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 and IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S SUR-REPLY BRIEF ON REMAND
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`Patent Owner.
`
`
`
`Inter Partes Review Nos. IPR2016-00754 and IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S SUR-REPLY BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`Petitioner’s Reply misconstrues the two key aspects of the Federal Circuit’s
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`decision in PMC ’091: (1) the applicant’s prosecution statements on which the
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`Federal Circuit relied and (2) the reason the Federal Circuit upheld the invalidity of
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`claims 26, 27 and 30. Under a correct reading of PMC ’091, the Board’s prior
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`invalidity determination as to at least claim 3 must be reversed.1
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`1.
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` The Federal Circuit held that the phrase “an encrypted digital
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`information transmission” requires an all-digital transmission for one specific
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`reason: The “applicant’s repeated and consistent remarks during prosecution”
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`defined the phrase to have that meaning. 952 F.3d at 1345. And the “repeated and
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`consistent remarks” on which the Federal Circuit relied all focused on the word
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`“encrypted.” As the Federal Circuit put it: “During prosecution, the applicant
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`repeatedly and consistently voiced its position that encryption and decryption
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`require a digital process in the context of the ’091 patent.” Id. at 1345 (emphasis
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`added). And the purpose of the claim amendment was “to clarify [the applicant’s]
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`position that ‘encryption requires a digital signal.’” Id. at 1345-46.
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`Petitioner insists that the Federal Circuit was merely describing the
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`applicant’s position and did not “adopt[] this position as its own.” Paper 55 at 2.
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`That makes no sense. The point of the Federal Circuit’s opinion was to harmonize
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`its construction with the “applicant’s repeated and consistent remarks during
`
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`1 Unless otherwise noted, all record citations are to IPR2016-00754.
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`1
`
`
`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`prosecution.” 952 F.3d at 1345. So when the court described the applicant’s
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`“remarks” as establishing the meaning of encryption and decryption, the court was
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`adopting the applicant’s interpretation of encryption and decryption as the basis for
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`the court’s construction of the full phrase.
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`Petitioner also argues that the key word was “digital,” not “encrypted.” Paper
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`55 at 1. But the repeated remarks on which the Federal Circuit relied did not discuss
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`the word “digital”—they focused on “encrypted.” The claim amendment, too, did
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`not change the claim meaning based on the word “digital,” it simply clarified that
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`“encryption requires a digital signal.” 925 F.3d at 1345-46. The Federal Circuit’s
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`decision thus turned on its conclusion that encryption and decryption must be digital.
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`2.
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`Petitioner’s reliance on the Federal Circuit’s decision to uphold the
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`Board’s invalidity determination as to claims 26, 27, and 30 also ignores the Federal
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`Circuit’s actual reasoning. The Federal Circuit held that the claims that recited “an
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`encrypted digital information transmission” were limited “to all-digital signals,” and
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`hence were not invalid over “prior art that uses mixed analog and digital signals.”
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`952 F.3d at 1346. Claims 26, 27, and 30, however, recite “an information
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`transmission including encrypted information.” As PMC acknowledged in PMC
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`’091, that claim term does “include mixed digital and analog signals within [its]
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`scope.” Id. The “information transmission” need not be all digital, it must merely
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`“includ[e]” encrypted (and hence digital) information. The Frezza prior art reference
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`2
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`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`asserted against these claims both discloses mixed analog and digital information
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`and incorporates by reference two patents (4,982,430 and 4,533,948) that disclose
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`“encrypted communication” of digital information. See IPR2016-00755, Exhibit
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`1006. The Federal Circuit thus upheld the Board’s invalidity determination as to
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`claims 26, 27 and 30 because they did not require an all-digital transmission—not,
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`as Petitioner suggests, because they did not require any digital information at all.
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`3.
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`Petitioner does not dispute that, if encryption and decryption require a
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`digital process in the context of the ’091 patent, then they require a digital process
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`in the context of the ’635 patent, too. That is no surprise, as practically verbatim
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`remarks about the meaning of encryption and decryption appear in the prosecution
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`history of both patents. See Paper 53 at 3-8. Nor does Petitioner dispute that, if
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`“decrypt” requires a digital process, then the Board’s invalidity determination as to
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`at least claim 3 must be reversed. Again, that is no surprise: The only reference
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`Petitioner asserted against claim 3 was Campbell, which is completely silent as to
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`any type of encryption/decryption, and at best discloses scrambled analog video.
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`Petitioner asserts that Patent Owner admits that no claim other than claim 3 is
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`affected by PMC ’091. Paper 55 at 1. That is wrong: As Patent Owner explained
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`in detail, PMC ’091 requires revisiting other claim constructions that failed to
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`account for “repeated and consistent remarks” during prosecution. Paper 53 at 9-19.
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`Petitioner offers no response to any of these arguments.
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`3
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`
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`June 10, 2022
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`
`IPR2016-00754, IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`Respectfully submitted.
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210-1980
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
`
`Counsel for Patent Owner
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`4
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`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`CERTIFICATE OF COMPLIANCE WITH PAGE LIMITS
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`I hereby certify that Patent Owner’s Sur-Reply Brief on Remand on June 10,
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`2022 complies with the page-count limitation because it does not exceed three pages,
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`excluding the cover page, signature block, and the parts of the document exempted
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`by 37 C.F.R. § 42.24.
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`
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`June 10, 2022
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`Respectfully submitted.
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
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`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing document was served
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`electronically via e-mail on this June 10, 2022, as follows:
`
`Marcus Sernel
`Joel Merkin
`Eugene Goryunov
`Gregory Arovas
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`msernel@kirkland.com
`jmerkin@kirkland.com
`egoryunov@kirkland.com
`garovas@kirkland.com
`arabinowitz@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`Counsel for Petitioner
`
`
`
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
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`
`
`
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