UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMAZON.COM, INC. AND AMAZON WEB SERVICES, LLC
`Petitioners
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2014-01532
`Patent No.: 7,801,304
`For: Signal Processing Apparatus and Methods
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`RESPONSE OF PATENT OWNER PERSONALIZED MEDIA
`COMMUNICATIONS LLC TO PETITION
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`APPLE EX. 1010
`Page 1
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`

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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`GROUNDS AT ISSUE ................................................................................... 2
`II.
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 3
`III.
`IV. THE INVENTION ........................................................................................... 4
`V.
`CLAIM CONSTRUCTION ............................................................................ 7
`A.
`“Decryptor”/ “Decrypt” ......................................................................... 9
`B.
`“Processor” .......................................................................................... 16
`VI. PETITIONERS FAIL TO SHOW THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS ................................................ 18
`A. Guillou ’483 in view of Block and Guillou ’011, Fails
`to Render Claim 22 Obvious. .............................................................. 20
`1. Block Does Not Teach or Suggest the Query and
`Response to the Query ................................................................ 25
`2. Guillou ’011 Does Not Teach or Suggest the
`Query and Response to the Query .............................................. 28
`3. No Motivation to Modify Based on Block’s
`Discussion of the Prior Art ......................................................... 30
`4. No Motivation to Combine ......................................................... 31
`Guillou ’483 Fails to Render Claim 23 Obvious ................................ 35
`1. Guillou ’483 Fails To Teach Or Suggest
`Detecting Encrypted Digital Data In Accordance
`with a Varying Pattern of Timing or Varying
`Location ...................................................................................... 37
`2. Guillou ’483 Fails To Teach Or Suggest The
`Controller .................................................................................... 41
`3. Guillou ’483 Fails To Teach Or Suggest The
`Decryptor for Decrypting The Encrypted Digital
`Data ............................................................................................. 44
`Guillou ’483 Fails to Render Claim 24 Obvious ................................ 46
`1. Guillou ’483 Fails To Teach Or Suggest
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`C.
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`B.
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`i
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`APPLE EX. 1010
`Page 2
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`D.
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`Decrypting a Unit of Digital Television or
`Computer Programming in Response to an
`Instruct-to-Decrypt Signal .......................................................... 47
`2. Guillou ’483 Fails To Teach Or Suggest a
`Processor ..................................................................................... 48
`3. Guillou ’483 Fails To Teach Or Suggest Storing
`a Procedure ................................................................................. 50
`The Prior Art Fails to Render Claims 1, 11, 16 and 18
`Obvious ............................................................................................... 51
`VII. OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS ................................ 55
`A.
`Commercial Success: Licensing......................................................... 55
`B.
`Industry Praise: Ocean Tomo ............................................................. 56
`C.
`Industry Praise: Citations by Others .................................................. 57
`D.
`Long Felt Need & Failure of Others: Deficiencies of
`Teletext ................................................................................................ 58
`VIII. CONCLUSION .............................................................................................. 60
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`ii
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`APPLE EX. 1010
`Page 3
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`

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`TABLE OF AUTHORITIES
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`Cases
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`Broadcast Innovation, LLC v. Echostar Comm’s Corp.,
`No. OI-WY-2201 (D. Col. Sept 11, 2002) ........................................... 13
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .............................................................. 8
`
`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb. 6, 2009) ............ 19, 26
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`Ex Parte Personalized Media Commc’ns,
`No. 2008-4228, 2008 WL 5373184 (B.P.A.I. Dec. 19, 2008) .............. 12
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`Ex. Parte Personalized Media Commc’ns, LLC,
`No. 2009-6825, 2010 WL 200346 (B.P.A.I. Jan. 19, 2010).) .............. 12
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`Geo. M. Martin Co. v. Alliance Mach. Sys. Intern. LLC,
`618 F.3d 1294 (Fed. Cir. 2010) ............................................................ 56
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................ 18, 55
`
`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) .............................................................. 19
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) .................................................................. 32
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ............................................................ 42
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................ 42
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................ 18, 19
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`Normal v. Andrew Trust,
`IPR2014-00283, Paper 51 (June 18, 2015) ........................................... 31
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`iii
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`APPLE EX. 1010
`Page 4
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`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) ............................................................ 57
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................. 8
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`SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
`225 F.3d 1349 (Fed. Cir. 2000) ............................................................ 56
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`St. Jude Med., Inc. v. Access Closure, Inc.,
`729 F.3d 1369 (Fed. Cir. 2013) ............................................................ 19
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`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................ 20
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`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ............................................................ 55
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`Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) ............................................................ 30
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors
`USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ...................................................... 55, 56
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`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ............................................................ 20
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`Statutes
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`35 U.S.C. § 103 .................................................................................... 3, 19
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`iv
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`APPLE EX. 1010
`Page 5
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`AMENDED EXHIBIT LIST
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`Description
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`Ex. Parte Personalized Media Commc’ns, LLC, No. 2009-6825, 2010
`WL 200346 (B.P.A.I. Jan. 19, 2010).
