`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-00754
`Patent No.: 8,559,635
`
`
`PETITIONER’S OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`The Substitute Claims Do Not Satisfy § 101. .............................................. 1
`
`The Substitute Claims Do Not Satisfy § 112. .............................................. 5
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1) and (2). ...................... 5
`B.
`Substitute Claims 34 and 35 Are Not Supported by the
`Specification. ......................................................................................... 7
`Substitute Claim 36 Is Not Supported by the Specification. ................ 9
`Substitute Claims 37-40 Are Not Supported by the
`Specification ........................................................................................ 11
`
`C.
`D.
`
`III. Substitute Claims 34-40 Would Have Been Obvious to a Person of
`Ordinary Skill In the Art ............................................................................ 13
`A.
`PMC Failed to Show That Its Substitute Claims Are Patentable ........ 13
`B.
`Claim Construction ............................................................................. 14
`C.
`The Substitute Claims Are Unpatentable Over Guillou ...................... 14
`1.
`Substitute Claim 34 Is Obvious in Over Guillou ...................... 14
`2.
`Substitute Claim 35 Is Obvious Over Guillou .......................... 16
`3.
`Substitute Claim 36 Is Obvious Over Guillou .......................... 17
`4.
`Substitute Claims 37-39 Are Obvious Over Guillou ................ 18
`5.
`Substitute Claim 40 Is Obvious Over Guillou .......................... 19
`Substitute Claims 37-40 Are Unpatentable Over Aminetzah ............. 19
`1.
`Substitute Claims 37-39 Are Obvious Over Aminetzah........... 19
`2.
`Substitute Claim 40 Is Obvious Over Aminetzah ..................... 21
`The Substitute Claims Are Unpatentable Over Seth-Smith ................ 21
`1.
`Claim 2 Is Anticipated By Seth-Smith ..................................... 22
`2.
`Substitute Claim 34 Is Obvious Over Seth-Smith .................... 22
`3.
`Substitute Claim 35 Is Anticipated by Seth-Smith ................... 24
`4.
`Substitute Claim 36 Is Obvious Over Seth-Smith .................... 24
`
`D.
`
`E.
`
`IV. PMC Has Not Met Its Burden. ................................................................... 25
`
`
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) .............................................................................. 4
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct 2347 (2014) .............................................................................................. 3
`
`B.E. Tech., L.L.C. v. Google, Inc.,
`No. 2015-1827, 2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) .............................. 6
`
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) .............................................................................. 4
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .............................................................................. 3
`
`Facebook, Inc. v. EveryMD LLC,
`IPR2014-00242, 2015 WL 2268210 (P.T.A.B. May 12, 2015) .........................5, 6
`
`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995) .................................................................................. 9
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016) ..........................................................................3, 4
`
`MasterImage 3D, Inc. v. RealD Inc.,
`IPR2015-00040, 2015 WL 4383224 (P.T.A.B. July 15, 2015) ............................ 14
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 13
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, 2013 WL 8352845 (P.T.A.B. June 3, 2013) ...................... 5, 6, 8
`
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013) .............................................................................. 7
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES (CONT'D)
`
`Page(s)
`
`PMC v. Amazon.com, Inc.,
`161 F.Supp.3d 325 (D. Del. 2015),
`aff’d Case No. 2015-2008, 2016 WL 7118532 (Fed. Cir. Dec. 7, 2016) ...........1, 2
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .............................................................................. 9
`
`Reiffin v. Microsoft Corp.,
`214 F.3d 1342 (Fed. Cir. 2000) .............................................................................. 8
`
`Respironics, Inc. v. Zoll Med. Corp.,
`IPR2013-00322, 2014 WL 4715644 (P.T.A.B. Sept. 17, 2014) ........................6, 7
`
`Respironics, Inc. v. Zoll Med. Corp.,
`No. 2015–1485, 2016 WL 4056094 (Fed. Cir. July 29, 2016) ............................... 6
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ............................................................................3, 4
`
`Statutes
`
`37 C.F.R. § 42.121(b)(1) ........................................................................................5, 6
`
`ii
`
`
`
`
`
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`PMC’s Contingent Motion to Amend the claims of the ’635 patent does not
`
`come close to satisfying the legal requirements for such a motion. The Motion is
`
`filled with conclusory statements, unsupported by any citations to the evidence or
`
`expert testimony, and fails on any one of multiple independent grounds. First,
`
`PMC does not meet its burden to show that the Substitute Claims are directed to
`
`patent-eligible subject matter, despite the fact that the Federal Circuit has affirmed
`
`the invalidity of dozens of highly-related PMC claims on this basis. Second, PMC
`
`does not establish that the Substitute Claims, each of which add multiple
`
`limitations, find support in the specification to satisfy 35 U.S.C. § 112. Third, PMC
`
`does not analyze the prior art with any specificity, failing even to distinguish the
`
`references on which this IPR was instituted, let alone additional relevant prior art.
