Case 2:15-cv-01366-JRG-RSP Document 209 Filed 09/13/16 Page 1 of 26 PageID #: 15301
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:15-cv-1366-JRG-RSP
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`§§§§§§§§§§
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`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC,
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`Plaintiff,
`
`v.
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`APPLE INC.,
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`Defendant.
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`REPORT AND RECOMMENDATION
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`Before the Court is Defendant Apple Inc.’s (“Apple”) Rule 12(b)(6) Motion to Dismiss
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`for Failure to State a Claim. (Dkt. No. 34.) Apple contends that all claims in the four asserted
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`patents are patent-ineligible under § 101. Apple further contends issue preclusion bars Plaintiff
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`Personalized Media Communications, LLC (“PMC”) from asserting the claims in U.S. Patent
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`No. 8,559,635 (the “’635 patent”) and U.S. Patent No. 8,191,091 (the “’091 patent”) are patent-
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`eligible. The Court has considered the arguments and finds that Apple’s Motion to Dismiss (Dkt.
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`No. 34) should be DENIED.
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`RULE 12(b)(6) STANDARD
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`Rule 8(a) requires “a short and plain statement of the claims showing that the pleader is
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`entitled to relief.” Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) permits a party to move to dismiss a
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`claim if the pleader does not meet the conditions of Rule 8(a) and has “fail[ed] to state a claim
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`upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). When considering a Rule 12(b)(6)
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`motion a court must assume that all well-pled facts are true and view them in the light most
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`favorable to the non-moving party. See Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir.
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`2012). The Court must decide whether those facts state a claim for relief that is plausible on its
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`1
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`PMC Exhibit 2131
`Apple v. PMC
`IPR2016-00754
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`face. See Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007). “A claim has facial plausibility
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`when the pleaded factual content allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” Bowlby, 681 F.3d at 217 (quoting Ashcroft v.
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`Iqbal, 556 U.S. 662, 678 (2009)).
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`COLLATERAL ESTOPPEL
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`I.
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`LEGAL STANDARD
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`In a patent infringement case, Fifth Circuit law provides the standard for issue preclusion
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`and Federal Circuit law provides the standard on substantive issues of patent law. See Soverain
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`Software LLC v. Victoria Secret Direct Brand Mgmt., 778 F.3d 1311, 1314 (Fed. Cir. 2015). The
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`Fifth Circuit has held collateral estoppel applies if: “(1) the issue under consideration is identical
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`to that litigated in the prior action; (2) the issue was fully and vigorously litigated in the prior
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`action; (3) the issue was necessary to support the judgment in the prior case; and (4) there is no
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`special circumstance that would make it unfair to apply the doctrine.” Winters v. Diamond
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`Shamrock Chemical Co., 149 F.3d 387, 391 (5th Cir. 1998); see State Farm Mut. Auto Ins. Co. v.
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`LogisticCare Sols., LLC, 751 F.3d 684, 689 (Fed. Cir. 2014) (listing the elements of collateral
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`estoppel).
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`II.
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`ANALYSIS
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`Apple states that collateral estoppel bars PMC from asserting that the claims in the ’635
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`patent and the ’091 patent are patent-eligible under § 101. Apple notes that a Delaware court in
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`Personalized Media Communications, LLC v. Amazon.com, Inc., found that claim 1 of U.S.
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`Patent No. 7,801,304 (the “’304 patent”) was representative of all claims in the ’304 patent. The
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`Delaware court then found that claim 1 of the ’304 patent was patent-ineligible under § 101. See
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`2
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`Personalized Media Communications, LLC v. Amazon.com, Inc., 161 F. Supp. 3d 325, 332–333
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`(D. Del. 2015).
