UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`
`______________
`
`Case: IPR2016-00753
`Patent No. 7,752,649
`______________
`
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND THE CLAIMS
`UNDER 37 C.F.R. § 42.121(c)
`
`
`
`

`
`TABLE OF CONTENTS
`I. STATEMENT OF RELIEF REQUESTED .................................................... 1
`II.
`INTRODUCTION .......................................................................................... 1
`III. LISTING OF AMENDMENTS .................................................................... 8
`IV. SUPPORT FOR THE SUBSTITUTE CLAIMS ......................................... 9
`V. CLAIM CONSTRUCTION ......................................................................... 11
`A. “information particular to a subscriber at said [] receiver and originated at said
`[] receiver” ............................................................................................................ 11
`VI. THE SUBSITUTE CLAIMS ARE PATENTABLE UNDER 35 U.S.C.
`§101 12
`A. The Substitute Claims Are Statutory ............................................................... 12
`VII. THE SUBSTITUTE CLAIMS ARE NOT ANTICIPATED BY THE
`PRIOR ART ........................................................................................................... 15
`VIII. THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS OVER THE
`PRIOR ART ........................................................................................................... 15
`A. The Prior Art Does Not Disclose “at least one of said plurality of processors is
`a central processing unit that operates according to operating system instructions
`stored in reprogrammable nonvolatile memory at said [] receiver, said operating
`system instructions are reprogrammable by a remote station” accompanied by at
`least one other element of the claims. ................................................................... 16
`B. The Prior Art Does Not Disclose “reprogrammable nonvolatile memory
`storing digital data comprising information particular to a subscriber at said []
`receiver and originated at said [] receiver” accompanied by at least one other
`element of the claims. ........................................................................................... 22
`C. The Prior Art Does Not Disclose “cadence information enables distinguishing
`individual messages and comprises at least one of a header, length token, and
`end-of-file signal” accompanied by at least one other element of the claims. ..... 23
`D. The Invention Would Not Have Been Obvious. .............................................. 24
`IX. PATENT OWNER IS NOT AWARE OF OTHER MATERIAL PRIOR
`ART. ........................................................................................................................ 25
`X. CONCLUSION .............................................................................................. 25
`
`
`
`
`
`

`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Description
`Declaration of Samuel H. Russ, Ph.D. in Support of Patent
`Owner Personalized Media Communications’ Preliminary
`Response to Petition for Inter Partes Review (June 22, 2016)
`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.
`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.
`Webster’s Ninth New Collegiate Dictionary, 1988, p. 1213.
`Declaration of Samuel H. Russ, Ph.D. in Support of Patent
`
`Exhibit No.
`
`2001
`
`2002
`2003
`
`2004
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`2005
`
`2006
`
`2007
`2008
`
`2009
`
`2010
`
`2011
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`2012
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`2013
`
`2014
`2015
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`
`
`

`
`Owner Personalized Media Communications’ Response to
`Petition for Inter Partes Review (December 16, 2016)
`“Memorandum Opinion and Order,” Personalized Media
`Communications, LLC v. Apple, Inc., Case No. 2:15-CV-01366-
`JRG-RSP (E.D. Tex., Oct. 25, 2016).
`Webster’s Ninth New Collegiate Dictionary, 1988, p. 1314.
`E.S. Busby, Jr., Principles of Digital Television Simplified,
`Journal of the SMPTE, Vol. 84, July 1975, pp. 542-545.
`G.D. Heynes, Digital Television, A Glossary and Bibliography,
`SMPTE Journal, Vol. 86, January 1977, pp. 6-9.
`J. Free, Digital hi-fi and TV, Popular Science, March 1978, pp.
`50-60.
`Tutorial 734, Video Basics, Maxim Integrated, May 8, 2002, pp.
`1-12, available at https://www.maxim integrated.com/en/app-
`notes/index.mvp/id/734 (accessed December 13, 2016)
`U.S. Patent No. 4,003,020
`U.S. Patent No. 4,027,331
`U.S. Patent No. 4,280,147
`U.S. Patent No. 4,381,519
`Declaration of Thomas J. Scott, Jr., Esq. Supporting the
`Patentability of U.S. Patent Nos. 7,752,649; 8,559,635; and
`8,191,091 (December 16, 2016)
`Intentionally Left Blank
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`
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`2016
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`2017
`2018
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`2019
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`2020
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`2021
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`2022
`2023
`2024
`2025
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`2026
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`2027
`2028
`2029
`2030
`2031
`2032
`2033
`2034
`2035
`2036
`2037
`2038
`2039
`2040
`2041
`2042
`2043
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`