`
`For any one of these reasons, PMC’s Motion must be denied.
`
`I.
`
`THE SUBSTITUTE CLAIMS DO NOT SATISFY § 101.
`
`Not only must PMC establish the Substitute Claims claim patent-eligible
`
`subject matter under § 101, but it must do so against the backdrop of dozens of
`
`related and highly-similar PMC claims being found invalid on this basis by the
`
`Federal Circuit. A Delaware district court, in a decision affirmed by the Federal
`
`Circuit, found the claims of seven PMC patents invalid under § 101. PMC v.
`
`Amazon.com, Inc., 161 F.Supp.3d 325 (D. Del. 2015), aff’d Case No. 2015-2008,
`
`2016 WL 7118532 (Fed. Cir. Dec. 7, 2016). One of these patents in particular, U.S.
`
`
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`Patent No. 7,801,304, contained very similar claims and limitations to those at
`
`issue here, and PMC does not and cannot explain how the Substitute Claims would
`
`merit a different result.
`
`The representative claim of the ’304 patent describes a method for
`
`controlling the decryption of programming, including steps of: (1) detecting an
`
`encrypted control signal in a received transmission, (2) passing the control signal
`
`to a decryptor and decrypting it, and (3) decrypting programming using the
`
`decrypted control signal. PMC, 161 F.Supp.3d at 332-33. The limitations of the
`
`’304 patent are nearly identical to those of claim 2 of the ’635 patent, from which
`
`substitute claims 34 and 35 depend. Substitute claims 36-40 do not identify a
`
`control signal, but all identify a first set of signals/materials and decrypt a second
`
`set of signals/materials based upon said first set. Mot. at A-1-A-4. The Delaware
`
`court held, and the Federal Circuit affirmed, that the ’304 patent “recites the
`
`abstract idea of decryption,” which, as a mathematical process used to manipulate
`
`information, is not patent eligible. PMC, 161 F.Supp.3d at 333. The Delaware
`
`court also found there was no inventive concept that would transform the abstract
`
`idea of encryption into patent-eligible subject matter. Id. at 333-34.
`
`The Substitute Claims are strikingly similar to the claims of the ’304 patent,
`
`and fail to satisfy § 101 for the same reasons. The Substitute Claims are directed to
`
`the same abstract idea as those invalidated in the ’304 patent—decrypting a
`
`2
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`transmission. The first step of a § 101 analysis is to consider the “character as a
`
`whole” of the claims to determine whether they are directed to an abstract idea.
`
`Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
`
`Given the substantial overlap in the limitations of the Substitute Claims with those
`
`of the ’304 patent, it is apparent that the “character as a whole” of both sets of
`
`claims is directed to the same abstract idea of decrypting a transmission.
`
`The specific limitations of the Substitute Claims not present (at least
`
`verbatim) in the ’304 patent do not change the analysis. For example, the new
`
`limitations in the Substitute Claims about generically storing a unique digital code
`
`does not change the “character as a whole” of the Substitute Claims. And changing
`
`the material decrypted from programming to executable instructions to control a
`
`device, as in claim 36, does not change the analysis because limiting an abstract
`
`idea to a particular technological field does not render it patent-eligible. See Alice
`
`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct 2347, 2358 (2014); Elec. Power, 830
`
`F.3d at 1354; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
`
`The Substitute Claims are comparable to a claim at issue in Intellectual
`
`Ventures I LLC v. Symantec Corp. as well. In Symantec, the claim recited a post
`
`office that: (1) received an email (transmission); (2) processed the email to locate
`
`the business rule(s) to apply (decryption key); and (3) applied the business rule to
`
`the email. 838 F.3d 1307, 1316-17 (Fed. Cir. 2016). The Federal Circuit held that
`
`3
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`the claim was a way of organizing human activity, an abstract idea. Id. at 1318.
