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’ 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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`C.
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`INTRODUCTION ........................................................................................... 1
`I.
`’649 PATENT .................................................................................................. 2
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 5
`IV. CLAIM CONSTRUCTION ............................................................................ 6
`A.
`Television .............................................................................................. 7
`B.
`Video ..................................................................................................... 8
`C.
`Digital Television Signals ..................................................................... 9
`D. Digital Video Signals .......................................................................... 12
`E.
`Processor / Control Processor ............................................................. 14
`F.
`Stored Function Invoking Data ........................................................... 17
`V. APPLICABLE LEGAL STANDARDS ........................................................ 18
`VI. CAMPBELL IN VIEW OF THE PURPORTED KNOWLEDGE OF
`A POSITA DOES NOT DISCLOSE OR SUGGEST EACH AND
`EVERY ELEMENT OF THE CHALLENGED CLAIMS ........................... 20
`A.
`Campbell ............................................................................................. 20
`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” ............................................... 23
`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 ............................................................................................ 25
`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” ................... 27
`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 .................................................................................. 30
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`D.
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`E.
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`F.
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`IPR2016-00753
`Patent No. 7,752,649
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`G.
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`Each Challenged Claim Is Patentable Over Campbell Because
`Campbell Does Not Disclose Or Suggest Processing Signals At
`A “Plurality Of Processors” ................................................................ 31
`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 .......................... 38
`C.
`A POSITA Would Be Led Away From Combining Widergren
`With Campbell .................................................................................... 41
`D. No Motivation Exists To Combine Widergren With Campbell;
`Doing So Yields Unpredictable Results .............................................. 41
`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 And 67 Are Each Patentable Over Mustafa Because
`Mustafa Does Not Disclose Or Suggest Receiving “Digital
`Television Signals”.............................................................................. 48
`Each Challenged Claim Is Patentable Over Mustafa Because
`Mustafa Does Not Disclose Or Suggest Processing Signals At
`A “Plurality Of Processors” ................................................................ 50
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`H.
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`C.
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`D.
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`E.
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`ii
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`F.
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`IPR2016-00753
`Patent No. 7,752,649
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`G.
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`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 ................................................................................ 53
`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 ........................................ 55
`Claim 54 Is Patentable Over Mustafa Because Mustafa Does
`Not Disclose Or Suggest “Receiving An Information
`Transmission” Or “Receiving A Control Signal” ............................... 57
`IX. MUSTAFA IN VIEW OF IIJIMA DOES NOT RENDER THE
`CHALLENGED CLAIMS OBVIOUS ......................................................... 59
`A.
`Iijima .................................................................................................... 59
`B.
`Iijima Does Not Cure Mustafa’s Deficiencies .................................... 60
`C.
`Combining Iijima With Mustafa Renders Mustafa Inoperable
`For Its Intended Purpose ..................................................................... 62
`D. No Motivation Exists To Combine Iijima With Mustafa; Doing
`So Yields Unpredictable Results ......................................................... 64
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .............. 65
`X.
`XI. CONCLUSION .............................................................................................. 66
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`H.
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`iii
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`IPR2016-00753
`Patent No. 7,752,649
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`TABLE OF AUTHORITIES
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`Cases
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 6
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`Cat Tec LLC v. Tubemaster, Inc.,
`528 F.3d 871 (Fed. Cir. 2008) .............................................................................. 6
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`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb 06, 2009) ............................... 18
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`Graham v. John Deere Co.,
`383 U.S. 1, 15-17 (1966) .................................................................................... 18
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`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 63
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`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) ............................................................................ 18
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`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ..................................................................... 36, 57
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................... 18, 19
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`Microsoft, Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 6
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`Omega Engineering, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .......................................................................... 10
`
`St. Jude Med., Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) .......................................................................... 19
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`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 20
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`iv
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`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .............................................................................. 6
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`IPR2016-00753
`Patent No. 7,752,649
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`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 19
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`Statutes
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`35 U.S.C. § 103 ........................................................................................................ 18
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`47 C.F.R. § 73 .......................................................................................................... 28
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`Other Authorities
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`M.P.E.P. § 2141 ....................................................................................................... 19
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`M.P.E.P. § 2143 ....................................................................................................... 19
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (August 14, 2012) ................................................................ 6
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`v
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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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`The Patent Trial and Appeal Board (“Board”), in a September 20, 2016
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`decision (“Decision”), instituted inter partes review of claims 39, 54, 62, and 67
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`(“Challenged Claims”) of U.S. Pat. 7,752,649 (“’649 Patent”) on four grounds: (i)
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`claims 39, 54, and 67 are obvious over U.S. Pat. 4,789,895 (“Mustafa”); (ii) the
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`Challenged Claims are obvious over Mustafa in view of U.S. Pat. 4,215,369
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`(“Iijima”); (iii) the Challenged Claims are obvious over U.S. Pat. 4,536,791
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`(“Campbell”); and (iv) the Challenged Claims are obvious over Campbell in view
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`of U.S. Pat. 4,302,775 (“Widergren”). Decision, 60.