`
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Wang, et al., Exploring Legal Patent Citations for Patent
`Valuation, Proceedings of the 23rd ACM International
`Conference on Conference on Information and Knowledge
`Management, 2014, pp. 1379-1388
`Cox, Using Citation Analysis to Value Patents, January 2016,
`Financier Worldwide
`Ocean Tomo Patent Quality Inventor Study, OCEAN TOMO, Apr.
`2011
`Patent Application Ser. No. 08/449,097
`U.S. Patent 4,965,825
`U.S. Patent 4,233,628 (“Ciciora”)
`CBS Rulemaking Petition to FCC (“CBS”) (1980)
`Blatt et al., “The Promise of Teletext for Hearing-Impaired
`Audiences,” IEEE Transactions on Consumer Electronics, Vol.
`CE-26:717-722 (November 1980) (“Blatt”)
`U.K. Patent 1,370,535 (“Millar”)
`U.S. Patent 4,306,250 (“Summers”)
`Chambers, “Enhanced UK Teletext Moves Towards Still
`Pictures,” BBC Research Department Report BBC RD 1980/4,
`June 1980, reprinted in IEEE Transactions on Consumer
`Electronics, Vol. CE-26: 527-554 (August 1980)
`U.S. Patent 4,538,174 (“Gargini”)
`Crowther, “Teletext and Viewdata Systems and Their Possible
`Extension To Europe and USA,” IEEE Transactions on
`Consumer Electronics, Vol. CE-25:288-294 (July 1979)
`Gunn & Harper, “A Public Broadcaster’s View of Teletext in
`the United States,” March 26-28, 1980 Conference, London
`Hedger et al., “Telesoftware – Value Added Teletext,” IEEE
`Transactions on Consumer Electronics, Vol. CE-26:555-567
`(August 1980) (“Hedger”)
`Viewdata and Videotext 1980-81: A Worldwide Report,
`Transcript of Viewdata ’80 Conference, London, March 26-28,
`1980
`Ciciora et al, “An Introduction To Teletext and Viewdata With
`Comments on Compatibility,” IEEE Transactions on Consumer
`Electronics, Vol. CE-25:235-245 (“Ciciora article”)
`
`
`
`2044
`2045
`2046
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`2047
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`2048
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`2049
`2050
`2051
`2052
`2053
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`2054
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`2055
`2056
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`2057
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`2058
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`2059
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`2060
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`2061
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`2062
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`2063
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`