`
`The Substitute Claims are also similar to the claims at issue in Digitech Image
`
`Techs., LLC v. Elecs. for Imaging, Inc., cited by the Delaware court in its § 101
`
`ruling on the ’304 patent, because they use the mathematical algorithm of
`
`encryption “to manipulate existing information to generate additional information.”
`
`758 F.3d 1344, 1351 (Fed. Cir. 2014) (claims directed to the abstract idea of taking
`
`two data sets and combining them into a single data set not patent-eligible).
`
`Like the claims of the ’304 patent, the Substitute Claims do not include an
`
`inventive concept that would transform the abstract idea to which they are directed
`
`into patent-eligible subject matter. To include an inventive concept, the Substitute
`
`Claims must do “significantly more than simply describe [the] abstract method”
`
`and include “additional features” that are more than “well-understood, routine,
`
`conventional activity.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
`
`1253, 1262 (Fed. Cir. 2016); Ultramercial, 772 F.3d at 715. The Substitute Claims
`
`do not meet either of these requirements.
`
`PMC does not even attempt to argue that its claims include anything more
`
`than conventional components, which is what the specification describes. E.g., Ex.
`
`1003 at 143:3-11, 146:62-148:4, 161:9-15. And PMC does not argue that any of
`
`the additional limitations of the Substitute Claims add an inventive concept. Mot.
`
`at 14-17. Nor could it. The Substitute Claims merely set forth steps that describe
`
`4
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`the abstract method. Similar to the affirmed Delaware court’s analysis finding no
`
`inventive concept, the Substitute Claims merely describe the abstract method of
`
`decrypting a transmission. The Substitute Claims are not directed to patent-eligible
`
`subject matter, and PMC has not met its burden to show otherwise.
`
`II. THE SUBSTITUTE CLAIMS DO NOT SATISFY § 112.
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1) and (2).
`A motion to amend must set forth “[t]he support in the original disclosure of
`
`the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1). A
`
`“mere citation in a table to various portions of the original disclosure, without any
`
`explanation why a person of ordinary skill in the art would have recognized that
`
`the inventor possessed the claimed subject matter as a whole, is inadequate to
`
`satisfy” this requirement. Facebook, Inc. v. EveryMD LLC, IPR2014-00242, 2015
`
`WL 2268210, at *7 (P.T.A.B. May 12, 2015); see also Nichia Corp. v. Emcore
`
`Corp., IPR2012-00005, 2013 WL 8352845, at *2 (P.T.A.B. June 3, 2013).
`
`The portion of PMC’s Motion purportedly addressed to “support for the
`
`substitute claims” offers nothing of the sort. Not once in the three pages of this
`
`section does PMC quote even a single limitation of the Substitute Claims. Mot. at
`
`9-13. Instead, PMC offers broad generalizations regarding the allegedly relevant
`
`embodiments of the ’413 Application that issued as the ’635 Patent. This approach
`
`“amount[s] to little more than an invitation to [the Board] … to peruse the cited
`
`5
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`evidence and piece together a coherent argument for them.” B.E. Tech., L.L.C. v.
`
`Google, Inc., No. 2015-1827, 2016 WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016)
`
`(quoting Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, 2014 WL 4715644,
`
`at *13 (P.T.A.B. Sept. 17, 2014) (vacated and remanded on other grounds, No.
`
`2015–1485, 2016 WL 4056094, at *1 (Fed. Cir. July 29, 2016))).
