UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`Patent Owner.
`
`
`
`Inter Partes Review Nos.
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S RESPONSE BRIEF
`ON REMAND FROM THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`Patent Owner.
`
`
`
`Inter Partes Review Nos.
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S RESPONSE BRIEF
`ON REMAND FROM THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`B.
`
`II.
`
`Page
`INTRODUCTION .................................................................................................... 1
`ARGUMENT ............................................................................................................ 3
`I.
`The Federal Circuit’s construction of “encryption” and
`“decryption” in PMC ’091 applies equally to the ’635 patent,
`which requires upholding the validity of at least claim 3. ................... 3
`A.
`In light of PMC ’091, the Board should construe
`“encrypt” and “decrypt” as limited to a digital-only
`process. ....................................................................................... 3
`Petitioner does not dispute that, under a construction of
`“decrypt” as limited to digital processes, claim 3 is valid. ........ 8
`The Federal Circuit’s holding that the Board failed to account
`for statements made during prosecution requires revisiting other
`dispositive claim constructions. ........................................................... 9
`A. Under a proper construction of “executable instructions”
`and “changing a decryption technique,” claim 13 is
`patentable over Guillou and Chandra. ....................................... 9
`1.
`The prosecution history makes clear that
`“executable instructions” must control the
`operation of a device, not consist merely of data
`processed by the device. ................................................ 10
`The prosecution history makes clear that changing
`a decryption key is not changing a “decryption
`technique.” ..................................................................... 12
`
`
`2.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2.
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`B. Under a proper construction of “encrypted video,” claim
`4 is patentable over Guillou, Seth-Smith, Aminetzah, and
`Bitzer. ....................................................................................... 14
`1.
`Statements made in prosecution show that “video,”
`in the context of this patent, does not include the
`teletext disclosed in Guillou. ......................................... 15
`Seth-Smith, Aminetzah, and Bitzer do not disclose
`“encrypted” video under a proper claim
`construction. ................................................................... 17
`C. Under a proper construction of “processor,” claims 21
`and 28-30 are patentable over Guillou and Aminetzah ........... 17
`III. Under a proper construction of “unaccompanied by any non-
`digital information transmission,” the patent has 1981 priority,
`making claims 18, 20, and 32 patentable over Chandra and
`claim 33 patentable over Chandra and Nachbar. ............................... 20
`CONCLUSION ....................................................................................................... 25
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`-ii-
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`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Personalized Media Commc’ns, LLC v. Apple Inc.,
`2021 WL 2697846 (E.D. Tex. Mar. 14, 2021) ................................. 20, 21, 22, 23
`Personalized Media Communications, LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. 2020) ...................................................................passim
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015) .......................................................................... 12
`
`
`
`iii
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`
`
`’490 patent
`
`’635 patent
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`’091 patent
`
`’304 patent
`
`FWD-754
`
`FWD-1520
`
`’263 application
`
`Davidson
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`Guillou
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`PMC ’091
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`PMC EDTX
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`PMC
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`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`
`GLOSSARY
`
`U.S. Patent No. 4,694,490
`
`U.S. Patent No. 8,559,635
`
`U.S. Patent No. 8,191,091
`
`U.S. Patent No. 7,801,304, reissued as U.S. Patent No.
`RE47,642
`
`IPR2016-00754 Final Written Decision, Paper 41, for
`U.S. Patent No. 8,559,635
`
`IPR2016-01520 Final Written Decision, Paper 38, for
`U.S. Patent No. 8,559,635
`
`Prosecution History of U.S. Patent Application No.
