67 through 3:1-7.

C. US6282713
“The stored coupon information may be recalled and viewed
at a time that is different from a display time of a scene in
which the corresponding advertised item appears.” Sony at
12:49-52.

10
1.e. the method additionally A1. US7213254
comprising redeeming said coupon “4.) When the user desires to redeem the electronic coupon,
by: card 12O is transported to a POS and the user buys the
desired item or otherwise follows the requirements of the
storing said transformed coupon offer. 5.) At the check out, the cashier takes card 12O
information in a form that is and locates the correct coupon using the scrolling function
suitable for display on a display (usually a button) of the card 12O, in concert with viewing the
screen of a said mobile data on LCD 44. 6.) The cashier then presses the required
communication device in a manner “redeem” button on the card. The cashier then has
that can be read by an optical approximately one minute to complete steps 7 and 8 below.
reader; and Requiring this button to be pressed reduces the likelihood that a
coupon will be accidentally redeemed through bright ambient
light. 7.) When the correct coupon is located, the card is held
with LCD 44 facing the cashier and the back of the card
facing the bar code scanner located near the cashier. The bar
code scanner is the same scanner that is used for purchases and
conventional paper coupon redemption.” Koplar at 20:54-67
through 21:1-6.

“Hand-held device 12 has power button 38 which when

depressed will initiate operation of LCD 44 to display a
coupon, a prize notification, or other information indicating
receipt by device 12 of auxiliary data.” Koplar at 12:47-50.

“The microprocessor, clocked by crystal X1 at 8 MHz,

decodes the data provided by the composite video signal,
stores it in internal RAM or DRAM and drives an LCD 44
illustrated as circuit component LCD1 which may be, as shown,
a 16-character by 2-line display. It may instead be a 12-
character by 3-line display, for example, or other format
appropriate for the display message to be presented at the
surface of the device.” Koplar at 18:2-9.

“8. The method of claim 7 further comprising presenting the

user with coupon information on the hand-held device from
having decoded the coupon data.” Koplar at claim 8.

“10. The method of claim 7 further comprising identifying the

electronic coupon to be redeemed at the POS.” Koplar at
claim 10.

A2. Provisional US 60/195542

“The hand-held devices not only induce the viewer to watch a
commercial, but also induce viewers to visit a sponsor's place
of business, point of sale, or Internet website at which they
may receive the value indicated by the hand-held device

11
(cont.) indicated by the lights or a code displayed by the LCD of the
1.e. the method additionally hand-held device.” Koplar at p. 15, par. 3.
comprising redeeming said coupon
by: “Hand-held device version 12B has an on-button 38 which
when depressed will initiate operation of an LCD display 44 to
storing said transformed display a coupon, a prize notification, or other information
information in a form that is indicating receipt by the device of auxiliary data.” Koplar at
suitable for display on a display p. 18, par. 1.
screen of a said mobile
communication device in a manner “The microprocessor, clocked by crystal XI at 8MHz, decodes
that can be read by an optical the data provided by the composite video signal, stores it in
reader; and internal RAM or DRAM and drives an LCD display
illustrated as circuit component LCD 1 which may be, as
shown, a 16-character by 2-line display. It may instead be a 12-
character by 3-line display, for example, or other format
appropriate for the display message to be presented at the
surface of the device.” Koplar at p. 31, par. 3.

B. US7150028
“1. A system for selectively storing and selectively displaying
coupons defined by coupon data extracted from a horizontal
overscan portion of a video signal, the system comprising:
...
an electronic coupon configured to selectively store and to
selectively display coupons defined by the extracted coupon
data, the electronic coupon comprising:” Microsoft at claim 1.

“3. The system of claim 1, wherein the electronic coupon

further comprises a Liquid Crystal Display (LCD) for
displaying a selected coupon.” Microsoft at claim 3.

“4. The system of claim 3, wherein the selected coupon is

displayed as a Universal Product Code bar code.” Microsoft
at claim 4.

“5. The system of claim 4, wherein the Universal Product

Code can be read by a bar code scanner.” Microsoft at claim
5.

C. US6282713
“The coupon information on the removable recording
medium may be redeemed by the viewer either using an
electronic link or by presenting the removable recording
medium to a retailer or dealer for reading, but the
embodiment is not so limited.” Sony at 14:66 through 15:3.

12
1.f. activating said mobile A1. US7213254
communication device to display “4.) When the user desires to redeem the electronic coupon,
said information on said display card 12O is transported to a POS and the user buys the
screen, for said information to be desired item or otherwise follows the requirements of the
readable by an optical reader at a coupon offer. 5.) At the check out, the cashier takes card 12O
point of sale. and locates the correct coupon using the scrolling function
(usually a button) of the card 12O, in concert with viewing the
data on LCD 44. 6.) The cashier then presses the required
“redeem” button on the card. The cashier then has
approximately one minute to complete steps 7 and 8 below.
Requiring this button to be pressed reduces the likelihood that a
coupon will be accidentally redeemed through bright ambient
light. 7.) When the correct coupon is located, the card is held
with LCD 44 facing the cashier and the back of the card
facing the bar code scanner located near the cashier. The bar
code scanner is the same scanner that is used for purchases and
conventional paper coupon redemption.” Koplar at 20:54-67
through 21:1-6.

“7. A method for providing a promotional opportunity to a user

of a hand held device comprising:
...
pressing a redeem button on the hand-held device and
orienting a laser detection hardware to a bar code reader of
the POS system within an allotted time;” Koplar at claim 7.

“8. The method of claim 7 further comprising presenting the

user with coupon information on the hand-held device from
having decoded the coupon data.” Koplar at claim 8.

“10. The method of claim 7 further comprising identifying the

electronic coupon to be redeemed at the POS.” Koplar at
claim 10.

A2. Provisional US 60/195542

“The hand-held devices not only induce the viewer to watch a
commercial, but also induce viewers to visit a sponsor's place
of business, point of sale, or Internet website at which they
may receive the value indicated by the hand-held device
indicated by the lights or a code displayed by the LCD of the
hand-held device.” Koplar at p. 15, par. 3.

B. US7150028
“When the user finds a coupon that the user wishes to
redeem, the user can press the SELECT key 218 and the
electronic coupon will display on the LCD display 210, the

13
(cont.) UPC bar code for the selected coupon. Thus, the coupon can
1.f. activating said mobile be read by a bar code scanner at, for example, a
communication device to display supermarket cash register.” Microsoft at 4:67 through 5:1-5.
said information on said display
screen, for said information to be C. US6282713
readable by an optical reader at a “The coupon information on the removable recording
point of sale. medium may be redeemed by the viewer either using an
electronic link or by presenting the removable recording
medium to a retailer or dealer for reading, but the
embodiment is not so limited.” Sony at 14:66 through 15:3.

14