UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2016-00753
`Patent No.: 7,752,649
`For: Signal Processing Apparatus and Methods
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`PATENT OWNER PERSONALIZED
`MEDIA COMMUNICATIONS’ PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-00753
`Patent No. 7,752,649
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`THE ’649 PATENT ......................................................................................... 2
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 6
`IV. CLAIM CONSTRUCTION ............................................................................ 7
`A.
`Television .............................................................................................. 8
`B.
`Video ..................................................................................................... 9
`C.
`Digital Television Signals ................................................................... 10
`D. Digital Video Signals .......................................................................... 12
`E.
`Cadence Information ........................................................................... 14
`F.
`Processor / Control Processor ............................................................. 15
`G.
`Stored Function Invoking Data ........................................................... 19
`THE PETITION AND APPLICABLE LEGAL STANDARDS .................. 20
`A.
`The Petition ......................................................................................... 20
`B.
`Obviousness ......................................................................................... 21
`VI. CAMPBELL IN VIEW OF THE PURPORTED KNOWLEDGE OF
`A POSITA DOES NOT DISCLOSE OR SUGGEST EACH AND
`EVERY ELEMENT OF THE CHALLENGED CLAIMS ........................... 23
`A.
`Campbell ............................................................................................. 23
`B.
`Claim 62 Is Patentable Over Campbell Because Campbell Does
`Not Process “Digital Video Signals Simultaneously At Two Or
`More Of Said Plurality Of Processors” ............................................... 26
`Each Challenged Claim Is Patentable Over Campbell Because
`Campbell Does Not Process “Digital Television Signals” Or
`“Digital Video Signals” Simultaneously At Two Or More
`Processors ............................................................................................ 28
`Claims 39, 62, And 67 Are Each Patentable Over Campbell
`Because Campbell Does Not Disclose Or Suggest Receiving
`“Digital Television Signals” Or “Digital Video Signals” ................... 30
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`C.
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`D.
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`V.
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`IPR2016-00753
`Patent No. 7,752,649
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`E.
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`F.
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`G.
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`Each Challenged Claim Is Patentable Over Campbell Because
`Campbell Does Not Disclose Or Suggest Providing “Digital
`Television Signals” Or “Digital Video Signals” To One Or
`More Processors .................................................................................. 32
`Each Challenged Claim Is Patentable Over Campbell Because
`Campbell Does Not Disclose Or Suggest Processing Signals At
`A “Plurality Of Processors” ................................................................ 33
`Claims 39, 54, And 62 Are Each Patentable Over Campbell
`Because Campbell Does Not Disclose Or Suggest Using
`“Stored Function Invoking Data” In A Comparison ........................... 34
`Claim 54 Is Patentable Over Campbell Because Campbell Does
`Not Disclose Or Suggest “Receiving An Information
`Transmission” Or “Receiving A Control Signal” ............................... 36
`VII. CAMPBELL IN VIEW OF WIDERGREN DOES NOT RENDER
`THE CHALLENGED CLAIMS OBVIOUS................................................. 38
`A. Widergren ............................................................................................ 38
`B. Widergren Does Not Cure Campbell’s Deficiencies .......................... 39
`C.
`A POSITA Would Be Led Away From Combining Widergren
`With Campbell .................................................................................... 41
`D. No Motivation Exists To Combine Widergren With Campbell ......... 42
`VIII. MUSTAFA IN VIEW OF THE PURPORTED KNOWLEDGE OF A
`POSITA DOES NOT DISCLOSE OR SUGGEST EACH AND
`EVERY ELEMENT OF THE CHALLENGED CLAIMS ........................... 42
`A. Mustafa ................................................................................................ 42
`B.