`08/449,263, for U.S. Patent No. 7,801,304, reissued as
`U.S. Patent No. RE47,642
`
`U.S. Patent No. Re. 31,735 to Davidson
`
`U.S. Patent No. 4,337,483 to Guillou
`
`Personalized Media Communications, LLC v. Apple
`Inc., 952 F.3d 1336 (Fed. Cir. 2020)
`
`Personalized Media Commc’ns, LLC v. Apple Inc.,
`No. 15-cv-1366, 2021, Document 553, WL 2697846
`(E.D. Tex. Mar. 14, 2021),
`
`Patent Owner, Personalized Media Communications,
`LLC
`
`iv
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`
`INTRODUCTION
`The Federal Circuit’s decision in Personalized Media Communications, LLC
`
`v. Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020) (“PMC ’091”) controls both the
`
`Board’s construction of the terms “encrypt” and “decrypt” in these proceedings as
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`well as the claim-construction methodology the Board must employ. The Board in
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`PMC ’091 had construed the phrase “an encrypted digital information transmission
`
`including encrypted information” to include analog information. Id. at 1340. In
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`doing so, the Board had refused to consider the applicant’s repeated statements
`
`during prosecution that “encrypt” and “decrypt” require a digital process because
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`those statements did not “rise to the level of disclaimer.” Id. at 1345. The Federal
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`Circuit rejected both “the Board’s legal analysis and [its] conclusion.” Id. As to
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`legal analysis, the Federal Circuit held that an applicant’s “repeated and consistent
`
`remarks during prosecution can define a claim term.” Id. As to conclusion, the
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`Federal Circuit focused on the word “encrypted,” concluding that “the applicant
`
`repeatedly and consistently voiced its position that encryption and decryption
`
`require a digital process.” Id. (emphasis added). The Federal Circuit thus held that
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`the disputed claim term requires an entirely digital signal. Id. at 1346.
`
`The Federal Circuit’s decision is dispositive as to the construction of
`
`“encrypt” and “decrypt” here. The ’635 patent is closely related to the patent at issue
`
`in PMC ’091: The patents are related and share a specification, and the applicants
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`1
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`made practically identical statements during prosecution in the two proceedings.
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`Those prosecution statements are just as “decisive” here as they were in PMC ’091.
`
`Petitioner attempts to dismiss PMC ’091, but it misunderstands the Federal
`
`Circuit’s ruling. Petitioner relies almost entirely on the Federal Circuit’s holding
`
`that the phrase “an information transmission including encrypted information” can
`
`include analog information. 952 F.3d at 1346. But that was only because the first
`
`part of that phrase—“an information transmission”—is not limited to encrypted
`
`information, it only must include such information. Id. at 1338. The court never
`
`suggested that the word “encrypted” could include analog signals. To the contrary,
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`the court in PMC ’091 held that “encryption and decryption require a digital process
`
`in the context of the ’091 patent”—language Petitioner never acknowledges
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`anywhere in its brief. Petitioner does not and cannot explain why the “context” of
`
`the ’635 patent is different in any relevant sense.
`
`Correcting the Board’s prior construction of “decrypt” to align with PMC ’091
`
`undisputedly requires upholding at least the validity of claim 3. The only art
`
`Petitioner asserted against claim 3 is Campbell, and Campbell does not disclose an
`
`all-digital signal. Apple makes no contrary argument.
`
`PMC ’091 is also relevant for a more subtle but no less important reason: its
`
`emphasis on the need to consider the applicant’s “repeated and consistent statements
`
`during prosecution.” 952 F.3d at 1346. The Board’s previous construction of
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`2
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`several other key terms in the ’635 patent failed to account for such statements
`
`during prosecution. As discussed in more detail below, correcting the construction
`
`of those key terms requires upholding the validity of claims 4, 13, 21, and 28-30.1
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`Finally, the Board should revisit its prior conclusion that claims 18, 20, 32,
`
`and 33 are not entitled to a 1981 priority date that predates all of the art Petitioner
`
`asserted against these claims. While reconsidering that issue is not compelled by the
`
`Director’s Order, this Court’s prior priority-date ruling rests entirely on a claim
`
`construction that conflicts with intervening district court precedent.
`
`I.
`
`ARGUMENT
`The Federal Circuit’s construction of “encryption” and “decryption” in
`PMC ’091 applies equally to the ’635 patent, which requires upholding
`the validity of at least claim 3.
`In light of PMC ’091, the Board should construe “encrypt” and
`A.
`“decrypt” as limited to a digital-only process.