`
`E.C. Sedman, The Use of MicroCobol for Telesoftware,
`VIDEOTEX, VIEWDATA, & TELETEXT – A TRANSCRIPT
`OF THE ONLINE CONFERENCE ON VIDEOTEX,
`VIEWDATA, & TELETEXT (Online Publications Ltd., 1980)
`(“Sedman”)
`U.S. Patent 4,751,578 (“Reiter”)
`Fedida, Viewdata 1, Wireless World, Vol. 83:32-36 (February
`1977)
`Fedida, Viewdata 2, Wireless World, Vol. 83:52-54 (March
`1977)
`Fedida, Viewdata 3, Wireless World, Vol. 83:65-69 (April
`1977)
`Fedida, Viewdata 4, Wireless World, Vol. 83:55-59 (May 1977)
`Gecsei, Jan, The Architecture of Videotex Systems, Prentice-
`Hall, Inc., 1983
`Daniel Nachbar, When Network File Systems Aren’t Enough:
`Automatic Software Distribution Revisited, USENIX
`Association Summer Conference Proceedings, 1986
`U.S. Patent No.4,788,637 (“Tamaru”)
`U.S. Patent No. 4,558,413 (“Schmidt”)
`John Hedger, Telesoftware, Wireless World (November 1978)
`(“Hedger”)
`U.S. Patent No. 4,138,718 (“Toke”)
`U.S. Patent No. 4,359,631 (“Lockwood”)
`The NABU Network Specification 50-90020490 (June 8, 1984)
`(“NABU Specification”)
`John Hughes, The NABU Concept – Distributed Data
`Processing Via Cable Networks, CCTA 1982 Convention (June
`1982) (“Hughes”)
`NABU Personal Computer User’s Guide (Nabu Manufacturing
`Corp., 1983) (“the NABU Guide”)
`Virtual Inventory: Electronic Distribution of Software, RELease
`1.0 (September 12, 1983) (formerly The Rosen Electronic
`Newsletter) (“Rosen”)
`U.S. Patent No. 4,025,851 (“Haselwood”)
`U.S. Patent No. 4,660,170 (“Hui”)
`U.S. Patent No. 4,658,093 (“Hellman”)
`Peter Heinicke, et al., A Multiple Node Software Development
`Environment, IEEE Transactions on Nuclear Science, Vol. NS-
`
`
`
`2064
`
`2065
`2066
`
`2067
`
`2068
`2069
`2070
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`2071
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`2072
`2073
`2074
`2075
`2076
`2077
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`2078
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`2079
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`2080
`
`2081
`2082
`2083
`2084
`
`
`
`
`
`
`

`
`34, No. 4 (August 1987) (“Heinicke”)
`U.S. Patent No. 4,245,245 (“Matsumoto”)
`U.S. Patent No. 4,099,024 (“Boggs”)
`European Patent Application No. EP0166441 (published
`January 2, 1986) (“Caine”)
`Kuo-Sheng Hsiao, Download Remote Node Using Ethernet
`Bootstrap (1984) (“Hsiao”)
`Gregor Bochmann, Towards Videotext Standards, Viewdata and
`Videotext, 1980–81: A Worldwide Report (1980) (“Bochmann”)
`Finlayson, Bootstrap Loading using TFTP, Network Working
`Group Request for Comments: 906 (1984) (“Finlayson”)
`U.S. Patent No. 4,337,483 (“Guillou”)
`U.S. Patent No. 4,352,011 (“Guillou ’011”)
`International Patent Application No. WO 80/01636 (“Guillou
`PCT”)
`DES Modes of Operation, Federal Information Processing
`Standards Publication 81), U.S. Dept. of Commerce, Nat’l
`Bureau of Standards (Dec. 2, 1980) (“FIPS PUB 81”)
`Data Encryption Standard, Federal Information Processing
`Standards Publication 81), U.S. Dept. of Commerce, Nat’l
`Bureau of Standards (Jan. 15, 1977) (“FIPS PUB 46”)
`U.S. Patent No. 4,172,213 (“Barnes”)
`U.S. Patent No. 4,182,933 (“Rosenblum”)
`U.S. Patent No. 4,556,904 (“Monat”)
`U.S. Patent No. 4,805,134 (“Calo”)
`Broadcast Teletext Specification, , published by British
`Broadcasting Corporation et al. (September 1976)
`Videotex/Teletext Presentation Level Protocol Syntax, North
`American PLPS (“NAPLPS” Standard) (December 1983)
`U.S. Patent No. 4,739,510 (“Jeffers”)
`U.S. Patent No. 4,536,791 (“Campbell”)
`U.S. Patent No. 2,843,655 (“Gottfried”)
`U.S. Patent No. 3,211,830 (“Sargent”)
`U.S. Patent No. 4,068,264 (“Pires”)
`U.S. Patent No. 3,924,059 (“Horowitz”)
`U.S. Patent No. 3,886,302 (“Kosco”)
`Chris Powell, Prestel: the opportunity for advertising,
`VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE
`REPORT (“Powell”)
`
`
`
`2085
`2086
`2087
`
`2088
`
`2089
`
`2090
`2091
`2092
`2093
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`2094
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`2095
`
`2096
`2097
`2098
`2099
`2100
`
`2101
`2102
`2103
`2104
`2105
`2106
`2107
`2108
`
`2109
`
`
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`
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`
`