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`The Board, however, completely ignored many arguments made by patent
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`owner Personalized Media Communications LLC (“PMC”) in its preliminary
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`response to the petition for inter partes review (“Petition”) filed by Apple Inc.
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`(“Petitioner”) on March 14, 2016, including key arguments that PMC led with.
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`Russ Dec.,¶¶5, 8 (Ex. 2015).1 Moreover, the Board declined to construe claim
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`terms in instances where a construction was necessary to a proper consideration of
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`PMC’s arguments. Id.,¶6.2 On occasion, the Board also parroted the parties’
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`1 Hereinafter referred to as “Russ. Dec.,” without reference to “Ex. 2015.”
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`2 The Board also declined to construe “cadence information.” See, Russ
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`Dec.,¶¶105-107.
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`1
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`IPR2016-00753
`Patent No. 7,752,649
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`arguments and then adopted, without any reasoning, Petitioner’s position. Id.,¶7.
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`PMC respectfully requests that the Board address all such issues in full.
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`II.
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`’649 PATENT
`The ’649 Patent describes and claims methods of processing signals. See,
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`e.g., Ex. 1002, claims 39, 54, 62, and 67. As an example, in claim 39, signals are
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`processed in a television receiver having multiple processors. See, Russ Dec.,¶43.
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`Several examples in the specification address claim 39’s limitations. One such
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`example is Example #7, where one embodiment of the operation of the signal
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`processing system depicted in FIG. 4 is described. Ex. 1002, 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., 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 operate according to instructions and are
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`reprogrammable. See, e.g., id., 8:35-40, 10:65-11:8, 15:16-48, 17:53-64, 19:11-14,
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`19:29-31, 19:42-20:2, 20:40-45, 20:66-21:3, 21:53-22:9, 24:29-33, 24:49-56,
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`103:14-21, 125:24-32, and 148:51-56. See also Russ Dec.,¶45. As such, FIG. 4
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`depicts a television receiver having 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, 149:47-50. In addition to the digital video and digital audio,
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`2
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`the “invention employs signals embedded in programming…the embedded signals
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`IPR2016-00753
`Patent No. 7,752,649
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`contain digital information that may include addresses of specific receiver
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`apparatus controlled by the signals and instructions that identify particular
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`functions the signals cause addressed apparatus to perform.” Id., 7:51-63. “FIG.
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`2I shows one instance of a SPAM [‘Signal Processing Apparatus and Methods’]
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`message stream.” Id., 9:61. A person of ordinary skill in the art (“POSITA”)
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`would understand these exemplary passages to support claim 39’s step of receiving
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`an information transmission including digital television signals and a message
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`stream. Russ Dec.,¶46.
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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, 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., 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., 49:21-38 and 151:27-31.
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`“[C]ontroller, 20, selects the information of the execution segment in said
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`message, determines that said selected information matches the aforementioned
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`instance of enable-next-program-on-CC13 information at said particular
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`controlled-function-invoking-@20 information location, executes particular
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`3
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`preprogrammed load-and-run-@20 instructions that are associated with the
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`IPR2016-00753
`Patent No. 7,752,649
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`instance of information at said particular location, loads the information of the
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`information segment of said message – which information is said enable-CC13
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`instructions – at said RAM, and executes the information so loaded.” Id., 151:32-
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`42. In other words, controller 20 compares “the information of the execution
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`segment in said message” with function invoking data stored at a memory location
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`for a match. If a match occurs, “enable-CC13” is loaded and executed. A
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`POSITA would understand this exemplary passage to support claim 39’s step of
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`comparing stored function invoking data to the contents of said at least one register
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`memory. Russ Dec.,¶48.