`A key claim-construction issue in both PMC ’091 and the two IPRs regarding
`
`the ’635 patent was whether the claim terms “encrypt” and “decrypt” (and similar
`
`terms like “encryption” and “decryption”) are limited to all-digital processes. In
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`both PMC ’091 and the two ’635 IPRs, the same applicant repeatedly made the same,
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`consistent statements during prosecution that encryption and decryption are limited
`
`
`1 Patent Owner is not arguing that PMC ’091 requires reconsideration of the
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`Board’s prior ruling that claim 7 is invalid.
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`3
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`to digital processes. Yet in both cases, the Board construed encryption and
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`decryption as including analog processes, refusing to credit the applicant’s
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`prosecution statements because the Board thought the prosecution history was too
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`“unclear,” FWD-1520 at 27, or “murky,” PMC ’091, 952 F.3d at 1345. The Federal
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`Circuit’s rejection of that construction in PMC ’091, and its holding that the
`
`prosecution statements require limiting encryption and decryption to all-digital
`
`processes, applies equally to the ’635 patent.
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`The phrase at issue in PMC ’091 was “an encrypted digital information
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`transmission including encrypted information.” Id. at 1338. But the dispute focused
`
`on the word “encrypted” within that phrase. Id. at 1339. Specifically, after finding
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`both the claim terms themselves and the specification inconclusive, the Federal
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`Circuit turned to the applicant’s statements during prosecution. Id. at 1345.
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`Rejecting the Board’s refusal to rely on these statements because they did not “rise
`
`to the level of disclaimer,” the court held that “[a]n applicant’s repeated and
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`consistent remarks during prosecution can define a claim term.” Id. at 1345.
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`The court then held that several statements the applicant made during
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`prosecution about “encryption and decryption” were “decisive,” and required
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`construing those terms as limited to “a digital process.” Id. at 1345-46. The claims,
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`as initially introduced, recited “an information transmission including encrypted
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`information.” Id. at 1344. The applicant explained, citing an earlier Board
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`4
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`reexamination decision involving a different PMC patent, that the reference to
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`encryption avoided the analog-only prior art by limiting the claims to purely digital
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`information. Id. (“encryption requires a digital signal” and is “not broad enough to
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`read on [analog] scrambling and unscrambling”). After the examiner rejected these
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`claims, the applicant again “reiterated its reliance on the Board’s prior decision
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`distinguishing encryption and decryption from scrambling and unscrambling”—the
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`former being limited to digital processes, and the latter to analog processes. Id.
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`Faced with a final rejection, the applicant narrowed the claim to “an encrypted
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`digital information transmission including encrypted information.” Id. at 1345. The
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`applicant explained that this amendment was intended to “provide clarification as an
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`earnest attempt to advance the prosecution of the application,” but “in no way affects
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`Applicants’ position that encryption requires a digital signal.” Id. The examiner
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`then allowed the claims.
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`These statements, the Federal Circuit held, decisively established that
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`“encryption and decryption require a digital process in the context of the ’091
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`patent.” Id. The applicant had “repeatedly and consistently” taken that position, and
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`had “never abandoned that position.” Id. “Indeed, the applicant amended the
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`claims—giving rise to the claim term at issue on appeal—only to clarify its position
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`that ‘encryption requires a digital signal.’” Id. at 1345-46.
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`The “context” of the ’635 patent is functionally identical to that of the ’091
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`5
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`patent, and hence requires the same construction of encryption and decryption as
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`limited to digital processes. The applicant in the ’635 prosecution emphasized that
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`the relevant claims “involve[] the use of digital signals either through reference to
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`‘digital’ signals or through reference to ‘decryption,’ and ‘encryption’[,]” terms the
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`Board had made clear in its earlier reexamination “are not broad enough to read on
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`[analog] scrambling and unscrambling.” Ex. 2016, at 10182; compare PMC ’091,
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`952 F.3d at 1344. After the examiner rejected these claims, the applicant again made
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`clear that, because “encryption requires a digital signal,” “the claims involve[] the
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`use of digital signals either through reference to ‘digital’ signals or through reference
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`to ‘decryption’ and ‘encryption.’” Ex. 2016, at 1090; compare PMC ’091, 952 F.3d
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`at 1344. When the examiner remained unconvinced, the applicant again
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`distinguished the prior art because “encryption is a digital process.” Ex. 2016, at
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`1156. The applicant continued to make similar statements—never backing down—
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`until the claims were issued. E.g., Ex. 2016, at 1231 (“encryption and decryption
`
`require a digital signal”), 1294 (same), 1330 (same). Thus, just as the applicant in
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`PMC ’091 “repeatedly and consistently voiced its position that encryption and
`
`decryption require a digital process in the context of the ’091 patent,” 952 F.3d at
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`1345, the applicant here “repeatedly and consistently voiced its position that
`
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`2 Unless otherwise noted, all record citations are to IPR2016-00754.