`Claim 62 Is Patentable Over Mustafa Because Mustafa Does
`Not Process “Digital Video Signals Simultaneously At Two Or
`More Of Said Plurality Of Processors” ............................................... 45
`Each Challenged Claim Is Patentable Over Mustafa Because
`Mustafa Does Not Disclose Or Suggest Displaying Television
`Programming Or Displaying Video .................................................... 47
`Claims 39, 62, And 67 Are Each Patentable Over Mustafa
`Because Mustafa Does Not Disclose Or Suggest Receiving
`“Digital Television Signals” Or “Digital Video Signals” ................... 48
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`H.
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`C.
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`D.
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`ii
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`IPR2016-00753
`Patent No. 7,752,649
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`E.
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`F.
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`G.
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`Each Challenged Claim Is Patentable Over Mustafa Because
`Mustafa Does Not Disclose Or Suggest Processing Signals At
`A “Plurality Of Processors” ................................................................ 50
`Claims 39, 62, And 67 Are Each Patentable Over Mustafa
`Because Mustafa Does Not Disclose Or Suggest The
`Respective Claim Limitations That Involve The Use Of A
`Control Processor ................................................................................ 52
`Claims 39, 54, And 62 Are Each Patentable Over Mustafa
`Because Mustafa Does Not Disclose Or Suggest Using “Stored
`Function Invoking Data” In A Comparison ........................................ 54
`Claim 54 Is Patentable Over Mustafa Because Mustafa Does
`Not Disclose Or Suggest “Receiving An Information
`Transmission” Or “Receiving A Control Signal” ............................... 56
`IX. MUSTAFA IN VIEW OF IIJIMA DOES NOT RENDER THE
`CHALLENGED CLAIMS OBVIOUS ......................................................... 58
`A.
`Iijima .................................................................................................... 58
`B.
`Iijima Does Not Cure Mustafa’s Deficiencies .................................... 59
`C.
`Combining Iijima With Mustafa Renders Mustafa Inoperable
`For Its Intended Purpose ..................................................................... 61
`D. No Motivation Exists To Combine Iijima With Mustafa ................... 63
`CONCLUSION .............................................................................................. 64
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`H.
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`X.
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`iii
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`IPR2016-00753
`Patent No. 7,752,649
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`TABLE OF AUTHORITIES
`
`Cases
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 7
`
`Cat Tec LLC v. Tubemaster, Inc.,
`528 F.3d 871 (Fed. Cir. 2008) .............................................................................. 7
`
`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb 06, 2009) ............................... 21
`
`Graham v. John Deere Co.,
`383 U.S. 1, 15-17 (1966) .................................................................................... 21
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 62
`
`In re Grasselli,
`713 F.2d 731 (Fed. Cir. 1983) ............................................................................ 41
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`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) ............................................................................ 21
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ..................................................................... 36, 55
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................... 21, 22
`
`Microsoft, Corp. v. Proxyconn, Inc.,
`789 F.3d. 1292 (Fed. Cir. 2015) ........................................................................... 7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 17
`
`St. Jude Med., Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) .......................................................................... 22
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 23
`
`iv
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`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .............................................................................. 7
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`IPR2016-00753
`Patent No. 7,752,649
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`Unique Concepts, Inc. v. Brown,
`939 F.3d 1558 (Fed. Cir. 1991) ............................................................................ 8
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 22
`
`White v. Dunbar,
`119 U.S. 47 (1886) ................................................................................................ 8
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`Statutes
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`35 U.S.C. § 103 ................................................................................................. 20, 21
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`35 U.S.C. § 314 ............................................................................................. 2, 20, 21
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`37 C.F.R. § 42 ................................................................................................. 2, 7, 20
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`47 C.F.R. § 73 .......................................................................................................... 31
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`Other Authorities
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`M.P.E.P. § 2141 ....................................................................................................... 22
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`M.P.E.P. § 2143 ....................................................................................................... 22
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (August 14, 2012) ................................................................ 7
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`IPR2016-00753
`Patent No. 7,752,649
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`
`Exhibit
`No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`EXHIBIT LIST
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`Description
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`Declaration of Samuel H. Russ, Ph.D. in Support of
`Patent Owner Personalized Media Communications’
`Preliminary Response to Petition for Inter Partes
`Review
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`Curriculum Vitae of Dr. Samuel H. Russ
`
`D.A. Howell, Digital Television, A Primer on Digital
`Television, Journal of the SMPTE, Vol. 84, July 1975,
`pp. 538-541.