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`Apple contends that claim 1 of the ’304 patent is indistinguishable from the claims in the
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`’635 patent and the ’091 patent in this case. Specifically, Apple point out that “[c]laim 2 of the
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`’635 patent asserted by PMC . . . is virtually word-for-word identical to [] claim 1 of the ’304
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`patent . . . .” (Dkt. No. 34 at 11.) Apple also asserts that claim 1 of the ’304 patent is materially
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`identical to claim 1 of the ’635 patent and claim 13 of the ’091 patent. (See Dkt. No. 34 at 12–
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`14.) Apple contends because claim 1 of the ’304 patent, claim 1 of the ’635 patent, and claim 13
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`of the ’091 patent are similar, the issue of the patent-eligibility of the claims in the ’635 patent
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`and the ‘091 patent were argued and decided by the Delaware court. Apple contends for this
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`reason that collateral estoppel bars PMC from asserting that the ’635 patent and the ’091 patent
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`are directed to patent-eligible subject matter.
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`Under Federal Circuit law, collateral estoppel can apply when an issue is fully argued,
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`finally decided, and necessary to a prior judgment. A ruling on an issue in a prior judgment can
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`have preclusive effect even if the issue is raised in a later case involving different patents and
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`different claims. See Ohio Willow Wood Co. v. Alps S., L.L.C., 735 F.3d 1333, 1342 (Fed Cir.
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`2013). This is because “[i]t is the issues litigated, not the specific claims around which the issues
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`were framed, that is determinative” of whether collateral estoppel should apply. Aspex Eyewear,
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`Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1382 (Fed. Cir. 2013). For example, as to a prior
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`judgement of obviousness, “[i]f the differences between the unadjudicated patent claims and
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`adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel
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`applies.” Ohio Willow, 735 F.3d at 1342.
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`3
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`IPR2016-00754
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`The Court finds that collateral estoppel does not bar PMC from arguing that claim 1 of
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`the ’635 patent and claim 13 of the ’091 patent are patent-eligible under § 101(cid:17) Apple has not
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`shown (cid:87)(cid:75)(cid:68)(cid:87)(cid:3)claim 1 of the ’635 patent and claim 13 of the ’091 patent are materially the same
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`as the claim the Delaware court found ineligible in Personalized Media Communications, LLC
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`v. Amazon.com, Inc. (See Dkt. No. 34 at 12–14.)
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`First, Apple paraphrases the elements of claim 1 of the ’635 patent and contends that they
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`are only “minor wording differences” from the elements of the claim the Delaware court found
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`patent-ineligible. Apple further contends that these “minor differences” make “claim 1 of the
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`’635 patent [] actually broader than invalidated claim 1 of the ’304 patent.” (Dkt. No. 34 at 13.)
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`PMC responds by pointing out that, for example, claim 1 of the ’635 patent, unlike claim of the
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`’304 patent, recites “form[ing] decrypted programming based on said control signal.” (Dkt. No.
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`83 at 11.) PMC contends this element makes a difference in the patent-eligibility analysis
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`because “form[ing] decrypted programming” can “go[] beyond the step of ‘decrypting’ and [can]
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`further require[] additional post-decryption processing, such as reassembly of decrypted
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`information in order to make the ‘decrypted programming’ ready for presentation.” (Dkt. No. 83
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`at 11.)
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`The Court finds Apple has not shown how claim 1 of the ’304 patent and claim 1 of the
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`’635 patent are materially the same. The Delaware court carefully held that claim 1 of the ’304
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`patent was directed to the abstract idea of “decryption.” PMC’s expert contends that claim 1 of
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`the ’635 patent, however, contains a “to form decrypted programming” element which causes the
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`claim to be directed to something other than “decryption.” On a motion to dismiss all factual
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`disputes must be resolved in favor of the plaintiff. Accordingly, the Court finds that Apple has
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`not shown that claim 1 of the ’304 patent and claim 1 of the ’635 patent are materially the same
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`4
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`despite at least this difference. Thus, the Court finds that the Delaware court’s ruling on claim 1
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`the ’304 patent does not collaterally estop PMC from arguing that claim 1 of the ’635 patent is
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`patent-eligible under § 101.