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`6
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`encryption and decryption require a digital process in the context of” the ’635 patent.
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`Petitioner’s attempts to avoid the Federal Circuit’s decision in PMC ’091 all
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`fail. First, Petitioner argues (at 2-3) that the Federal Circuit’s holding “did not
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`extend to the terms ‘encrypt’ and ‘decrypt’ generally,” emphasizing that the Federal
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`Circuit concluded that neither the “ordinary meaning” of those terms nor the patent’s
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`specification compel a construction limited to digital processes. That completely
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`misses the point. It may be true that, without the applicant’s statements during
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`prosecution, the court in PMC ’091 would not have construed “encrypted” as limited
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`to an all-digital process. But the court held that the applicant’s prosecution
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`statements concerning the meaning of “encryption” and “decryption” did limit those
`
`specific terms to all-digital processes. And, as just discussed, the prosecution history
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`of the ’635 patent contains the same statements by the same applicant concerning
`
`the same claim terms at issue in PMC ’091. Apple does not even try to explain why
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`the statements in the ’635 prosecution are not just as “decisive” as the functionally
`
`identical statements in the PMC ’091 prosecution—nor could it.
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`Second, Petitioner relies heavily on the Federal Circuit’s affirmance of the
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`Board’s unpatentability determination as to the claims that recited “an information
`
`transmission including encrypted information.” E.g., Pet. Br. at 3 (citing PMC ’091,
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`952 F.3d at 1342). But nothing about the Federal Circuit’s treatment of those claims
`
`remotely suggests that the word “encrypted” can apply to anything other than digital
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`7
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`information. Instead, the court simply noted that—as PMC had agreed—this phrase,
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`as a whole, encompassed analog information because “an information transmission”
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`is not limited to digital information, and that “information transmission” need only
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`include, not be limited to, “encrypted information.”3 952 F.3d at 1346.
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`In sum, because the prosecution history of the ’091 and ’635 patents are
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`identical in every relevant sense, the Federal Circuit’s decision that “encrypt” and
`
`“decrypt” require all-digital processes in the context of the ’091 patent applies here.
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`B. Petitioner does not dispute that, under a construction of
`“decrypt” as limited to digital processes, claim 3 is valid.
`Petitioner’s only invalidity argument regarding claim 3—that it is obvious
`
`over Campbell—undisputedly fails under the Federal Circuit’s construction of
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`“decrypt.” Claim 3 requires “decrypt[ing] said unit of programming or said one or
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`more first instruct signals.” Ex. 1003, 286:44-45. Yet Campbell discloses only
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`scrambled analog programming. The Board’s prior decision thus rested entirely on
`
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`3 Specifically, the phrase “an encrypted digital information transmission including
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`encrypted information” requires a transmission that is entirely digital information,
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`and must be at least partially encrypted; the phrase “an information transmission
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`including encrypted information” requires only an information transmission of any
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`sort that includes some digital, encrypted information.
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`8
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`its conclusion that “‘decrypting’ encompasses descrambling,” which, as discussed
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`above, is incorrect in light of PMC ’091. FWD-1520 at 50. Petitioner does not
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`dispute that claim 3 is valid under Patent Owner’s construction of “decrypt”;
`
`Petitioner excludes claim 3 from its list of claims that, according to Petitioner, are
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`invalid even under Patent Owner’s construction of “decrypt.” Pet. Br. 13.
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`II. The Federal Circuit’s holding that the Board failed to account for
`statements made during prosecution requires revisiting other
`dispositive claim constructions.