`
`Final Written Decision of the Patent Trial and Appeal
`Board in Case No. IPR2014-01532
`
`H. Kaneko et al., Digital Television Transmission Using
`Bandwidth Compression Techniques, IEEE
`Communications Magazine, Vol. 18, No. 4, July 1980,
`pp. 14-22.
`
`E. Mechler, Information Rates in Remoted Radar
`Systems, IRE Transactions on Communications
`Systems, Vol. CS-4, No. 2, May 1956, pp. 120-128.
`U.S. Patent No. 3,795,763
`
`J. Free, High-resolution TV–here come wide-screen
`crystal-clear pictures, Popular Science, November
`1981, pp. 108-110.
`J.H. Stott, Design Technique for Multiplexing
`Asynchronous Digital Video and Audio Signals, IEEE
`Transactions on Communications, Vol. COM-26, No. 5,
`May 1978, pp. 601-610.
`
`Exhibit List
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`IPR2016-00753
`Patent No. 7,752,649
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`
`EXHIBIT LIST
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`Description
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`Exhibit
`No.
`
`2010
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`2011
`
`T. Koga et al., Statistical Performance Analysis of an
`Interframe Encoder for Broadcast Television Signals,
`IEEE Transactions on Communications, Vol. COM-29,
`No. 12, December 1981, pp. 1868-1876.
`F.A. Kamangar et al., Interfield Hybrid Coding of
`Component Color Television Signals, IEEE
`Transactions on Communications, Vol. COM-29, No.
`12, December 1981, pp. 1740-1753.
`A.N. Netravali et al., Motion-Compensated Television
`Coding: Part I, The Bell System Technical Journal, Vol.
`58, No. 3, March 1979, pp. 631-670.
`A.N. Netravali et al., Motion-Compensated Transform
`Coding, The Bell System Technical Journal, Vol. 58,
`No. 7, September 1979, pp. 1703-1718.
`2014 Webster’s Ninth New Collegiate Dictionary, 1988, p.
`1213.
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`2012
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`2013
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`Exhibit List
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`I.
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`INTRODUCTION
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`IPR2016-00753
`Patent No. 7,752,649
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`Patent owner Personalized Media Communications LLC (“PMC”) submits
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`this preliminary response to the petition for inter partes review of claims 39, 54,
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`62, and 67 (the “Challenged Claims”) of U.S. Pat. 7,752,649 (the “’649 Patent”),
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`filed by Apple Inc. (“Petitioner”) on March 14, 2016 (Paper No. 1, or “Petition”).
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`As set forth below, Petitioner has failed to establish a reasonable likelihood that it
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`will prevail on at least one Challenged Claim.
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`Each Challenged Claim recites multiple limitations that are neither disclosed
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`nor suggested by the cited references. As one particularly striking example that
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`illustrates the depth of the shortcomings in the cited references and allegations
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`raised by the Petition, one of the two processors identified by Petitioner in each
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`cited reference or proposed combination of references as disclosing claim 62’s
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`requirement of “processing said digital video signals simultaneously at two or more
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`of said plurality of processors” in fact only processes a pure audio signal.1
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`Petitioner tries to obscure this fact by burying the discussion of this claim 62
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`limitation deep in its Petition and by glossing over the requirements of its language
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`1 This holds true even under the assumption that Petitioner’s proposed
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`constructions of “digital video signals” and “processor” are correct (which they are
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`not).
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`1
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`in asserting that the claim 62 limitation is disclosed or suggested by the cited
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`IPR2016-00753
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`reference(s) in the same way that a dissimilar limitation of claim 39 (which
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`requires the processing of “digital television signals” as opposed to “digital video
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`signals”) is disclosed or suggested. See Petition at 27 and 50.