`
`Robert C. Moore, Home Information Systems: A Primer (July
`1981) (“Moore”)
`J.F. Courtney, Videotel: An Extension of the Use of the Display
`Equipment of a Prestel TV set for the Travel Industry,
`VIDEOTEL, VIEWDATA AND VIDEOTEXT 1980-81:
`AWORLDWIDE REPORT (“Courtney”)
`R. F. Park, The Role of Viewdata in Electronic Funds Transfer,
`VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE
`REPORT (“Park”)
`Waring, Cox’s INDAX System – Delivering Future Two-Way
`Cable Services Today, Videotex ’81 (“Waring”)
`The Viewtron Handbook (1983) (“Viewtron Handbook”)
`Viewtron: A Service of the Future for American Homes
`(“Viewtron Brochure”)
`Viewtron Magazine & Guide (1983) (“Viewtron Magazine”)
`Varadharajan, Some Cryptographic Techniques for Secure Data
`Communication, Plymouth Polytechnic, 1984 (“Varadharajan”)
`Lewiston Daily Sun, March 27, 1984
`The Micro Cookbook User’s Guide and Reference Booklet
`(1984) (“Cookbook Guide”)
`Brian G. Champness, Social Uses of Videotex, VIDEOTEX ’81
`INTERNATIONAL CONFERENCE & EXHIBITION (Online
`Conferences Ltd., May 20, 1981) (“Champness”)
`Leslie T. Mapp, Telesoftware for Beginners, JOURNAL OF
`EDUCATIONAL TELEVISION AND OTHER MEDIA, Vol.
`VII, Issue No. 1 (Spring 1981)
`David Shnaider, Taking Videotex to Market: The CBS Role in
`the Joint CBS/AT&T Ridgewood Trail, VIDEOTEX ’83
`INTERNATIONAL CONFERENCE & EXHIBITION (1983)
`(“Shnaider”)
`Sollins, The TFTP Protocol (Revision 2), Network Working
`Group Request for Comments: 783 (1981) (“Sollins”)
`U.S. Patent No. 4,547,851 (“Kurland”)
`THE TELIDON BOOK (David Godfrey & Ernest Chang eds.,
`1981) (“The Telidon Book”)
`U.S. Patent No. 5,270,922 (“Higgins”)
`U.S. Patent No. 4,439,784 (“Furukawa”)
`Robert M. Metcalfe & David R. Boggs, Ethernet: Distributed
`Packet Switching for Local Computer Networks, 19 COMM. OF
`
`
`
`2110
`
`2111
`
`2112
`
`2113
`2114
`2115
`2116
`2117
`2118
`2119
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`2120
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`2121
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`2122
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`2123
`2124
`2125
`2126
`2127
`2128
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`
`
`
`