`The Board’s key legal error in PMC ’091 was to disregard statements made
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`during prosecution that “did not constitute a clear and unmistakable surrender
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`sufficient to rise to the level of disclaimer.” 952 F.3d at 1345. The Board’s prior
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`decision in IPR2016-00754 failed to account for crucial prosecution statements not
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`just in construing “decrypt,” but also in construing other claim terms. After
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`correcting the construction of these terms, the Board should uphold the validity of
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`not just claim 3, but also claims 4, 13, 21, and 28-30. Tellingly, Petitioner offers no
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`response to these arguments, even though Patent Owner’s Petition for Director
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`Review in IPR2016-00754 addressed them at length.
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`A. Under a proper construction of “executable instructions” and
`“changing a decryption technique,” claim 13 is patentable over
`Guillou and Chandra.
`The Board’s prior construction of claim 13 failed to account for the applicants’
`
`statements during prosecution in construing “executable instructions” and “changing
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`9
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`a decryption technique.” Under a construction that properly accounts for those
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`statements, the Board should find claim 13 patentable over Guillou and Chandra.4
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`1.
`
`The prosecution history makes clear that “executable
`instructions” must control the operation of a device, not
`consist merely of data processed by the device.
`A key dispute in the prior proceeding concerned the meaning of “executable
`
`instructions” in claim 13, which recites “decrypting a second of said plurality of
`
`signals on the basis of said changed decryption technique, wherein said decrypted
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`second of said plurality of signals is embedded with executable instructions.” FWD-
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`754, at 32-35 (emphasis added). The Board read “executable instructions” to include
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`data that, when processed, leads the machine to act in a certain way; it thus
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`concluded that Guillou disclosed “executable instructions” by describing “data
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`octets” that, when read by a “character generator,” lead to certain characters and
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`colors being displayed. Id. at 34-35. Patent Owner, by contrast, had argued that the
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`data “octets do not control the character generator to carry out operations” in
`
`Guillou. Id. at 34. “[T]he data octets represent information constituting the service
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`being broadcast,” but fail to constitute “executable instructions” because data fails
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`to “control[] said controllable device” as required by the claim. Id. at 34-35.
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`4 Because the Board previously found claim 13 invalid over Guillou, it did not
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`address Chandra. FWD-1520 at 4.
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`As in PMC ’091, the Board’s construction is irreconcilable with the
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`applicants’ statements during prosecution. The italicized language above was not
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`initially included in application claim 34, which became claim 13. Ex. 2016, at 1318.
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`The examiner rejected the claim without that language, based on prior art—the
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`Davidson reference—that disclosed the transmission of a digital audio signal that
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`would, when received, be played on a speaker. Id., at 1273-74. In response, the
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`applicant added the italicized language. Id., at 1318. The applicant explained that
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`the new language traversed Davidson because, in Davidson, “the program audio is
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`an element to be processed, it is not operable in the controlling of a controllable
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`device.” Id., at 1340. Thus, “[e]ven though the analog conversion means and the
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`inverse encryption means audio process the audio signal for its output to a speaker,
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`Davidson is silent as to controlling the speaker based on executable instructions
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`embedded in an audio signal”—in other words, even though the audio signal
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`determines what sound the speaker will play, that does not make the signal
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`“executable instructions” as required by the claim. Id.
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`There is no relevant difference between the digital audio signal discussed in
`
`the prosecution history and the “data” at issue in Guillou—they are both data to be
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`read, and not executable instructions for how to operate on the data. The Board’s
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`construction thus conflicts with the applicant’s statements during prosecution.
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`Those statements are as “decisive” as to the meaning of “executable instructions” as
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`11
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`the statements at issue in PMC ’091. 952 F.3d at 1346. And, once “executable
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`instructions” is correctly construed, claim 13 is not obvious over Guillou.
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`2.
`
`The prosecution history makes clear that changing a
`decryption key is not changing a “decryption technique.”
