UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No.: 8,559,635
`
`
`PETITIONER’S REPLY BRIEF ON REMAND
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No.: 8,559,635
`
`
`PETITIONER’S REPLY BRIEF ON REMAND
`
`
`
`
`
`
`IPR2016-00745 and -01520: Petitioner’s Reply Brief on Remand
`
`PMC admits that the Federal Circuit’s construction of “an encrypted digital
`
`information transmission including encrypted information” in PMC ’091 does not
`
`affect the Board’s finding that claims 4, 7, 13, 18, 20-21, 28-30, and 32-33 are
`
`unpatentable. Paper 53 at 2-3. Instead, in Section I of its responsive brief, Patent
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`Owner argues only that Petitioner’s invalidity argument regarding claim 3 of the
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`’635 patent “fails under the Federal Circuit’s construction of ‘decrypt.’” Id. at 8.
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`But Patent Owner’s argument rests on a false premise—the Federal Circuit did not
`
`reject the Board’s construction of “decrypt” or re-construe that term—and is
`
`inconsistent with the Federal Circuit’s analysis and holding in that appeal.
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`The Federal Circuit construed only one term in PMC ’091—“an encrypted
`
`digital information transmission including encrypted information.” 952 F.3d 1339,
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`1346 (Fed. Cir. 2020). And, notwithstanding Patent Owner’s argument to the
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`contrary, what that Court found decisive in construing this term was the amendment
`
`specifying that it must be “an encrypted digital information transmission,” and the
`
`applicant’s accompanying statement that “the prior art ‘does not teach the encryption
`
`of an entire digital signal transmission.’” Id. at 1345 (emphasis added). The
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`applicant made similar amendments to the ’635 patent, but only to claims 18, 20, 32,
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`and 33—which this Board already held to require all-digital transmissions. FWD-
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`1520 at 27-28.
`
`Patent Owner falsely contends that the Federal Circuit held that the
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`1
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`
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`IPR2016-00745 and -01520: Petitioner’s Reply Brief on Remand
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`“encrypt”/“decrypt” terms are limited to all-digital processes. See Paper 53 at 2, 4-
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`5, 7-8. For instance, Patent Owner purports to quote the Federal Circuit as holding
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`that “‘encryption and decryption require a digital process in the context of the ’091
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`patent.’” Id. at 5 (citing PMC ’091, 952 F.3d at 1345). But there is no such holding
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`in PMC ’091. Rather, in the portion quoted in Patent Owner’s responsive brief, the
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`Federal Circuit describes the applicant’s position during prosecution: “During
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`prosecution, the applicant repeatedly and consistently voiced its position that
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`encryption and decryption require a digital process in the context of the ’091 patent.”
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`952 F.3d at 1345. The Federal Circuit never adopted this position as its own.
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`To the contrary, the Federal Circuit affirmed this Board’s decision
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`invalidating claims 26, 27, and 30 of the ’091 patent—which require “decrypting …
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`encrypted information”—over a prior art reference that disclosed descrambling an
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`analog video signal. Id. at 1346; see also Apple Inc. v. Personalized Media
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`Commc’ns, LLC, IPR2016-00755, Paper 42 at 104-105 (PTAB Sept. 19, 2017).
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`Patent Owner attempts to dismiss this holding, claiming that “nothing about the
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`Federal Circuit’s treatment of those claims remotely suggests that the word
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`‘encrypted’ can apply to anything other than digital information.” Paper 53 at 7-8.
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`But this rhetoric cannot be reconciled with the Federal Circuit’s analysis or ultimate
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`conclusions. In its Final Written Decision in IPR2016-00755, this Board expressly
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`found that the “encrypted information” required by those claims was disclosed in the
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`2
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`IPR2016-00745 and -01520: Petitioner’s Reply Brief on Remand
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`form of an analog “scrambled video (television) signal,” and rejected Patent Owner’s
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`argument that the claims were limited to the “encryption/decryption of digital
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`programming.” Apple, IPR2016-00755, Paper 42 at 104-105. That the Federal
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`Circuit affirmed this decision not only “suggests that the word ‘encrypted’ can apply
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`to anything other than digital information” (Paper 53 at 17-18), it positively confirms
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`that it does.
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`Despite the Board’s rejection of Patent Owner’s argument in the context of
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`claims 26, 27, and 30 of the ’091 patent that only digital programming can be
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`encrypted/decrypted—and the Federal Circuit’s affirmance of that decision—Patent
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`Owner recycles the very same argument regarding claim 3 of the ’635 patent. Id. at
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`8-9 (“Campbell discloses only scrambled analog programming.”). But there is no
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`basis in PMC ’091 for the Board to depart from its decision in FWD-1520 that claim
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`3 of the ’635 patent is unpatentable. The disputed term construed by the Federal
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`Circuit—“an encrypted digital information transmission including encrypted
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`information”—does not appear in claim 3. Ex. 1003 at claim 3. Nor does “digital
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`programming,” or even the word “digital.” Id. Rather, Patent Owner’s argument
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`rests entirely on that claim’s use of the term “decrypt.” Paper 53 at 8-9. Both this
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`Board and the Federal Circuit rejected that argument when it was presented with
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`respect to the ’091 patent, and the Board should do so again here.
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`3
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`IPR2016-00745 and -01520: Petitioner’s Reply Brief on Remand
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`Date: June 3, 2022
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`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel (Reg. No. 55,606)
`Gregory S. Arovas (Reg. No. 38,818)
`Alan Rabinowitz (Reg. No. 66,217)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`marc.sernel@kirkland.com
`garovas@kirkland.com
`arabinowitz@kirkland.com
`
`Attorneys For Petitioner
`
`
`
`4
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`IPR2016-00745 and -01520: Petitioner’s Reply Brief on Remand
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PETITIONER’S
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`REPLY BRIEF ON REMAND was served on June 3, 2022 to the following
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`attorneys of record by electronic transmission:
`
`
`
`Douglas Kline
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, Massachusetts 02110
`dkline@goodwinlaw.com
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`
`
`
`Date: June 3, 2022
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`
`
`
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`
`
`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`Reston, Virginia
`tscott@pmcip.com
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`
`
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel
`
`
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`5
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