`
`THE ACM 395 (1976) (“Metcalfe”)
`Hartford Gunn et. al., A Public Broadcaster’s View of Teletext in
`The United States (1980) (“Gunn”)
`Declaration Of Timothy D. Dorney, Ph.D., In Support Of Patent
`Owner’s Contingent Motion to Amend
`Curriculum Vitae of Dr. Timothy D. Dorney
`U.S. Patent No. 4,613,901 (“Gilhousen”)
`U.S. Patent No. 4,736,422 (“Mason”)
`U.S. Patent No. 4,712,239 (“Frezza”)
`U.S. Patent No. 4,388,643 (“Aminetzah”)
`U.S. Patent No. 4,503,462 (“Kelly”)
`U.S. Patent No. 4,484,217 (“Block”)
`Anderson, T. V., The Vertical Interval: A General-Purpose
`Transmission Path, IEEE Transactions on Broadcasting, Vol.
`BC-17, No. 3, Sept. 1971, pp. 77-82.
`Woolfe, R., Videotex: The New Television/Telephone
`Information Services, Cambridge: Heyden & Son Ltd, 1980.
`Marti, B., New Ancillary Services Using a Television Channel,
`SMPTE Journal, Vol. 86, Nov. 1977, pp. 815-818.
`Int’l Patent Pub. No. WO 81/02961 to Campbell, et al.
`U.S. Patent No. 3,743,767 (“Bitzer”)
`Guillermin, J., Development & Applications of the Antiope-
`Didon Technology, Viewdata and Videotext, 1980-81: A
`Worldwide Report (1980), pp. 29-38.
`Carne, B., The Wired Household, IEEE Spectrum, October
`1979, pp. 61-66.
`U.S. Patent No. 3,919,462 (“Hartung”)
`U.S. Patent No. 4,408,225 (“Ensinger”)
`Personalized Media Communications LLC v. Apple, Inc., Case
`No. 2:15-cv-1366-JRG-RSP, Doc. 209 at 20 (E.D. Tex. Sept. 13,
`2016)
`Personalized Media Communications, LLC v.
`Amazon.com, Inc. et al., Case No. 13-1608-RGE, Doc. 148
`(D.Del. Aug. 10, 2015)
`Personalized Media Communications LLC v. Samsung Elecs.
`Am., Inc. et al., Case No. 2:15-cv-1754-JRG-RSP (E.D. Tex.)
`Transcript of Telephone Conference in IPR2016-00753,
`IPR2016-00754, and IPR2016-00755, dated December 12, 2016
`
`
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`2129
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`2130
`2131
`2132
`2133
`2134
`2135
`2136
`2137
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`2138
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`2139
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`2141
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`

`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`With respect to the challenged claims 39, 54, 62, and 67 of U.S. Patent No.
`
`7,752,649 (“the ’649 Patent”), if any of those challenged claims are found
`
`unpatentable, Patent Owner moves (with the Board’s authorization (Ex. 2150)) to
`
`cancel the claim found to be unpatentable and replace the unpatentable claim with
`
`a corresponding one of the proposed substitute claims 103-106. See 37 C.F.R. §§
`
`42.22(a)(2); 42.121; 35 U.S.C. § 316(d).
`
`The proposed substitute claims are patentable over the Petition prior art and
`
`art known to PMC. Patentability is supported by the declaration of Timothy D.
`
`Dorney, Ph.D. (Ex. 2130.) Dr. Dorney is an electrical engineer with extensive
`
`experience in the field of electrical and computer engineering. Id. at ¶¶3-7.
`
`II.
`
`INTRODUCTION
`
`The ’649 Patent teaches an invention which combines mass medium
`
`programming with information both specific and customized to a particular user of
`
`the receiver station. The unique combination of known elements, coupled with new
`
`signaling and operations of those elements, provided the mechanism with which to
`
`offer “personal” information. As such, the inventors of the ’649 Patent drew from a
`
`variety of art areas. For example, mass medium programming came from
`
`broadcast means such as television and radio, and digital electronic communication
`
`using embedded digital information in the broadcast means.
`
`1
`
`

`
`
`
`Interestingly, digital information was also available at the receiver station
`
`using a telephone modem, subject matter within the purview of engineers in
`
`computer communications. The power of signal processors, control processors,
`
`controllers, decryptors, matrix switches, and the like, however, would have been
`
`the domain of circuit and system engineers. Still further, the introduction of a
`
`microcomputer into the above described operations required a skill set relevant to
`
`computer programmers, computer science, and/or computer engineering. No one
`
`person of skill at the time would typically have had the required expertise in all of
`
`these technical areas, nor would they have been inclined to readily borrow ideas so
`
`far removed from their area of technical expertise. The ’649 Patent offers a unique
`
`solution by first deciding on a desired result, then incorporating the elements,
`
`signaling, and programming necessary to achieve that result.
`
`While certain elements of the claims may have been known, the combination
`
`and specific steps in the use of that combination, are novel and nonobvious. The
`
`features added in the contingent amended claims set forth in Appendix A
`
`(hereinafter, “the amended claims” or “the substitute claims”) are true to the
`
`embodiments provided in the ’649 Patent and supported by its Specification.
`
`However, to “identify known combinations with other elements in the claim”
`
`(Corning Optical Communications v. PPC Broadband, Inc., IPR2014-00441,
`
`Paper 19 at 4 (P.T.A.B. Oct. 30, 2014)) is a daunting task because the ’649 Patent
`
`
`
`
`2
`
`