`Another crucial dispute regarding claim 13 involved the term “decryption
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`technique”—specifically, whether changing a decryption key qualifies as “changing
`
`a decryption technique.” Petitioner argued that changing the key alone does qualify,
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`and Guillou’s disclosure of decryption using “a new operating key” discloses the
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`claim limitation. Paper 1, at 23-24. The Board’s decision finding claim 13 obvious
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`over Guillou implicitly accepted Petitioner’s argument. FWD-754, at 32-33. Again,
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`the applicants’ statements during prosecution that the Board did not previously
`
`consider—but that it must now consider under PMC ’091—conclusively establish
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`that changing a decryption key is not changing a decryption technique.
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`Specifically, the applicant’s statements regarding the meaning of “decryption
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`technique” in related prosecutions decisively refutes the Board’s decision here. See
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015)
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`(statement during “prosecution of related patents” is relevant even if it “post-dates
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`the issuance of the particular patent at issue”). In the past few years, at least five
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`reexaminations of related patents sharing the same inventors and specifications have
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`amended claims to allow a station or apparatus having “a plurality of decryption
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`techniques.” And they have allowed those claims over Guillou based on the
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`12
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`applicant’s representations that the required “decryption techniques” are not merely
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`decryption keys. For instance, PMC argued in its reexamination request for
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`Application No. 90/014,196 (emphases added):
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`The above prior art discusses encryption and decryption, but is
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`completely silent as to a plurality of decryption techniques at a receiver
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`station. For example, Guillou describes digital decryption, but provides
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`only one decryption technique and fails to show or suggest an instruction
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`based processor in the receiver. Guillou may change the electronically
`
`transmitted “key K” and the physically delivered key “Ci”; however, the
`
`steps taken to use these keys never changes. In fact, Guillou’s decryption
`
`technique is enabled by fixed function hardware. Guillou fails to show or
`
`suggest at least the claimed “plurality of decryption techniques”.
`
`Ex. 2145, at 40.5 The following reexaminations have all allowed claims requiring
`
`“a plurality of decryption techniques” over Guillou, based predominantly on
`
`representations functionally identical to that quoted above.6
`
`
`5 Patent Owner is filing selections from the file histories of these related patents—
`
`all judicially noticeable documents—as Exhibits for the Board’s convenience.
`
`6 All other reexamination requests, except 90/014,223, made almost verbatim
`
`arguments. See Ex. 2146, at 30-31; Ex. 2147, at 30, 34; Ex. 2149, at 23. Application
`
`13
`
`
`
`Application No.
`90/014,196
`90/014,188
`90/014,189
`90/014,223
`90/014,191
`
`U.S. Patent No.
`7,734,251 C1
`8,713,624 C1
`8,587,720 C1
`8,566,868 C1
`8,558,950 C1
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`Examiner
`Charles R Craver
`Jalatee Worjloh
`Yuzhen Ge
`Jalatee Worjloh
`Peng Ke
`
`The prosecution in all of these reexaminations have addressed Guillou’s lack
`
`of anticipation, which supports that the instant claim requirement of “changing a
`
`decryption technique” must be more than changing a decryption key; it must change
`
`a way the decryption is carried out. Simply changing a decryption key does not
`
`change how the decryption is carried out. Chandra uses a single decryption
`
`coprocessor, implying a single decryption technique is used with different keys.
`
`IPR2016-1520, Ex. 1041, at 2:23-30, Fig. 1. Claim 13 is therefore valid over Guillou
`
`and Chandra.
`
`B. Under a proper construction of “encrypted video,” claim 4 is
`patentable over Guillou, Seth-Smith, Aminetzah, and Bitzer.
`Another dispositive dispute was whether “encrypted video” in claim 4
`
`encompasses teletext, which the relevant prior art discloses as text that may flash
`
`
`90/014,223 used support from both specifications in the first office action response
`
`filed on February 22, 2019 as the examiner was already aware of applicants’
`
`statements about Guillou. Ex. 2148, at 5-6, 18-19.
`
`14
`
`
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`and simple, non-moving shapes. FWD-754, at 28-30. That dispute was crucial
`
`because the only art that disclosed “encrypted video”—Guillou—disclosed only the
`
`transmission of encrypted teletext. Id. The remaining references do not disclose
`
`digital video—and hence do not disclose “encrypted” video under PMC ’091.
`
`Because statements made in the ’635 patent prosecution make clear that “video”
`
`does not encompass teletext, the Board should uphold the validity of claim 4.