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`WEBSTERS’ NINTH NEW COLLEGIATE DICTIONARY (1984).
`
`Excerpt of Special Master’s Report and Recommendation,
`Personalized Media Commc’ns, LLC v. Scientific-Atlanta, Inc. et al.,
`No. 1:02-CV-824 (N.D. Ga. Mar. 1 2005).
`
`Genise v. Desautels, No. 104,834, Paper No. 66 (B.P.A.I. May 12,
`2003).
`
`Ex Parte Personalized Media Commc’ns, No. 2008-4228, 2008 WL
`5373184 (B.P.A.I. Dec. 19, 2008).
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`Order on Report and Recommendation, Personalized Media
`Commc’ns, LLC v. Scientific-Atlanta, Inc. et al., No. 1:02-CV-824
`(N.D. Ga. June 6, 2005).
`
`Affidavit of William Jay.
`
`Examiner’s Answer in Reexam Control Nos. 90/006,563 and
`90/006,698 (Sep. 24, 2008).
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`Anthony Wechselberger, Encryption: A Cable TV Primer (Oak
`Communications Inc. 1983).
`
`Reply Brief in Reexam Control Nos. 90/006,563 and 90/006,698
`(Nov. 10, 2008).
`
`Transcript of Telephone Conference with Patent Trial and Appeal
`Board, IPR2015-00520, -00521 and IPR 2014-01532, -01533 (June
`11, 2015).
`
`UK Patent Application GB 2 132 860 (Deposition Exhibit 2012 of the
`Deposition of Anthony J. Wechselberger).
`
`Expert Declaration Of Anthony J. Wechselberger dated September 16,
`2002 in Broadcast Innovation, LLC v. Echostar Communications
`Corp (D. CO: 01-WY-2201 AJ) (Deposition Exhibit 2013 of the
`Exhibit List
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`
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`
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` #
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`2001.
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`2002.
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`2003.
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`2004.
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`2005.
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`2006.
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`2007.
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`2008.
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`2009.
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`2010.
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`2011.
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`2012.
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`2013.
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`APPLE EX. 1010
`Page 6
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`2014.
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`2015.
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`2016.
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`2017.
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`2018.
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`2019.
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`2020.
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`2021.
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`2022.
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`2023.
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`2024.
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`2025.
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`2026.
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`2027.
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`2028.
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`Deposition of Anthony J. Wechselberger).
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`Excerpt from Sworn Declaration of Anthony J. Wechselberger
`(Deposition Exhibit 2014 of the Deposition of Anthony J.
`Wechselberger).
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`Claim Listing (Deposition Exhibit 2015 of the Deposition of Anthony
`J. Wechselberger).
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`Declaration of Alfred Weaver, Ph. D. Pursuant to 37 C.F.R. § 1.68.
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`Curriculum Vitae of Alfred Weaver.
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`Deposition Transcript of Anthony Wechselberger, IPR2014-01532
`(June 9, 2015).
`
`Request-response, Wikipedia, available at
`https://en.wikipedia.org/wiki/Request-response.
`
`Declaration of Gerald Holtzman, Esq. Supporting the Patentability of
`U.S. Patent No. 7,801,304.
`
`Appeal Brief (Reexam No. 90/006,536 of U.S. Patent No. 4,965,825).
`
`Order dated May 15, 2003, from Judge Gregory Sleet in Personalized
`Media Communications, LLC v. DirecTV, et al. (D. Del. C.A. No. 00-
`1020).
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`U.S. Patent Application No. 06/317,510.
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`U.S. Patent Application No. 07/096,096.
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`Claim Amendment Listing in Support of Patent Owner's Contingent
`Motion to Amend.