`
`
`
`covers technical fields involving broadcast, computers, computer networks,
`
`circuits, and signals to control the interoperation of all of these elements. Patent
`
`Owner, however, asserts that the contingent amended claims are patentable over
`
`prior art in these various technical areas. In the following, the analysis investigates
`
`not only the instant prior art in this case, but also the relevant art cited in IPR2016-
`
`00751, IPR2016-00754, IPR2016-00755, and IPR2016-01520 (“the Apple IPRs”)
`
`and IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01531, IPR2014-
`
`01532, IPR2014-01533, and IPR2014-01534 (“the Amazon IPRs”), to which this
`
`Board has already been exposed. By considering these wide swaths of art
`
`previously applied to the same specification, which encompasses numerous
`
`different technical areas, Patent Owner believes it is fairly representing all prior art
`
`known to be relevant to the amended claims.
`
`In offering patentable amended claims, the Patent Owner, for the purposes of
`
`this motion only, adopts and uses the preliminary claim constructions set forth by
`
`the Board in its Institution Decision. Paper 8 at 9-19. Furthermore, support of the
`
`amended claims is based substantively on the 1987 patent application 08/449,097,
`
`and centrally focused on “Example #7” starting on page 288. (Ex. 2050.)
`
`The claim amendments overcome the instant prior art in this case. In
`
`particular, all amended claims require “a central processing unit that operates
`
`according to operating system instructions stored in reprogrammable nonvolatile
`
`
`
`
`3
`
`

`
`
`
`memory at said [] receiver, said operating system instructions are reprogrammable
`
`by a remote station, said reprogrammable nonvolatile memory storing digital data
`
`comprising information particular to a subscriber at said [] receiver and originated
`
`at said [] receiver”.
`
`While Petitioner has argued the addition/use of a programmable processor,
`
`instead of fixed function logic, is merely a design choice, the further requirement
`
`that the operating system (“OS”) instructions of the central processing unit be
`
`“reprogrammable by a remote station” is not inherent. Unlike the concepts behind
`
`telesoftware or remote purchase and electronic delivery of “application” software,
`
`OS instructions are unique. Failure, even one time, to update the OS instructions
`
`properly might cause the system under control of those OS instructions to be
`
`completely inoperable. Even if the OS instructions may be recovered through
`
`other means, the inherent customer frustration makes updating of OS instructions a
`
`non-obvious combination.
`
`However, a limited number of prior art references endeavor to load OS
`
`instructions at boot, by immediately searching on a communication channel or
`
`contacting a remote source to provide OS instructions. In these circumstances, the
`
`claim requirement of the “operating system instructions stored in reprogrammable
`
`nonvolatile memory at said [] receiver” would overcome this art.
`
`
`
`
`4
`
`

`
`
`
`Furthermore, the inventors of the ‘649 Application sought to customize the
`
`output of their invention with “information particular to a subscriber at said []
`
`receiver and originated at said [] receiver”. The subscriber information is stored in
`
`“reprogrammable nonvolatile memory” at the receiver. Subscriber information is
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`not subscriber station information such as a receiver station identification code,
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`currently tuned channel, or allowed tier programming level. Subscriber station
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`information may be common to thousands of subscriber stations and have no
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`information particular to a subscriber using the receiver station. As taught in the
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`’649 Application (Ex. 2050) and shown in Ex. 2130 at 27, subscriber information
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`comprises information on the portfolio of financial instruments owned by the
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`subscriber, and/or the size of the family of the subscriber of the receiver station.
`
`The subscriber information is tied to the personal activity and circumstances of the
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`subscriber and NOT information representative of the subscriber station circuitry
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`or access codes. Subscriber information may be duplicative of a limited number of
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`other subscriber information at other subscriber stations, because, for example,
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`some subscribers may have the same size family and/or have purchased the same
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`type and quantity of stock. However, subscriber information is unique to the
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`subscriber and their activities.
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`
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`
`5
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`