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`The Patent Trial and Appeal Board (“PTAB”) should, therefore, decline to
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`institute inter partes review. Petitioner has failed to establish a reasonable
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`likelihood that it will prevail on at least one Challenged Claim as required by 35
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`U.S.C. §314(a) and 37 C.F.R. §42.108.
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`II. THE ’649 PATENT
`The ’649 Patent describes and claims methods of processing signals in a
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`receiver. See, e.g., Ex. 1002 at claims 39, 54, 62, and 67. In claim 39, for
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`example, signals are processed in a television receiver that has multiple processors.
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`An information transmission that includes digital television signals and a message
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`stream is received at the television receiver. The message stream is detected and at
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`least a portion of the message stream is input to a control processor. Control
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`information in the inputted message stream portion is selected and communicated
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`to at least one register memory. Stored function invoking data is compared to the
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`contents of the register memory. The digital television signals are input to the
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`multiple processors on the basis of one or more matches. The digital television
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`signals are processed simultaneously at two or more of the multiple processors, and
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`television programming included in the digital television signals is displayed.
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`Several examples in the specification address the limitations of claim 39.
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`One such example is Example #7, where one embodiment of the operation of the
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`signal processing system depicted in FIG. 4 is described. Id. at 149:36-161:61.
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`FIG. 4 depicts a subscriber station that “has capacity for receiving wireless
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`television programming transmissions.” Id. at 148:25-26. In FIG. 4, at least the
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`signal processor 200, microcomputer 205, and decryptors 107, 224, 231 are
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`processors, because they all operate according to instructions and are
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`reprogrammable. See, e.g., id. at 10:65-11:8, 15:16-48, and 148:51-56. See also
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`Russ Dec., ¶41 (Ex. 2001).2 As such, FIG. 4 depicts a television receiver that has
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`multiple processors.
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`“In example #7, the program originating studio…transmits a television
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`signal that consists of so-called ‘digital video’ and ‘digital audio,’ well known in
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`the art.” Ex. 1002 at 149:47-50. “The present invention employs signals
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`embedded in programming…the embedded signals contain digital information that
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`may include addresses of specific receiver apparatus controlled by the signals and
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`instructions that identify particular functions the signals cause addressed apparatus
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`2 Hereinafter referred to as “Russ. Dec.,” without reference to “Ex. 2001.”
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`3
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`IPR2016-00753
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`to perform.” Id. at 7:51-63. “FIG. 2I shows one instance of a SPAM [‘Signal
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`Processing Apparatus and Methods’] message stream.” Id. at 9:61. A person of
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`ordinary skill in the art (“POSITA”) would have understood these exemplary
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`passages to support the step in claim 39 of receiving an information transmission
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`including digital television signals and a message stream. Russ Dec., ¶42.
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`In one embodiment, the signal processor 200 detects the SPAM message
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`stream, see, e.g., Ex. 1002 at 150:62-151:18, and a SPAM message is input to
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`control processor 39J of controller 39, see, e.g., id. at 81:15-36 and 151:19-26.
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`Controller 39 determines that the SPAM message contains an execution segment
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`(i.e., control information) based on the message’s header, and selects and
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`communicates the execution segment to a SPAM-exec register memory. See, e.g.,
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`id. at 49:21-38 and 151:27-31.
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`As the specification states, “controller, 20, selects the information of the
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`execution segment in said message, determines that said selected information
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`matches the aforementioned instance of enable-next-program-on-CC13
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`information at said particular controlled-function-invoking-@20 information
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`location, executes particular preprogrammed load-and-run-@20 instructions that
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`are associated with the instance of information at said particular location, loads the
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`information of the information segment of said message – which information is
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`said enable-CC13 instructions – at said RAM, and executes the information so
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`4
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`loaded.” Id. at 151:32-42. In other words, controller 20 compares “the
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`information of the execution segment in said message” with function invoking data
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`stored at a memory location for a match. If a match occurs, “enable-CC13” is
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`loaded and executed. A POSITA would have understood this exemplary passage
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`to support the step in claim 39 of comparing stored function invoking data to the
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`contents of said at least one register memory. Russ Dec., ¶44.