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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, referring to FIG. 4, encrypted digital
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`audio is decrypted by decryptor 107 and output through matrix switch 258, and
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`encrypted digital video is decrypted by decryptor 224 and output through matrix
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`switch 258 to signal processor 200. The decryptors 107, 224, signal processor 200,
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`and microcomputer 205 are a plurality of processors to which digital television
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`signals are input and at which the digital television signals are simultaneously
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`processed. Ex. 1002, 151:50-54, 153:3-24, 155:7-19, and 160:30-54. See also
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`Russ Dec.,¶49.
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`4
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`Finally, “matrix switch, 258,…transfer[s] the decrypted audio information
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`IPR2016-00753
`Patent No. 7,752,649
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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,
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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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`transmitted television image,” id., 160:50-54. As such, the television programming
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`included in the digital television signals is displayed. Russ Dec.,¶50.
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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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`is an individual having an undergraduate degree in electrical engineering, or a
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`related field, and about three to five years of practical experience in the fields of
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`digital communications, electronics, and computer based systems. Alternatively,
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`Neuhauser contends the POSITA would have a Master’s degree in electrical
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`engineering with specialization in digital systems and somewhat less practical
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`experience. Neuhauser Dec.,¶69 (Ex. 1001). The Board adopted Neuhauser’s
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`definition of the POSITA, which is fairly consistent with that previously offered by
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`PMC. Decision, 21; Russ Dec.,¶41.
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`5
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`IV. CLAIM CONSTRUCTION
`In 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.”).
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`6
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`A. Television
`PMC submits the broadest reasonable construction of “television” is
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`IPR2016-00753
`Patent No. 7,752,649
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`“telecommunication that includes both audio and video.” Thus, a “television
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`signal” would include both audio and video signals, and “television programming”
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`would be programming that includes both audio and video. Russ Dec.,¶54.
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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, 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., 11:20-23 (emphasis
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`added). See also id., 210:19-21 (“the television tuner, 215, of said set, 202, thereby
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`display[s] the video and audio information of the transmission…”)(emphasis
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`added); id., 242:40-42 (“to display the television information of said transmission
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`(that is, information of said audio and video) at monitor, 202M”)(emphasis
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`added); id., 149:48-50 (“a television signal…consists of so-called ‘digital video’
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`and ‘digital audio’”)(emphasis added); and Russ Dec.,¶¶55-57.
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`Moreover, in a related litigation between PMC and Petitioner involving the
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`’649 Patent – i.e., Personalized Media Communications, LLC v. Apple, Inc., Case
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`No. 2:15-cv-01366-JRG-RSP (E.D. Tex.) (“Related Litigation”) – the Court
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`7
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`understands “television” to include both audio and video. For example, the Court
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`IPR2016-00753
`Patent No. 7,752,649
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`construed “digital television signals” to mean “television programming in which
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`the video and audio are transmitted as digital video signals and digital audio
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`signals, at least a portion designed for multiple recipients.” Ex. 2016, 87.
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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,” which is consistent with the
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`specification: “[o]ccasionally one viewer may see, hear, or read information of
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`specific relevance to him (as happens when a guest on a television talk show turns
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`to the camera and says, ‘Hi, Mom’),” Ex. 1002, 1:40-44 (emphasis added), and
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`“TV monitor, 202M, displays the conventional television image and the sound of
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`the transmitted ‘Wall Street Week’ program. During this time the program may
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`show the so-called ‘talking head’ of the host as he describes the behavior of the
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`stock market,” id., 13:63-14:1 (emphasis added). See also id., 259:27-38 (“said
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`program originating studio commences transmitting the video image of the so
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`called ‘talking head’ of said person…saying: ‘Super Discount Supermarkets is
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`proud to sponsor…”)(emphasis added); and Russ Dec.,¶¶60-63. In other words, in
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`these passages, when the specification refers to an image as being “video,” it is
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`referring to video that is capable of showing movement.
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`8
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`C. Digital Television Signals
`The Board construed “digital television signals” to encompass “television
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`IPR2016-00753
`Patent No. 7,752,649
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`signals entirely or partially encoded in a digital format.” Decision, 16.