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`Second, Apple provides a high-level description of the elements of claim 13 of the ’091
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`patent and asserts those elements are analogous (cid:87)(cid:82)(cid:3) the elements of claim 1 of the ’304 patent
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`which the Delaware court found patent-ineligible. (Dkt. No. 34 at 13–14.) PMC contends in
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`response that “[c]laim 13 of the ’091 Patent also includes two method steps that are
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`completely absent from claim 1 of the ’304 Patent, and as a result claim 13 ‘recites a
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`significantly different decryption procedure
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`in which
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`the receiver station must first
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`determine how to locate ‘a first decryption key’ and then locate the key accordingly (i.e.,
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`‘based on said step of determining’).’” (Dkt. No. 83 at 10.)
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`The Court finds Apple has not shown how claim 1 of the ’304 patent and claim 13 of the
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`’091 patent are materially the same. The Delaware court held that claim 1 of the ’304 patent was
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`directed to the idea of “decryption.” PMC points out that claim 13 of the ’091 patent recites
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`elements directed to locating a “first decryption key.” A claim directed to “decryption” and one
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`directed to locating a “decryption key” can be seen as related but distinct claims. Since, on a
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`motion to dismiss all factual disputes must be resolved in favor of the plaintiff, the Court finds
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`Apple has not shown that claim 1 of the ’304 patent and claim 13 of the ’091 patent are
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`materially the same despite this difference. The Court finds that the Delaware court’s ruling on
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`the ’304 patent does not collaterally estop PMC from arguing that claim 13 of the ’091 patent is
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`patent-eligible under § 101.
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`Finally, the Court agrees with Apple that claim 1 of the ’304 patent and claim 2 of the
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`’635 patent are nearly identical. The Court, however, finds that it is unable to determine whether
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`5
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`the extra “decryptor” limitation in claim 2 of the ’635 patent meaningfully changes the patent-
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`eligibility analysis of the claim. Thus, the Court finds that the collateral estoppel effect of the
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`Delaware court’s ruling as to claim 2 of the ’635 patent should be denied for now and should be
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`deferred until summary judgment. This is the most prudent course of action since it will allow
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`for a more complete development of the record and, since the Delaware court’s ruling is
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`currently on appeal at the Federal Circuit, potentially allow the Court to receive further guidance
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`on the matter from the higher court.1
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`ELIGIBILITY UNDER 35 U.S.C. § 101
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`I.
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`LEGAL STANDARD
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`Section 101 of the Patent Act lists what is eligible for patent protection. The statute says:
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`“Whoever invents or discovers any new and useful process, machine, manufacture, or
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`composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
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`subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
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`The Supreme Court has held that under § 101 there are three classes of inventions that are
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`patent ineligible. Those classes of inventions are directed to laws of nature, natural phenomena,
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`and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010). In Mayo Collaborative Services
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`v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–97 (2012), the Supreme Court set out a
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`two-step test for distinguishing patents that claim patent-ineligible laws of nature, natural
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`phenomena, or abstract ideas from patents that claim patent-eligible applications of those
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`concepts.
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`The first step of Mayo requires a court to determine if the claims are directed to a law of
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`nature, natural phenomena, or abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
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`1 The claims are reproduced in full in Appendix A to the Report and Recommendation.
`6
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`2347, 2355 (2014). “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In making this determination, the court looks at what
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`the claims cover. See id. at 714 (“We first examine the claims because claims are the definition
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`of what a patent is intended to cover.”). “[T]he ‘directed to’ inquiry applies a stage-one filter to
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`claims, considered in light of the specification,” and asks “whether ‘their character as a whole is
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`directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
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`Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
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`Cir. 2015)).
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`For example, in Bilski, the Supreme Court found patent-ineligible “[c]laims 1 and 4 in
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`petitioners’ application” because the claims merely “explain[ed] the basic concept of hedging, or
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`protecting against risk.” Bilski, 561 U.S. at 611. Similarly, in Ultramercial, the Federal Circuit
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`held patent-ineligible a claim describing the abstract idea of “displaying an advertisement in
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`exchange for access to copyrighted media.” Ultramercial, 772 F.3d at 714. Conversely, in
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`Enfish, the Federal Circuit found patent-eligible a claim that did not describe an abstract idea but
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`described a “data structure designed to improve the way a computer stores and retrieves data in
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`memory.” Enfish, 822 F.3d at 1339.