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`As a result of a match, instructions are executed to determine that no
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`unauthorized tampering has occurred. Then, with reference to FIG. 4, encrypted
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`digital audio is decrypted by decryptor 107 and output through matrix switch 258,
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`and encrypted digital video is decrypted by decryptor 224 and output through
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`matrix switch 258 to signal processor 200. The decryptors 107, 224, signal
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`processor 200, and microcomputer 205 are a plurality of processors to which
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`digital television signals are input and at which the digital television signals are
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`simultaneously processed. Ex. 1002 at 151:50-54, 153:3-24, 155:7-19, and
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`160:30-54. See also Russ Dec., ¶45.
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`Finally, “matrix switch, 258,…transfer[s] the decrypted audio information
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`inputted from decryptor, 107, to monitor, 202M, thereby causing monitor, 202M,
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`to commence receiving said audio information and emitting sound,” Ex. 1002 at
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`160:34-37, and “microcomputer, 205,…transfer[s] the decrypted information of the
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`transmitted video image to monitor, 202M, thereby causing monitor, 202M, to
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`commence displaying, at its television picture tube, the information of the
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`IPR2016-00753
`Patent No. 7,752,649
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`transmitted television image,” id. at 160:50-54. As such, the television
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`programming included in the digital television signals is displayed. Russ Dec.,
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`¶46.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner’s expert Dr. Neuhauser contends the POSITA for the ’649 Patent
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`would be an individual having an undergraduate degree in electrical engineering,
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`or a related field, and about three to five years of practical experience in the fields
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`of digital communications, electronics, and computer based systems.
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`Alternatively, Dr. Neuhauser contends the POSITA would have a Master’s degree
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`in electrical engineering with specialization in digital systems and somewhat less
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`practical experience. Neuhauser Dec., ¶69 (Ex. 1001).
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`The claimed inventions are directed towards methods of processing signals
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`using components such as receiver stations, processors, register memories, and
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`transmitter stations that interoperate in particular manners. Ex. 1002 at claims 39,
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`54, 62, and 67. PMC thus contends, fairly consistently with Dr. Neuhauser, that
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`the POSITA for the ’649 Patent would be a person having at least a bachelor’s
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`degree (or equivalent) in digital electronics, electrical engineering, or computer
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`engineering and two to five years of post-degree experience in system engineering
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`(or equivalent). Russ Dec., ¶37.
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`6
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`IV. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`IPR2016-00753
`Patent No. 7,752,649
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`according to their broadest reasonable construction in light of the specification of
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`the patent in which they appear. 37 C.F.R. §42.100(b); see Office Patent Trial
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`Practice Guide, 77 Fed.Reg. 48,756, 48,766 (August 14, 2012).
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`The broadest reasonable construction standard “does not give the PTO an
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`unfettered license to interpret claims to embrace anything remotely related to the
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`claimed invention;” rather, “claims should always be read in light of the
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`specification and teachings in the underlying patent.” Microsoft Corp. v.
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`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.Cir.2015). In the final analysis, a
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`construction that is “unreasonably broad” and which does not “reasonably reflect
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`the plain language and disclosure” simply “will not pass muster.” Id.
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`Thus, in construing a term, the PTAB should consider: (1) ordinary and
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`customary meaning; (2) language of the claims; and (3) the specification. Tempo
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`Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed.Cir.2014). Each claim
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`limitation must have meaning and cannot be interpreted to be devoid of any
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`meaning. Cat Tec LLC v. Tubemaster, Inc., 528 F.3d 871, 885 (Fed.Cir.2008)
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`(quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006) (“claims
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`are interpreted with an eye toward giving effect to all terms in the claim.”). “When
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`the language of a claim is clear…and a different interpretation would render
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`meaningless express limitations,” speculative interpretation of a claim limitation is
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`improper. Unique Concepts, Inc. v. Brown, 939 F.3d 1558, 1563 (Fed.Cir.1991)
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`(citing White v. Dunbar, 119 U.S. 47, 52 (1886)).