`
`“Channel”, IEEE Standard Dictionary of Electrical and Electronics
`Terms (3d ed. 1984).
`
`U.S. Patent No. 4,439,784 to Furukawa.
`
`Chris Powell, Prestel: the opportunity for advertising, VIEWDATA
`AND VIDEOTEXT 1980-81: AWORLDWIDE REPORT.
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`2029.
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`Fedida, Wireless World, Vol. 83:65-69 (April 1977).
`
`
`
`Exhibit List
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`APPLE EX. 1010
`Page 7
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`

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`Ocean Tomo, Ocean Tomo Patent Quality Inventor Study (April
`2011).
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`Bronwyn H. Hall, Adam Jaffe, and Manuel Trajtenberg, Market Value
`and Patent Citations, 36 RAND J. ECON. 16, 29-30 (2005).
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`Christopher A. Cotropia, Mark Lemley, and Bhaven Sampat, Do
`Applicant Patent Citations Matter? 31 n. 13 (April 24, 2012)
`(Stanford Law and Economics Olin Working Paper No. 401).
`
`Patent portfolio management and patent evaluation – FAQ, European
`Patent Office (2011).
`
`Specter Haunting Pay TV, Bloomberg (Aug 14, 2013).
`
`Deposition Transcript of Michael Slinn, IPR2014-01533 (June 4,
`2015).
`
`Excerpt from US Patent No. 7,801,304 (Deposition Exhibit 2011 of
`the Deposition of Anthony J. Wechselberger).
`
`Expert Declaration Of Anthony J. Wechselberger dated September 16,
`2002 in Broadcast Innovation, LLC v. Echostar Communications
`Corp (D. CO: 01-WY-2201 AJ)
`
`Exhibit List
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`2030.
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`2031.
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`2032.
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`2033.
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`2034.
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`2035.
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`2036.
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`2037.
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`APPLE EX. 1010
`Page 8
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`

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`I.
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`INTRODUCTION
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`Petitioners have failed to bear their burden of proving by a preponderance of
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`the evidence that claims 1, 11, 16, 18, 22, 23 and 24 of U.S. Patent No. 7,801,304
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`(“the ’304 Patent”) are rendered obvious by the prior art.
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`U.S. Patent No. 4,337,483 to Guillou (“Guillou ’483”) does not teach or
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`suggest that a remote source receives a query from a receiver station and transmits
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`decryption enabling information in response to the query, as recited in claim 22.
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`Petitioners’ reliance on U.S. Patent 4,225,884 to Block and U.S. Patent No.
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`4,352,011 to Guillou to make up for this deficiency is premised on an
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`unsupportable and incorrect reading of the prior art. Indeed, these references teach
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`away from the use of a query-response sequence initiated by the receiver station.
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`As for claim 23, the decoder of Guillou ’483 is incapable of detecting
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`encrypted digital data in accordance with a varying pattern of timing or varying
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`location, as recited. The ’304 Patent describes that to “detect[] . . . in accordance
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`with a varying pattern of timing or location,” the detector must have knowledge
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`permitting it to detect packets carried in a varying pattern of timing or at varying
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`locations. The decoder of Guillou ’483 is rudimentary in comparison, it is a hard-
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`wired device that detects any data streaming into the receiver station. There is no
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`intelligence in Guillou’s teletext decoder for detecting packets based on a timing
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`pattern or based on varying locations.
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`1
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`APPLE EX. 1010
`Page 9
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`Petitioners’ reliance on Guillou ’483 in challenging claim 24 is also
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`unavailing. The claim recites that digital television programming or computer
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`programs are decrypted at the receiver station. Guillou ’483 is only capable of
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`decrypting teletext data, not digital television or computer programming. Nor,
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`does Guillou ’483 teach storing a procedure for locating or identifying a specific
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`digital instruct-to-decrypt signal in a plurality of signal types.
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`Lastly, Petitioners’ challenge of claim 1 and 23 is premised on the notion
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`that it would have been obvious to create a single decryptor that could take over
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`the operations of two disparate components with distinct inputs, outputs and
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`functionality. Patent Owner’s expert, Dr. Alfred Weaver, explains, however, that
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`this modification was well beyond the skillset of a person with a bachelor’s
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`engineering degree, even with some real-world experience. Such a modification
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`would also require undue experimentation and is not a mere design trade-off.