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`A court applies the second step of Mayo only when it finds that the claims are directed to
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`a law of nature, natural phenomena, or abstract idea in the first step. Alice, 134 S. Ct. at 2355.
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`The second step requires the court to determine if the elements of the claim individually, or as an
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`ordered combination, “transform the nature of the claim” into a patent-eligible application. Id. In
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`determining if the claim is transformed, “[t]he cases most directly on point are Diehr and Flook,
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`two cases in which the [Supreme] Court reached opposite conclusions about the patent eligibility
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`of processes that embodied the equivalent of natural laws.” Mayo, 132 S. Ct. at 1298; see Alice,
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`134 S. Ct. at 2355 (“We have described step two of this analysis as a search for an ‘inventive
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`concept.’”).
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`In Diehr, the Court “found [that an] overall process [was] patent eligible because of the
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`way the additional steps of the process integrated [an] equation into the process as a whole.”
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`Mayo, 132 S. Ct. at 1298 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1918)); see Mayo, 132 S.
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`Ct. at 1299 (“It nowhere suggested that all these steps, or at least the combination of those steps,
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`were in context obvious, already in use, or purely conventional.”). In Flook, the Court found that
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`a process was patent-ineligible because the additional steps amounted to nothing more than
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`“insignificant post-solution activity.” Diehr, 450 U.S. at 191–92 (citing Parker v. Flook, 437
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`U.S. 584, 590 (1978)).
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`In sum, a claim may be patent-eligible when the “claimed process include[s] not only a
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`law of nature but also several unconventional steps . . . that confine[] the claims to a particular,
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`useful application of the principle.” Mayo, 132 S. Ct. at 1300; see DDR Holdings, LLC v.
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`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[T]he ’399 patent’s claims address the
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`problem of retaining website visitors that, if adhering to the routine, conventional functioning of
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`Internet hyperlink protocol, would be instantly transported away from a host’s website after
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`‘clicking’ on an advertisement and activating a hyperlink.”); Bascom Glob. Internet Servs. v.
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`AT&T Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *7 (Fed. Cir. Jun. 27, 2016)
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`(“Filtering content on the Internet was already a known concept, and the patent describes how its
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`particular arrangement of elements is a technical improvement over prior art ways of filtering
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`such content.”). However, a claim remains patent-ineligible if it describes “‘[p]ost-solution
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`activity’ that is purely ‘conventional or obvious.’” Mayo, 132 S. Ct. at 1299.
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`8
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`II.
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`ANALYSIS
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`A.
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`The ’635 patent and the ’091 patent
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`Apple asserts “there is no question that on the merits the asserted claims of the ’635 and
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`’091 patents are invalid under § 101 for claiming ineligible subject matter.” (Dkt. No. 34 at 16.)
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`Apple contends the claims are “directed to the abstract idea of converting information from one
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`format to another (i.e., decrypting information)” and the “additional elements of the claims,
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`individually and in combination, do not recite an inventive concept that ‘transforms’ the nature
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`of the claims into a patent-eligible application.” (Dkt. No. 34 at 17.)2
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`1.
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`The ’635 patent
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`Apple asserts that claim 1 represents all claims in the ’635 patent. Apple states that claim
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`1 itself shows the claim is directed to the abstract idea of “decrypting encrypted information” or
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`“converting information from one format to another.” Apple points out that all of the elements in
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`claim 1 relate to “converting information” between formats. (Dkt. No. 34 at 18.) For example,
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`Apple states that claim 1 requires “receiving encrypted digital programming, detecting a control
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`signal in the programming, decrypting the control signal, decrypting the encrypted programming
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`based on the control signal, and presenting the decrypted programming.” (Dkt. No. 34 at 18.)
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`Furthermore, Apple asserts that claim 1 does not contain an inventive concept which
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`transforms the claim into patent-eligible subject matter. According to Apple, the claim recites
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`“well-understood, routine, and conventional activities commonly used in the industry.” (Dkt. No.