`
`PMC directs the Board to the declaration of Timothy Dorney for “[t]he
`
`specific support of each of the amended claims.” Mot. at 12. Dr. Dorney is an
`
`employee of PMC who is not an expert in the field and was not a PHOSITA at the
`
`time of the invention. Ex. 1052 at 6:22-7:3, 118:6-121:6. His Declaration provides
`
`nothing more than a chart with quotes from the specification that allegedly support
`
`the Substitute Claims. Ex. 2130. This type of chart is properly included in an
`
`appendix, not an expert declaration. 37 C.F.R. § 42.121(b)(1). More importantly,
`
`the Declaration fails to explain how the application supports the Substitute Claims,
`
`how a PHOSITA would understand the quoted sections, or how he or she would
`
`recognize from those quotations that the inventor possessed the subject matter of
`
`the Substitute Claims. This is exactly the type of disclosure the Board has found
`
`insufficient to support a motion to amend. Facebook, 2015 WL 2268210, at *7;
`
`Nichia, 2013 WL 8352845, at *2 (“merely indicating where each claim limitation
`
`individually described in the original disclosure may be insufficient to demonstrate
`
`support for the claimed subject matter as a whole”) (emphasis in original).
`
`6
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`The Board has also held that extensive modifications “require[] a more
`
`detailed showing of how each limitation of the proposed claim not only is
`
`disclosed in the original and benefit applications, but also is disclosed in
`
`combination with all of the other claim limitations.” Respironics, 2014 WL
`
`4715644, at *13 (citing Novozymes A/S v. DuPont Nutrition Biosciences APS, 723
`
`F.3d 1336, 1349 (Fed. Cir. 2013)). This requirement applies here, where the
`
`Substitute Claims contain extensive changes. Claim 4 went from just 12 words to
`
`111 in its replacement claim, a difference of 99 words. Similarly, claim 36 has 117
`
`additional words and claim 37 has 107 additional words. Mot. at A-1-A-4.
`
`B.
`
`Substitute Claims 34 and 35 Are Not Supported by the
`Specification.
`
`Substitute claims 34 and 35, which depend from claim 2, are not supported
`
`by the ’413 Application under § 112. Ex. 1055 ¶¶ 23-24. First, claim 2 recites
`
`“passing … the decrypted control signal portion to a second decryptor.” PMC has
`
`identified “2nd-WSW-program-enabling-message (#7)” as the “first encrypted
`
`digital control signal portion” (Ex. 2130 at 31-32; Ex. 1052 at 94:9-13), “decryptor
`
`39K” as the “first decryptor” (Ex. 2130 at 31-32; Ex. 1052 at 96:14-17), and
`
`“decryptor 231” as the “second decryptor.” (Ex. 2130 at 31-32; Ex. 1052 at 97:18-
`
`20). But no part of 2nd-WSW-program-enabling-message (#7) is passed to
`
`decryptor 231 after it is decrypted in decryptor 39K. Ex. 1052 at 99:9-15.
`
`Second, claim 35 requires “detect[ing], in a transmission channel including
`
`7
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`said programming, a second control signal portion used to decrypt the first control
`
`signal portion.” PMC cites portions of the specification which describe that
`
`“decryption key J” is used to decrypt the encrypted information of 2nd-WSW-
`
`program-enabling-message (#7). Ex. 2130 at 53. But decryption key J is not
`
`“detect[ed] in a transmission channel including said programming.” Rather,
`
`“selected subscriber stations … are preprogrammed with decryption key J.” Ex.
`
`2135 at 181 ll. 5-10; see also id. at 182 ll. 18-21, 273 ll. 19-30.
`
`Because Substitute claims 34 and 35 are not supported by the written
`
`description of the ’413 Application, the question of whether those claims are
`
`supported by the ’510 Application is moot. Citations to the ’510 Application are
`
`relevant for priority, as addressed by 37 CFR § 42.121(b)(2), “and not for the
`
`written description support for the proposed substitute claims” required by 37 CFR
`
`§ 42.121(b)(1). Nichia Corp., 2013 WL 8352845, at *2 (citing Reiffin v. Microsoft
`
`Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000) (holding that “the district court
`
`erred in looking to the [grandparent application] for support under § 112”)).