`
`1.
`
`Statements made in prosecution show that “video,” in the
`context of this patent, does not include the teletext disclosed
`in Guillou.
`The Board previously agreed with Petitioner that Guillou’s disclosure of
`
`teletext disclosed “video” as used in claim 4 based on Guillou’s characterization of
`
`teletext as “Text Video” and Petitioner’s expert’s statement that teletext is “non-
`
`static.” FWD-754 at 29. Petitioner’s expert declaration below makes clear that
`
`teletext is only “non-static” in a very limited sense: the text or simple graphics it
`
`displays can be updated in a cyclic fashion, replaced by a different page, or include
`
`“flashing” characters. Ex. 1001, ¶¶ 43, 141 (citing Ex. 1022, at 3). The Board’s
`
`construction of the term “video” to encompass such teletext suffered from the same
`
`flaw that doomed its construction of “decryption”—it prioritized the extrinsic record
`
`while failing to account for the prosecution of the patent at issue.
`
`Claim 4 was added as application claim 25. Ex. 2016, at 1009. As the
`
`amendment adding claim 25 shows, the claim was copied, almost verbatim, from
`
`15
`
`
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`claim 5 in a prior application—No. 08/449,263 (’263 application), which ultimately
`
`issued as U.S. Patent No. 7,801,304 (’304 patent). Id., at 1020, 1022. The ’263
`
`application makes crystal clear that the word “video” requires “full motion video”—
`
`something akin to a television program—not simply changing or flashing text.
`
`Specifically, claim 5 in the ’263 application initially required that “said unit
`
`of programming further comprises a portion of a television program.” Ex. 2150, at
`
`4. On March 20, 1997, the examiner rejected that limitation under § 102. The
`
`examiner relied on the same Guillou reference at issue in this proceeding, noting
`
`that teletext could be a “portion” of a television signal. Id. at 44-46. On September
`
`22, 1997, the applicants changed “comprises a portion of a television program” to
`
`“includes full motion video.” Id. at 63. And then, when the examiner held that
`
`further amendment was necessary to overcome Guillou, the applicants further
`
`amended the claim to require “encrypted video.” Id. at 111. Nothing in the history
`
`suggests that the change from “full motion video” to “encrypted video” was intended
`
`to broaden the nature of the “video” at issue. Indeed, such a broadening would have
`
`been absurd: The whole point of the amendments was to overcome a rejection based
`
`on Guillou, yet broadening the claim to encompass teletext would have created the
`
`very problem the amendment sought to overcome. Application claim 5 ultimately
`
`issued as dependent claim 15 in the ’304 patent over Guillou.
`
`Because claim 4 in the ’635 patent was copied almost verbatim from the ’263
`
`16
`
`
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`application, the meaning of the word “video” should be the same. The prosecution
`
`history discussed above makes clear that the “video” in claim 4 is “full motion
`
`video” akin to the video “portion” of a television program. That “video” cannot be
`
`Guillou’s “encrypted teletext,” as the language was specifically added to traverse
`
`that very Guillou reference. Accordingly, the Board should abandon its construction
`
`of the term “video” that encompasses Guillou’s teletext, and hence conclude that
`
`claim 4 is not obvious over Guillou.
`
`2.
`
`Seth-Smith, Aminetzah, and Bitzer do not disclose
`“encrypted” video under a proper claim construction.
`The other references on which Petitioner relied—Seth-Smith, Aminetzah, and
`
`Bitzer—do not disclosed “encrypted video,” as required by claim 4. Aminetzah and
`
`Seth-Smith disclose scrambled video using an analog process, and Bitzer is silent as
`
`to scrambling/encrypting. Under PMC ’091, analog video that is scrambled is not
`
`“encrypted.” The Board should thus uphold claim 4 as valid.
`
`C. Under a proper construction of “processor,” claims 21 and 28-30
`are patentable over Guillou and Aminetzah
`Another dispute concerned the word “processor” in independent claim 21—
`
`specifically, whether it means any “device that operates on data,” as the Board
`
`concluded, or only a device that performs operations according to reprogrammable
`
`instructions, as Patent Owner argued. FWD-754, at 18. This dispute
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