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`34 at 21.) Apple, for example, contends the “decryptor” and “controller” elements of claim 1
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`2 Consistent with the statements above, this part of the Report and Recommendation does not
`apply to claim 2 of the ’635 patent. The eligibility of claim 2 of the ’635 patent is deferred until
`summary judgment.
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`9
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`would have been “standard,” “conventional,” and “well-known in the art” at the time of
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`invention. (Dkt. No. 34 at 21.)
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`Claim 1 of the ’635 patent describes:
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`the decryption of encrypted
`1. A method for controlling
`programming at a subscriber station, said method comprising the
`steps of:
`receiving encrypted digital programming, said encrypted
`digital programming having an encrypted digital
`control signal;
`detecting said control signal;
`passing said control signal to a decryptor that decrypts
`encrypted digital data at said subscriber station;
`decrypting said control signal;
`decrypting said encrypted digital programming to form
`decrypted programming based on said control signal;
`and
`presenting said decrypted programming to a viewer or
`listener.
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`(’635 patent col. 285, l. 59–col. 286, l. 7.)
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`The Court finds the elements of claim 1 show that the claim is directed to a method of
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`using a “control signal” associated with “digital programming” to “decrypt programming”
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`“based on” the “control signal.” (’635 patent col. 285, ll. 62–64; col. 286, ll. 3–4.) The Court
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`finds that claim 1 is not directed to “converting information from one format to another.” (Dkt.
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`No. 34 at 17.)
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`The words in claim 1 show that it is directed to a method of using a “control signal”
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`associated with “digital programming” to “decrypt programming” “based on” the “control
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`signal.” First, the preamble of the claim states the claim is directed to “a method for controlling
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`the decryption of encrypted programming.” The word “controlling” suggests the invention as a
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`whole is directed to “controlling” operations including decryption. Second, and relatedly, the
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`elements of the claim show that the “control signal” is what allows a practitioner of the method
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`10
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`to “control” decryption. The claim recites the “control signal” in five of six steps. Furthermore,
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`all five of the steps describe operations on the “control signal.” Step one recites receiving the
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`“control signal. Step two recites detecting the “control signal.” Step three says to pass the
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`“control signal” to a decryptor. Step four states the “control signal” is decrypted. Finally, step
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`five recites decrypting “digital programming” “based on” the “control signal.” Because all of the
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`key elements in claim 1 address a “control signal” the Court finds that claim 1 is directed to
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`using a “control signal” associated with “encrypted digital programming” to generate “decrypted
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`programming” “based on” the “control signal.”
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`Having found that claim 1 is directed to using a “control signal” associated with “digital
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`programming” to “decrypt programming” “based on” the “control signal,” the Court finds that
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`claim 1 is not directed to an abstract idea under step one of Mayo. Instead, the claim and the
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`specification show that using a “control signal” to control decryption improves the way in which
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`“encrypted digital programming” is delivered. The ’635 patent states that “control signals” can
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`improve the delivery of “encrypted digital programming” in at least two ways.
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`First, claim 1 teaches that a “control signal” should be transmitted with the “digital
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`programming.” The ’635 patent states that transmitting a “control signal” with the programming
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`enhances the reliability of its delivery. According to the patent, a “control signal” that is sent
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`with the programming “cannot become separated inadvertently from the programming and,
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`thereby, inhibit automatic processing. [The signal can] occur at precise times in programming
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`and can synchronize the operation of receiver station apparatus to the timing of programming
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`transmission.” (’635 patent col. 7, ll. 51–56.) That suggests sending a “control signal” with the
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`programming allows for greater reliability which, in turn, increases the processes a “control
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`signal” can control.
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`Second, the claim states that the “digital programming” should be decrypted “based on”
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`the “control signal.” The specification suggests decrypting “digital programming” “based on” the
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`“control signal” is one way to make a receiving device automatically decrypt transmitted data.