`
`Regardless, claims 34 and 35, asserted as substitutes for claims 4 and 7, are
`
`not supported by the ’510 Application. Ex. 1055 ¶ 25. This Board recently held
`
`that “the 1981 ’490 patent does not support at least claims 3, 4, and 7 of the ’635
`
`patent.” Ex. 1038 at 10. The Board found that PMC “impermissibly broadened the
`
`scope of the claim term ‘programming’ in the ’635 patent, relative to the disclosure
`
`8
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`of the term in the ancestor 1981 ’490 patent.” Id. Indeed, “programming” is
`
`defined in both the ’510 and ’413 Applications. The ’510 Application defines
`
`programming as “everything transmitted over television or radio intended for
`
`communication of entertainment or to instruct or inform” (Ex. 2050 at 1:7-9),
`
`whereas the ’413 Application defines it as “everything that is transmitted
`
`electronically to entertain, instruct or inform …” (Ex. 2135 at 38 ll. 6-10).
`
`35 U.S.C. § 120 permits a patent application to rely on the filing date of an
`
`earlier application “only if the disclosure of the earlier application provides support
`
`for the claims of the later application, as required by 35 U.S.C. § 112.”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)
`
`(quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). Because the broader ’413
`
`Application definition of “programming” expands the scope of the subject matter,
`
`claims 34 and 35 are not entitled to the 1981 priority date as a matter of law. See
`
`PowerOasis, 522 F.3d at 1310-11 (where a claim term would receive a broader or
`
`more inclusive claim construction in view of the later specification, the claim is not
`
`entitled to the benefit of the earlier filing date).
`
`Substitute Claim 36 Is Not Supported by the Specification.
`
`C.
`Substitute claim 36 is not supported by the ’413 Application under § 112.
`
`Ex. 1055 ¶¶ 26-28. First, substitute claim 36 recites “changing a decryption
`
`technique in response to at least a first of said plurality of signals” and “decrypting
`
`9
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
`
`a second of said plurality of signals on the basis of said changed decryption
`
`technique.” The portions of the specification cited by PMC do not describe such
`
`first and second signals. Ex. 2130 at 73-74. Rather, the encrypted portion of the
`
`first message of example #4, while still encrypted, instructs the receiver station to
`
`decrypt that same encrypted portion with decryption key Z. That is, the signal that
`
`PMC has identified as causing a change in decryption technique and the signal
`
`decrypted on the basis of that changed decryption technique are one and the same.
`
`Second, substitute claim 36 recites “said receiver station is capable of
`
`initiating a transmission of digital data to a remote station…, said digital data
`
`indicative of successful operation of said decrypting.” Nothing in the disclosures
`
`cited by PMC describes a transmission indicative of the successful decryption of
`
`the encrypted portion of the first message of example #4. Ex. 2130 at 74-77, 86-91.
`
`Because substitute claim 36 is not supported by the written description of the
`
`’413 Application, support in the ’510 Application is moot. See Section II.B supra.
`
`Regardless, claim 36, asserted as a substitute for claim 13, is not supported by the
`
`’510 Application. This Board recently found that “the 1981 ’490 patent does not
`
`support at least claim 13 of the ’635 patent.” Ex. 1038 at 16. Specifically, the
`
`Board found that PMC failed to show the 1981 specification supports the limitation
`
`which recites “said decrypted second of said plurality of signals is embedded with
`
`executable instructions.” Id. Though PMC cites numerous unrelated portions of the
`
`10
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`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`’510 Application, none of these describe executable instructions which have been
`
`embedded in an encrypted signal. See Ex. 2130 at 74-83.
`
`Substitute Claims 37-40 Are Not Supported by the Specification
`
`D.
`Substitute claim 37 and its dependents are not supported by the ’413
`
`Application under § 112. Ex. 1055 ¶¶ 29-33. First, claim 37 recites “receiving a
`
`transmission at a receiver station comprising encrypted materials,” “decrypting
`
`under first processor control a first portion of said encrypted materials in said
`
`transmission,” and “decrypting under second processor control a second portion of
`
`said encrypted materials.” PMC has identified “2nd-WSW-program-enabling-
`
`message #7” as the claimed “first portion of said encrypted materials” (Ex. 2130 at
`
`106-08; Ex. 1052 at 109:5-14) and the encrypted video of the Wall Street Week
`
`program as the claimed “second portion of said encrypted materials (Ex. 2130 at
`
`113-15; Ex. 1052 at 111:20-112:12).