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`
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`Exhibits 1003, 1005, and 1027 are silent to at least remotely
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`reprogrammable OS instructions stored at a receiver station, and information
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`particular to a subscriber originated and stored at a receiver station.
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`Exhibits 1004, and 1026 are silent to at least a receiver station CPU,
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`remotely reprogrammable OS instructions stored at a receiver station, information
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`particular to a subscriber originated and stored at a receiver station, graphic overlay
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`on top of said programming, a unique digital code that identifies the receiver
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`station, and digital audio.
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`Exhibits 1006, 1018, 1023, 1024, and 1025 are silent to at least remotely
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`reprogrammable OS instructions stored at a receiver station, information particular
`
`to a subscriber originated and stored at a receiver station, graphic overlay on top of
`
`said programming, and a unique digital code that identifies the receiver station.
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`More broadly, all Teletext prior art and the like (e.g., Teletex, Ceefax,
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`Teledata, Telidon, Didon, Oracle, etc.) inherently cover a one-way digital data
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`broadcast transmission. While these system do not prevent using receiver station
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`identifications or providing data to compliment information particular to a
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`subscriber both originated and stored at a receiver station, neither typically exists
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`because these systems are intended to service a large population. Providing
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`information customized specifically to a particular subscriber or particular
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`
`
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`6
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`