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`For example, the specification states that a receiving device can be preprogrammed with the
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`information needed to decrypt data. The receiving device can then be designed so that when it
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`receives a “control signal,” it responds by “automatically [] execut[ing] a decryption sequence at
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`signal processor, 200, that is fully automatic and for which all apparatus are preprogrammed.”
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`(’635 patent col. 75, ll. 18–22; see ’635 patent col. 75, ll. 23–45.) See, e.g., Enfish, 822 F.3d at
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`1337 (“[O]ur conclusion that the claims are directed to an improvement of an existing
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`technology is bolstered by the specification’s teachings that the claimed invention achieves other
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`benefits over conventional databases, such as increased flexibility, faster search times, and
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`smaller memory requirements.”). In sum, the Court finds that claim 1 of the ’635 patent is
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`directed to using a “control signal” associated with “digital programming” to “decrypt
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`programming” “based on” the “control signal.” Accordingly, the Court further finds that this is
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`not an abstract idea under Mayo step 1 and that Apple has not shown the claims in the ’635
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`patent are patent-ineligible under § 101.
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`Even if claim 1 was directed at an abstract idea such as “converting information from
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`one format to another,” the Court finds the additional elements of the claim would transform the
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`claim into a patent-eligible application of that idea. See Alice, 134 S. Ct. at 2355. Principally, the
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`Court finds that the elements of the claim are arranged in a way that Apple has not shown is
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`conventional or generic.
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`The parties should agree that claim 1 of the ’635 patent lists several conventional or
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`generic elements. “Digital programming,” “encryption,” and “decryption” all existed before the
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`priority date of the ’635 patent. Furthermore, the claim contains elements, like “control
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`signal(cid:15)” that may or may not have existed before the claimed invention was conceived. PMC
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`and Apple do not seek a construction for “control signal.” So the Court just notes as a general
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`matter that a “control signal” can be described as a signal that is used to direct “computers to
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`generate and transmit programming” or used to direct “receiver apparatus to operate on the
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`basis of programming and information received at widely separated times.” (See ’635 patent
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`col. 6, ll. 40–46.)
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`Apple has not shown why the conventional and generic claim elements described above
`
`must be arranged as they are recited in claim 1 of the ’635 patent. Apple has not shown that it is
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`conventional or generic to transmit and receive “encrypted digital programming having an
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`encrypted digital control signal.” Likewise, Apple has not shown that “decrypting” “encrypted
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`digital programming” to form “decrypted programming” must always be “based on” a “control
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`signal.” As the Federal Circuit held in Bascom, “an inventive concept can be found in the non-
`
`conventional and non-generic arrangement of known, conventional pieces.” Bascom Glob.
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`Internet Servs. v. AT&T Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *6 (Fed. Cir.
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`Jun. 27, 2016).
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`2.
`
`The ’091 patent
`
`Apple asserts that claim 13 represents all of the claims in the ’091 patent. Apple contends
`
`claim 13 is directed to the abstract idea of “converting information from one format to another,
`
`i.e., decrypting information.” Apple asserts the claim “focuses on the abstract idea of decrypting
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`encrypted information, rather than the physical system or the specific software that processes and
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`decrypts the information.” (Dkt. No. 34 at 18–19.)
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`13
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`IPR2016-00754
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`Furthermore, Apple contends that claim 13 does not recite an inventive concept because
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`it includes steps like “receiving,” “detecting,” and “passing” a signal. Those steps were known in
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`the art before the priority date of the ’091 patent. (Dkt. No. 34 at 22.) Apple also notes that
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`before the priority date, “determining” and “locating” a decryption key was known in the art.
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`(Dkt. No. 34 at 23.)
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`Claim 13 of the ’091 patent recites:
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`13. A method of decrypting programming at a receiver station, said
`method comprising the steps of:
`receiving an encrypted digital information transmission
` including encrypted information;
`detecting in said encrypted digital information transmission
`the presence of an instruct-to-enable signal;
`passing said instruct-to-enable signal to a processor;
`determining a fashion in which said receiver station locates
` a first decryption key by processing said instruct-to
`enable signal;
`locating said first decryption key based on said step of
`determining;
`decrypting said encrypted information using said first
` decryption key; and
`outputting said programming based on said step of
`decrypting.