`
`But 2nd-WSW-program-enabling-message #7 and the encrypted video of the
`
`Wall Street Week program are not received in the same transmission. The
`
`specification explains that the encrypted digital video of the Wall Street Week
`
`program is transmitted to subscribers by intermediate transmission stations
`
`“commencing at a particular 8:30 PM time on a particular Friday night.” Ex. 2135
`
`at 288 ll. 30 - 289 ll. 21). By contrast, the 2nd-WSW-program-enabling-message
`
`(#7) is embedded in and transmitted as part of a transmission of “analog television
`
`11
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`

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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`information” “before said 8:30 PM time.” Id. at 300 ll. 10-18 (emphasis added).
`
`Given this, 2nd-WSW-program-enabling-message (#7) and the encrypted video of
`
`the Wall Street Week program do not comprise first and second portions of “a
`
`transmission … comprising encrypted materials.”
`
`Second, substitute claim 37 recites “wherein said receiver station comprises
`
`memory in which a first unique digital code capable of identifying said first
`
`processor is stored.” In support of this limitation, PMC cites disclosure of a
`
`“unique digital code at ROM, 21, that identifies signal processor, 200, and the
`
`subscriber station of FIG. 4 uniquely.” Ex. 2130 at 115-16. PMC cites this same
`
`disclosure in support of substitute claim 34’s requirement of “a first unique digital
`
`code capable of identifying a signal processing apparatus.” Here, however, the
`
`claim requires that the unique digital code identify “said first processor” not “a
`
`signal processing apparatus.” But as is clear from the cited disclosure, the unique
`
`digital code “identifies signal processor, 200,” not controller 20 which PMC has
`
`identified as the “first processor.” Ex. 2130 at 106-08; Ex. 1052 at 108:16-109:4.
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`Because the substitute claims 37-40 are not supported by the written
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`description of the ’413 Application, support in the ’510 Application is moot. See
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`Section II.B supra. Regardless, substitute claim 37 and its dependents are not
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`supported by the ’510 Application. Claim 37 recites “wherein said transmission
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`further comprises unique digital codes identifying a data unit and a source of said
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`data unit [and] said unique digital codes are stored at said receiver station.” The
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`’510 Application fails to describe that codes identifying a data unit or its source are
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`stored a receiver station. Instead, PMC relies on an inherency argument, stating
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`that “[m]onitoring for these codes inherently means they are stored at the receiver
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`station.” Ex. 2130 at 119-20. But “monitoring” carries no such implication.
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`III. SUBSTITUTE CLAIMS 34-40 WOULD HAVE BEEN OBVIOUS TO
`A PERSON OF ORDINARY SKILL IN THE ART
`A.
`PMC bears the burden of establishing the patentability of the Substitute
`
`PMC Failed to Show That Its Substitute Claims Are Patentable
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`Claims, including why the claims are patentable over the prior art. Microsoft Corp.
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`v. Proxyconn, Inc., 789 F.3d 1292, 1304-08 (Fed. Cir. 2015). Yet PMC’s Motion
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`entirely fails to identify or analyze any prior art from the six year time period
`
`immediately preceding the 1987 priority date of the Substitute Claims. Instead,
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`PMC incorrectly assumes that the Substitute Claims are entitled to a 1981 priority
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`date. As the PTAB found in IPR2016-01520, most claims of the ’635 patent are
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`not entitled to the 1981 priority date, and all Substitute Claims include the same
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`limitations that resulted in the PTAB finding a lack of priority to the 1981
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`specification. Ex. 1038 at 7-18.
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`Even for the limited set of prior art PMC did identify, PMC’s analysis is
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`woefully insufficient. It is filled with conclusory statements, unsupported by
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`citations to evidence or expert testimony, and does not analyze the prior art with
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`any specificity, not even distinguishing the references on which this IPR and
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`related IPRs were instituted. It is PMC’s—not Apple’s—burden to show that the
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`Substitute Claims are patentable over the prior art, and PMC has completely failed
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`to do so. MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, 2015 WL 4383224
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`(P.T.A.B. July 15, 2015) (precedential).
`
`B. Claim Construction
`The terms identified by PMC do not need to be construed in connection with
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`PMC’s Motion, as they have no recognizable impact on the prior art analysis and
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`should be given their plain and ordinary meanings. Apple disputes that PMC’s
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`construction of “a unique digital code capable of identifying a signal processing
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`apparatus” is the BRI because the term recites that the code is “capable of”
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`identifying, whereas PMC’s construction suggests a more affirmative requirement.