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`This construction is legally erroneous3 and results in any television signal
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`that includes at least some digital information, such as control information, being a
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`“digital television signal.” The Board does not cite a single specification passage
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`to supports its construction. The passages (see Ex. 1002, 10:43-11:6, 18:54-61,
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`and 18:64-19:14; and Ex. 1007, 14:1-4) cited by Petitioner (see Petition, 3) may
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`reference traditional analog television signals merely having some digital
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`information embedded, but these passages do not describe merely embedding some
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`digital information in traditional analog television signals as being “digital
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`television.” Nor do the Petitioner or Board cite to any extrinsic references – and
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`there are many (see Russ. Dec.,¶¶83-87) – evidencing a POSITA’s understanding
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`of the term “digital television signals.” In concurrence with those many
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`references, those ’649 Patent specification passages that do describe “digital
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`television” describe it as “consist[ing] of so-called ‘digital video’ and ‘digital
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`audio,’ well known in the art,” which is consistent with PMC’s proposed
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`construction. Ex. 1002, 149:49-50 (emphasis added). See also Russ Dec.,¶¶65-66.
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`3 The Board, for example, did not take the necessary first step to establish the plain
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`and ordinary meaning of “digital television signals.”
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`9
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`The Board, in arriving at its construction, relies on a particular, yet
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`IPR2016-00753
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`ambiguous, statement (i.e., a combination of the second and third quoted sections)
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`in the prosecution history. Decision, 15; Russ Dec.,¶67. But this statement, when
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`understood in the proper context, actually undercuts the Board’s and supports
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`PMC’s construction. See, id.,¶¶68, 71-77. In addition, when the clear
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`typographical error in the last sentence of the statement is corrected (i.e., when the
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`words “partially” and “entirely” are swapped), the corrected sentence confirms that
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`a television signal entirely, rather than partially, “encoded in digital format [is]
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`separately defined from analog format [and] thereby compris[es] ‘digital
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`television.’” See, id.,¶¶78-80.
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`The ambiguous prosecution statement upon which the Board relies is also
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`irrelevant and of limited probative value, as it was made by the applicant when
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`discussing a patent to which the Challenged Claims are not entitled priority and
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`because the statement pertained to claims other than the Challenged Claims. See,
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`id.,¶¶69-70. Moreover, the Federal Circuit has “consistently rejected prosecution
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`statements too vague or ambiguous [as] qualify[ing] as a disavowal of claim
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`scope.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325
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`(Fed.Cir.2003)
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`The Board also ignores other, more informative, statements made in the
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`prosecution history: “[a]s disclosed, ‘digital television’ refers to a system whereby
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`10
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`IPR2016-00753
`Patent No. 7,752,649
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`television signals are digitized prior to transmission,” Ex. 1010, 4 (emphasis
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`added), and “‘digital television’ transmissions include the constituent digital video
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`and digital audio,” Ex. 1010, 5 (emphasis added). See also Russ Dec.,¶68.
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`Accordingly, PMC submits the broadest reasonable construction of “digital
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`television signals” is “television programming that necessarily includes both digital
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`audio and digital video signals.” The specification makes plain that PMC’s
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`construction is correct: “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, 149:47-50 (emphasis added), and “said program…ceases
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`transmitting a television signal of digital video and digital audio,” id., 155:38-40
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`(emphasis added). See also id., 156:24-31 (contrasting “conventional analog
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`television” to “digital video and audio”); id., 157:9-13 (stating that conventional
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`“analog television information,” i.e., a non-digital television signal, contains
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`digital SPAM information); and Russ Dec.,¶82. A POSITA would not understand
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`“digital television signals” to mean “television signals entirely or partially encoded
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`in a digital format.” Such a construction is unreasonably broad, would encompass
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`analog television signals that simply include some digital information, and is
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`inconsistent with the specification and the understanding of a POSITA reviewing
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`the specification. Id.,¶¶81, 83-88.
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`It has also been understood for decades that analog television with
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`11
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`embedded digital data is not within the ambit of “digital television,” see id.,¶89
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`(discussing the “Digital Television Transition” mandated by the FCC), and
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`Petitioner is incorrect in stating that the term “digital television signal” did not
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`have a well-known meaning in the art by September 11, 1987 – i.e., the priority
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`date of the Challenged Claims. To the contrary, the term “digital television signal”
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`was known to a POSITA as early as July, 1975, as it was extensively described at
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`that time in an article appearing in the Journal of the SMPTE (Society of Motion
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`Picture and Television Engineers). Ex. 2003.4 See also Russ Dec.,¶¶90-93.
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`D. Digital Video Signals
`The Board construed “digital video signals” to encompass “digital
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`information embedded in the video portion of a television transmission signal.”