`
`(’091 patent col. 285, l. 61–col. 286, l. 9.)
`
`The Court finds the elements of claim 13 show that the claim is directed to a method of
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`using an “instruct-to-enable signal” included in “digital information” to locate a “decryption
`
`key” that can decrypt “encrypted information.” (’091 patent col. 285, l. 61–col. 286, l. 9.) The
`
`Court finds that claim 13 is not directed to “converting information from one format to another.”
`
`(Dkt. No. 34 at 17.)
`
`The words in claim 13 show the claim is directed to a method of using an “instruct-to-
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`enable signal” included in “digital information” to locate a “decryption key” that can decrypt
`
`“encrypted information.” Claim 13 directly recites an “instruct-to-enable signal” in three of its
`
`14
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`seven steps and implicitly recites to an “instruct-to-enable signal” in two more steps. Steps two,
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`three, and four recite operations related to the “instruct-to-enable signal.” Step two says to detect
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`the “instruct-to-enable signal.” Step three says to pass the “instruct-to-enable signal.” Step four
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`requires processing the “instruct-to-enable signal” so that the “receiver station” can locate “a first
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`decryption key.”
`
`Furthermore, steps one and five implicitly recite an “instruct to enable signal.” Step one
`
`requires “receiving an encrypted digital information transmission.” This “receiving” step, by
`
`implication, includes “receiving” an “instruct-to-enable signal” because the next step, step two,
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`requires the “instruct-to-enable signal” be “detected” in “said encrypted digital information
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`transmission.” Step five also implicitly includes an “instruct to enable signal.” The step recites
`
`“locating said first decryption key based on said step of determining.” The phrase “said step of
`
`determining” refers back to step four which recites “[d]etermining a fashion in which [a] receiver
`
`station locates a first decryption key by processing said instruct-to-enable signal.” The Court thus
`
`finds the key elements in claim 13 recite operations related to the “instruct-to-enable signal.” The
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`claim is directed to using an “instruct-to-enable signal” in “digital information” to “determine a
`
`fashion” in which a station “locates” a “decryption key” that can then be used to decrypt
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`“encrypted information.”
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`The Court finds that claim 13 is directed to using an “instruct-to-enable signal” included
`
`in “digital information” to “determine a fashion” in which a station “locates” a “decryption key”
`
`that can decrypt “encrypted information.” The Court further finds that the claim is not an abstract
`
`idea under step one of Mayo. Instead, claim 13 describes an improvement to the delivery of
`
`“instruct-to-enable signals” and a technical way to decrypt transmitted information.
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`15
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`Apple v. PMC
`IPR2016-00754
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`First, claim 1 teaches the “instruct-to-enable signal” should be “in” the “encrypted
`
`digital information transmission.” Like the “control signal” of the ’635 patent, the ’091 patent
`
`says that transmitting the “instruct-to-enable signal” in the “information transmission” improves
`
`the reliability of the signal’s delivery. The patent states the improved delivery process increases
`
`the number of functions the “instruct-to-enable signal” can control because the signal can “occur
`
`at precise times in programming and can synchronize the operation of receiver station apparatus
`
`to the timing of programming transmission.” (’091 patent col. 7, ll. 51–56.)
`
`Second, the claim requires a “receiver station” that is able to “locate[] a first decryption
`
`key” by processing the “instruct-to-enable signal.” The specification shows that decrypting
`
`“digital programming” “based on” the “control signal” can be a technical solution for causing a
`
`receiving device to decrypt a transmission. The ’091 patent, for example, teaches an embodiment
`
`employing this solution. The embodiment states that the “instruct-to-enable” signal “causes
`
`controller, 20, to execute particular preprogrammed decrypt-with-J [(a decryption key titled “J”)]
`
`instructions. Among said preprogrammed instructions is key information of J, and said
`
`instructions cause controller, 20,