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`
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`subscriber station would be limited by a trade-off between content volume versus
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`response time.
`
`All Videotex prior art and the like (e.g., Prestel, Vewdata, Antiope, etc.)
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`inherently covers a two-way digital data communication. At a basic level, no
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`Videotex system prior art has discussed digital audio or a subscriber station
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`identification code. Two-way systems used a point-to-point communication (i.e.,
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`telephone connection), and the communication was initialized with a password.
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`Once billing information was established through a password, the computer
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`network always knew the destination because the telephone system is point-to-
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`point, and the telephone number is unique to the connection. Also, subscribers
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`could use any terminal because the terminals were not uniquely identified by
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`anything other than their telephone number during use.
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`The final area for broad review is computers connected through computer
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`networks. These systems may have used completely digital communications with
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`unique names and/or numbers to identify each computer as a node on the network.
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`However, a standard for recording and transmission of digital television and digital
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`video on a computer network was not published until 1993, six years after the ‘649
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`specification was filed (http://mpeg.chiariglione.org/standards/mpeg-1/video note
`
`the 1993 dates for ISO/IEC 11172-2).
`
`
`
`
`7
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`
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`Given these three broad areas of endeavor discussed above, “there was no
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`reason in the record why one of skill in the art would attempt to combine the cited
`
`prior art to arrive at the claimed invention.” (Nike, Inc. v. Adidas AG, 812 F.3d
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`1326 (Fed. Cir. 2016) (citing Leo Pharmaceutical Prods. v. Rea, 726 F.3d 1346
`
`(Fed. Cir. 2013))). As discussed below, the Patent Owner has exhaustively
`
`examined alternative combinations of art in very different technical areas,
`
`particularly with an eye toward the prior art cited by the Petitioner. Based on that
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`review, the Patent Owner believes that the proposed contingent amended claims
`
`are patentable over all the prior art of which it is aware.
`
`III. LISTING OF AMENDMENTS
`Patent Owner provides in Appendix A a complete listing of proposed
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`contingent claim amendments with a correlation of the substitute claims to the
`
`original claims. No more than one substitute claim is proposed for each challenged
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`claim. 37 C.F.R. §§ 42.24(a)(1), 42.121 (a)(3). The proposed substitute claims are
`
`not broader than the original claims. They simply clarify the meaning of the claims
`
`in a manner that is consistent with the description of the inventions in the
`
`specification. The amendments are responsive to a ground of unpatentability
`
`involved in the trial and do not remove any limitations. 35 U.S.C. § 316(d)(3); 37
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`C.F.R. § 42.121.
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`
`
`
`8
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`
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`In this listing of amendments, all challenged dependent claims, including
`
`those which have not been substantively amended, have been renumbered to reflect
`
`the proper claim dependency.
`
`IV. SUPPORT FOR THE SUBSTITUTE CLAIMS
`The substitute claims find support in the disclosure of the ’649 Patent.1 Ex.
`
`1002. Citations are hereinafter made to the specification and drawings of App. No.
`
`08/449,097 (“the ’097 Application,” Ex. 2050) which led to the ’649 Patent. No
`
`new matter is added. Based on the disclosure of the ’097 Application, one of
`
`ordinary skill would understand that the inventors had possession of the process
`
`recited in each of the substitute claims 103-106. Vas-Cath Inc. v. Mahurkar, 935
`
`F.2d 1555, 1561-62 (Fed. Cir. 1991).
`
`Amended claims 103-106 find written description support primarily in the
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`embodiment labeled “Example #7”. (Ex. 2050 at 288.) In the embodiment, a
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`receiver station receives a series of signals that enable the location of at least two
`
`decryption keys for video decryption and a decryption key for audio. The
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`encrypted digital video and encrypted digital audio contain the contents of the
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`program “Wall Street Week.” The signals contain messages and instructions, and
`
`invoke instructions already present at the receiver station. The signals allow a
`
`1 Full support for each and every limitation in the substitute claims can be located
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`in the Declaration of Dr. Dorney. Ex. 2130 at ¶14.
`
`
`
`
`9
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`
`
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`doubly encrypted digital video signal and singly encrypted digital audio signal to
`
`be decrypted and output to a television monitor using a plurality of processors.
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`Additional features of the embodiment have been added in “Controlling
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`Computer-Based Combined Media Operations” starting at ’097 Application at 447.
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`In this embodiment, information particular to a subscriber is stored and displayed
`
`at particular times within the presentation of the Wall Street Week program. A
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`microcomputer is used to hold the subscriber specific stored information and
`
`enable the combined presentation with the mass medium program.
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`Furthermore, the ability to reprogram the operating system instructions of
`
`the microcomputer used in providing subscriber specific information during the
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`Wall Street Week program, is discussed in “Preprogramming Receiver Station
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`Operating Systems” starting at ’097 Application at 516.
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`The specific support of each of the amended claims is shown in the
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`specification support listing in the attached declaration. (Ex. 2130 at ¶14.) The
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`specification describes and supports each element of claims 103-106.
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`In other words, Patent Owner respectfully submits that the amendments to
`
`the claims are tied to a central embodiment. In the embodiment, for example, a
`
`single user input results in obtaining encrypted digital content and providing
`
`monitor records to the content provider, all without further user intervention.
`
`Further, the addition of some subscriber-specific information allows customized
`
`
`
`
`10
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`

`
`
`
`information to be incorporated into the display of the programming. In addition,
`
`improved performance of the system may be obtained by updating the operating
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`system instructions used at the receiver station.
`
`V. CLAIM CONSTRUCTION
`In an effort to achieve patentable claims, the Patent Owner has amended the
`
`claims in light of the Board’s claim construction as set forth in the Institution
`
`Decision. Paper 8 at 8-19. In this section, Patent Owner clarifies the following
`
`limitations relevant to the substitute claims.
`
`A.
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`“information particular to a subscriber at said [] receiver and
`originated at said [] receiver”
`
`The substitute claims recite the term “information particular to a subscriber
`
`at said [] receiver and originated at said [] receiver”, which can be readily
`
`understood by a person of ordinary skill in the art in light of the surrounding claim
`
`language and the specification. However, to the extent necessary, Patent Owner
`
`submits that one of ordinary skill would understand that this phrase refers to
`
`“subscriber information corresponding to the personal activity and circumstances
`
`of the subscriber”.
`
`As explained supra, “information particular to a subscriber” corresponds to
`
`information such as a personal stock portfolio, and family size (or even dietary
`
`habits). As taught, subscriber information is different from the routine operation of
`
`a subscriber station. Furthermore, that “in