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`Decision, 19.
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`This construction is legally erroneous. The specification passages cited by
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`the Board, Decision, 18, do not describe merely embedding some digital
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`information in the video portion of a television transmission signal as being
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`“digital video.” Russ Dec.,¶¶95-96. The Board also ignores unmistakably clear
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`language from the prosecution history: “digital video refers to digitized video
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`4 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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`12
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`signals.” Ex. 1010, 5 (emphasis added). As the Court recognized in the Related
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`Litigation, “[t]he specification and prosecution history do not support [the Board’s]
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`construction of the inclusion of only some digital information in an analog video
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`signal. Rather, the video signal itself is digital.” Ex. 2016, 88 (emphasis added).
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`The specification is clear that, as PMC proposes, the broadest reasonable
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`construction of “digital video signals” is “video signals encoded as discrete
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`numerical values instead of an analog representation.” Ex. 1002, 236:21-26; Russ
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`Dec.,¶97. See also Ex. 1002, 144:48-58 (establishing a decisive dichotomy
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`between analog video and digital video); and Russ Dec.,¶100. Moreover, it is clear
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`from the intrinsic record that the inventors, when using the terms “digital television
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`signals,” “digital video signals,” and “digital audio signals,” intended that the word
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`“digital” modify the words “television signals,” “video signals,” and “audio
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`signals” and that the signals be “digital” – not analog. See, e.g., Ex. 1010, 5
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`(“digital video refers to digitized video signals”)(emphasis added). See also Russ
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`Dec.,¶98.
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`Similarly, even the references cited by Petitioner in the Petition modify the
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`terms “television picture signals,” “television video signals,” and “audio” using,
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`respectively, the words “digitalized” (see Ex. 1006, 1:9-10), “digitized” (see Ex.
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`1004, 1:11-12), and “digital” (see Ex. 1003, 3:65-66) when they intended that the
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`signals be “digital” and not analog.
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`13
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`Finally, contrary to Petitioner’s assertion, the term “digital video signals”
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`had a well-known meaning in the art by July, 1975, well in advance of the priority
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`date of the Challenged Claims. Ex. 2003, 538 (“the principle of digital television
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`involves the use of numbers in the generation, manipulation, recording and
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`transmission of television images”)(emphasis added) and 539 (“In digital
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`television systems, the voltage waveform that is generated by the camera to
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`represent the brightness of a picture element is measured or “sampled” millions of
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`times each second. Each sample is then ‘quantized”: it is assigned the number of
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`the nearest step that the system can resolve”)(emphasis added). See also Russ
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`Dec.,¶¶101-104.
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`Processor / Control Processor
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`E.
`The Board construed “processor” to mean “a device that operates on data.”
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`Decision, 12.
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`This construction is legally erroneous. The Board identifies several citations
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`for the proposition that “controller, 39,” “control processor, 39J,” “controller, 12,”
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`and “signal processor, 200” operate in a “predetermined fashion.” Id., 11.
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`However, the Board overlooks the fact that each such component is described in
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`the specification as being a reprogrammable processor that operates according to
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`instructions. See, e.g., Ex. 1002, 8:35-40, 15:16-48, 77:25-28, 77:62-78:23, 79:1-
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`26, 81:15-36, 119:27-30, 139:3-31, 151:19-26, 206:11-32, 224:59-64, and FIG.
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`14
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`3A; and Ex. 1007, 18:56-63 and 19:12-20. The Board also overlooks the fact that
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`“in a predetermined fashion” does not mean in a fashion that is incapable of being
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`changed or reprogrammed, but is instead employed oppositely. See, e.g., Ex. 1002,
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`19:11-14, 19:29-31, and 19:42-45. See also Russ Dec.,¶109. Further, a device that
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`merely organizes and transfers information is not a processor. Id.,¶110.
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`Accordingly, “processor” should be construed according to its plain and
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`ordinary meaning to a POSITA as “a device that performs operations according to
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`instructions.” Similarly, the broadest reasonable construction of “control
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`processor” is “a digital electronic device or circuit that controls other devices or
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`circuits by operating on control information according to instructions.” In sharp
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`contrast, the Board’s construction of “processor,” which does not require that the
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`processor operate according to instructions, is unreasonably broad and leads the
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`term to cover a host of other devices that a POSITA would never understand to be
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`a “processor.” Id.,¶111.
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`Moreover, the Board’s reliance on its decision in IPR20