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`A. Television
`While Petitioner did not propose a construction, PMC submits the broadest
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`reasonable construction of “television” is “telecommunication that includes both
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`audio and video.” Thus, a “television signal” would include both audio and video
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`signals, and “television programming” would be programming that includes both
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`audio and video. Russ Dec., ¶50.
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`PMC’s construction is consistent with the specification: “the station
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`receives a conventional television broadcast transmission at television tuner,
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`215…This tuner outputs conventional audio and composite video transmissions,”
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`Ex. 1002 at 10:44-50 (emphasis added), and “TV monitor, 202M, has capacity for
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`receiving composite video and audio transmissions and for presenting a
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`conventional television video image and audio sound,” id. at 11:20-23 (emphasis
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`added). See also id. at 210:19-21 (“the television tuner, 215, of said set, 202,
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`thereby display[s] the video and audio information of the transmission of said
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`channel”)(emphasis added), id. at 242:40-42 (“to display the television
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`information of said transmission (that is, information of said audio and video) at
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`monitor, 202M”)(emphasis added), id. at 149:47-50 (“the program originating
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`IPR2016-00753
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`studio…transmits a television signal that consists of so-called ‘digital video’ and
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`‘digital audio,’ well known in the art”)(emphasis added), and Russ Dec., ¶¶51-52.
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`B. Video
`PMC submits the broadest reasonable construction of “video” is “a visual
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`presentation that is capable of showing movement.” Petitioner did not propose a
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`construction.
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`PMC’s construction is consistent with the specification: “[o]ccasionally one
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`viewer may see, hear, or read information of specific relevance to him (as happens
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`when a guest on a television talk show turns to the camera and says, ‘Hi, Mom’),”
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`Ex. 1002 at 1:40-44 (emphasis added), and “TV monitor, 202M, displays the
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`conventional television image and the sound of the transmitted ‘Wall Street Week’
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`program. During this time the program may show the so-called ‘talking head’ of
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`the host as he describes the behavior of the stock market,” id. at 13:63-14:1
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`(emphasis added). See also id. at 259:27-38 (“said program originating studio
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`commences transmitting the video image of the so called ‘talking head’ of said
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`person…saying: ‘Super Discount Supermarkets is proud to sponsor…”)(emphasis
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`added), and Russ Dec., ¶¶54-55. In other words, whenever the specification refers
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`to an image as being “video,” it is always referring to video that is capable of
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`showing movement.
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`The specification never describes a still image incapable of showing
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`movement as being “video.” For example, the specification states that “[u]nder
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`control of said program instruction set and accessing the subscriber’s contained
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`portfolio data file for information in a fashion well known in the art,
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`microcomputer, 205, calculates the performance of the subscriber’s stock portfolio
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`and constructs a graphic image of that performance at the installed graphics card.”
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`Ex. 1002 at 13:29-34 (emphasis added). As shown in FIGS. 1A-1C of the ’649
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`Patent, the image is a still image, i.e., not capable of showing movement. See also
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`id. at 14:16-19 (“TV monitor, 202M, then displays the image shown in FIG. 1C
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`which is the microcomputer generated graphic of the subscriber’s own portfolio
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`performance overlaid on the studio generated graphic”)(emphasis added).