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`Apple also disputes that PMC’s construction of “a unique digital code identifying a
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`source of said [programming/data unit]” is the BRI because PMC’s construction
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`states that the code must identify “the producer” of programming and that it “does
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`not, itself, identify the programing,” but these limitations are neither supported by
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`the claim language nor required by the specification.
`
`C. The Substitute Claims Are Unpatentable Over Guillou
`1.
`Substitute Claim 34 Is Obvious in Over Guillou
`
`The limitations added in substitute claim 34 are disclosed or rendered
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`obvious by Guillou (Ex. 1006) in view of Sechet (Ex. 1045) and Campbell (Ex.
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`1023). Substitute claim 34 requires that “said programming” also include
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`“encrypted audio.” Sechet discloses applying the double key encryption scheme of
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`Guillou to control access to television programming beyond teletext/viewdata,
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`including digital audio. Ex. 1045 at 2:1-32, 3:43-51; Ex. 1055 ¶¶35, 37.
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`Substitute claim 34 also adds that “said subscriber station comprises
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`memory in which a first unique digital code capable of identifying a signal
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`processing apparatus is stored.” Campbell describes storing “codes … which
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`uniquely identify converter 40” in ROM 420. Ex. 1023 at 15:12-18; Ex. 1055 ¶38.
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`Substitute claim 34 also requires “signal processing apparatus at least in part
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`controlled by operating instructions that are capable of being revised.” Campbell
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`discloses that the subscriber converter box is controlled by a microprocessor unit
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`programmed with operating instructions, which are capable of being revised. Ex.
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`1023 at 14:29-15:22; Ex. 1055 ¶39. Guillou independently discloses this limitation.
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`Ex. 1006 at 16:63-17:18, 20:53-21:14; Ex. 1055 ¶40.
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`Substitute claim 34 also requires “a second unique digital code identifying a
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`source of said programming” and that “said second unique digital code is stored at
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`said subscriber station.” Campbell discloses receiving and storing a channel
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`number code which uniquely identifies the source of programming. Ex. 1023 at
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`20:28-21:4, Fig. 11; Ex. 1055 ¶41.
`
`Substitute claim 34 further requires that “said subscriber station is capable of
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`communicating said second unique digital code to a remote site through a digital
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`information
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`transmission unaccompanied by any non-digital
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`information
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`transmission.” Campbell’s system enables two-way communications between
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`converter boxes and the cable head end subsystem. Ex. 1023 at 4:19-24, 11:3-8,
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`17:9-32, 26:14-28:2; Ex. 1055 ¶¶42-44. The system is capable of communicating
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`digital data, including the channel number code, from the converter to the head end
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`unaccompanied by any non-digital information transmission. Id.
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`It would have been obvious to combine the teachings of Guillou, Sechet, and
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`Campbell. Ex. 1055 ¶¶45-48. Both Guillou and Sechet disclose that their common
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`access control scheme is applicable to two-way, interactive systems, such as
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`Viewdata. Ex. 1006 at 1:10-20, 21:23-28; Ex. 1045 at 1:47-68; see also Ex. 1030 at
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`11, 17. Campbell discloses a complimentary two-way system used to provide
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`multiple services such as those described in Guillou and Sechet. Ex. 1055 ¶¶47-48.
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`2.
`
`Substitute Claim 35 Is Obvious Over Guillou
`
`Substitute claim 35 has been amended to require that “said subscriber station
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`stores data including information particular to a customer.” Guillou discloses that
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`the receiver station stores “subscription blocks” which describe the services
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`subscribed to and the keys in use by that customer. Ex. 1006 at 15:65-16:10, 16:39-
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`62. These are digital data particular to a customer. Ex. 1055 ¶50. Campbell also
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`discloses this limitation. Campbell discloses using a program’s content rating and a
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`subscriber’s personally chosen content rating threshold (eligibility code) to
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`enable/disable viewing of a program. Ex. 1023 at 18:24-35, 21:5-15, 23:23-24:9;
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`Ex. 1055 ¶51. The eligibility code is stored in memory. Id.
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`Substitute claim 35 further requires that “said subscriber stati