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`C. Digital Television Signals
`PMC submits the broadest reasonable construction of “digital television
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`signals” is “television programming that necessarily includes both digital audio
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`and digital video signals.” The specification makes plain that PMC’s construction
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`is the correct one: “the program originating studio…transmits a television signal
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`that consists of so-called ‘digital video’ and ‘digital audio,’ well known in the
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`art,” id. at 149:47-50 (emphasis added), and “said program…ceases transmitting a
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`television signal of digital video and digital audio,” id. at 155:38-40 (emphasis
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`added). See also id. at 156:24-31 (contrasting “conventional analog television” to
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`“digital video and audio”) and Russ Dec., ¶58. A POSITA would not understand
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`the term “digital television signals” to mean “television signals entirely or partially
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`encoded in a digital format,” as Petitioner contends. Petition at 2-3. Such a
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`construction is unreasonably broad and would encompass analog television signals
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`that simply include some digital information, and is inconsistent with the
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`specification and the understanding of a POSITA reviewing the specification.
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`Russ Dec., ¶57.
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`Moreover, it has been understood for many decades that analog television
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`with embedded digital data is not within the ambit of “digital television.” Indeed,
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`the “Digital Television Transition” mandated by the Federal Communications
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`Commission (“FCC”) in 1996 was a widely-reported switch from “analog
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`television transmissions” to “digital television transmissions” that were all digital.
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`See https://www.fcc.gov/general/digital-television. The former were called
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`“analog television transmissions” by the FCC even though they typically included
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`some embedded digital data for close captioning. See also Russ Dec., ¶57.
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`Finally, Petitioner is incorrect in stating that the term “digital television
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`signal” did not have a well-known meaning in the art by September 11, 1987 – i.e.,
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`the priority date of the Challenged Claims. To the contrary, the term “digital
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`television signal” was known to a POSITA as early as July, 1975, as it was
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`extensively described at that time in an article appearing in the Journal of the
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`SMPTE (Society of Motion Picture and Television Engineers). Ex. 2003.3 See
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`also Russ Dec., ¶¶59-62.
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`D. Digital Video Signals
`The specification is clear that the broadest reasonable construction of
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`“digital video signals” is “video signals encoded as discrete numerical values
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`instead of an analog representation.” Ex. 1002 at 236:21-26.
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`In contrast, Petitioner proposes an entirely different construction, asserting
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`that “digital video signals” are “video signals entirely or partially encoded in a
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`digital format.” Petition at 4-5. This flatly contradicts the language of, for
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`example, claims 54 and 62, which recite “digital video signals” – not “digital and
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`analog video signals.” Petitioner’s proposed construction also unreasonably
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`broadens the claim term to encompass analog signals that simply include some
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`digital information. Petitioner does so in an attempt to manufacture an invalidity
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`case. Petitioner does not, however, provide any ordinary and customary meaning
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`to support its construction. Nor is Petitioner’s construction supported by the
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`language of claims 54 and 62, which only recite “digital video signals” and make
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`no reference to analog signals.
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`3 Exhibit 2003 is cited on the face of the ’649 Patent and is thus part of the intrinsic
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`record.
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`Moreover, Petitioner’s construction is improper because it is clear from the
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`intrinsic record that the inventors, when using the terms “digital television signals,”
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`“digital video signals,” and “digital audio signals,” intended that the word “digital”
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`modify the words “television signals,” “video signals,” and “audio signals” and
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`that the signals be “digital” – not analog. Russ Dec., ¶64. In the same way, even
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`the references cited by Petitioner in the Petition modify the terms “television
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`picture signals,” “television video signals,” and “audio” using, respectively, the
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`words “digitalized,” see Ex. 1006 at 1:9-10, “digitized,” see Ex. 1004 at 1:11-12,
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`and “digital,” see Ex. 1003 at 3:65-66, when they intended that the signals be
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`“digital” and not analog. Further, the ’649 Patent specification makes clear that
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`the inventors were referring to the transmission of digital television programming,
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`well known in the art. See supra.
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`The specification also establishes a decisive dichotomy between digital
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`video and analog video in stating that “[i]n the prior art, various means and
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`methods exist for regulating the reception and use of electronically transmitted
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`programming. Various scrambling means are well known in the art for
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`scrambling, usually the video portion of analogue television
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`transmissions…Encryption/decryption means and methods, well known in the art,
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`can regulate the reception and use of, for example, digital video and audio
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`t