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`For the foregoing reasons, Petitioners have failed to meet their burden to
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`demonstrate that the challenged claims 1, 11, 16, 18, 22, 23 and 24 of the ’304
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`Patent are rendered obvious by the prior art references.
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`II. GROUNDS AT ISSUE
`After the Board’s Decision on March 26, 2015 (the “Decision”), the
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`following grounds remain at issue in this inter partes review proceeding:
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`1. Claims 1, 11, 18, 23 and 24 are allegedly rendered unpatentable under 35
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`2
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`APPLE EX. 1010
`Page 10
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`U.S.C. § 103 as obvious based on U.S. Patent No. 4,337,483 (Ex. 1007,
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`hereinafter, “Guillou ’483”);
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`2. Claim 22 is allegedly rendered unpatentable under 35 U.S.C. § 103 as
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`obvious based on Guillou ’483 in view of U.S. Patent No. 4,225,884 (Ex. 1008,
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`hereinafter, “Block”), and U.S. Patent No. 4,352,011 (Ex. 1009, hereinafter,
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`“Guillou ’011”); and
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`3. Claims 11 and 16 are allegedly unpatentable under 35 U.S.C. § 103 as
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`obvious based on Guillou ’483 in view of Block. (Paper 8 at 6.)
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`This Response is submitted pursuant to 37 C.F.R. § 42.120. With this
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`Response, PMC submits the Declaration of Dr. Alfred Weaver, Ph. D. under 37
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`C.F.R. § 1.68 (Ex. 2016). Dr. Weaver is a computer scientist and professor with
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`extensive experience in the field of computer science and electrical engineering,
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`including computer communications and microprocessor systems and design
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`including cryptographic systems and techniques. Dr. Weaver’s declaration
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`addresses certain opinions and testimony that Petitioners’ expert Dr.
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`Wechselberger submitted in his declaration.
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`III. PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art with respect to the ’304 Patent is a
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`person with at least a bachelor’s degree in digital electronics, electrical
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`engineering, computer engineering, computer science, or a related technical
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`3
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`APPLE EX. 1010
`Page 11
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`degree, with 2-5 years of post-degree work experience in the field of
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`communications. (Ex. 2016 at ¶ 31.)
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`IV. THE INVENTION
`Prior to the invention by John Harvey and James Cuddihy, programming
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`transmission and receiving systems were limited in functionality. The ’304 Patent
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`discloses a sophisticated embodiment of access control in connection with Figure 4
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`and the accompanying description. (Ex. 1004 at 143:48-161:2; Ex. 2016 at ¶¶ 32-
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`42.) Figure 4, provided below and annotated in red, shows a subscriber receiver
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`station including a cable set-top box, a microcomputer, decoder, and a signal
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`processor that controls the overall operation of the system including multiple
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`decryptors. The system includes doubly-encrypted content (e.g., digital video
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`encrypted using two keys) and layered encryption (e.g., the content is encrypted
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`with a key that is itself encrypted).
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`4
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`APPLE EX. 1010
`Page 12
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`
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`(Ex. 1004 at Fig. 4 (annotated); Ex. 2016 at ¶¶ 42-44.)
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`In Example #7, a cable head end sends a transmission of digital video and
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`digital audio to the receiver station. The digital audio is singly-encrypted (using
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`key Ca and encryption algorithm C) and the digital video is doubly-encrypted
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`(using key Ba with algorithm B and key Aa with algorithm A). (Id. at 145:55-68;
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`149:5-13; Ex. 2016 at ¶ 43.) The cable head end transmits a series of instruction
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`messages called SPAM messages which cause authorized receiver stations to
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`decrypt the digital television content in a highly controlled fashion so it can be
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`delivered to the viewer. (Ex. 2016 at ¶ 43.) Even these instruction messages are
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`encrypted to provide further security such that only stations having a key J can
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`5
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`APPLE EX. 1010
`Page 13
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`process them. (Ex. 1004 at 145:21-29.) Each message includes an information
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`segment that, following its decryption, is loaded into RAM and executed as a
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`computer program. (Ex. 1004 at 146:6-11; Ex. 2016 at ¶ 43.)
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`In Example #7, a first SPAM message is sent to the receiver station of
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`Figure 4, is decrypted, and is then loaded and executed in order to enable the
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`station to decrypt the digital audio content. (Ex. 1004 at 151:58-66.) The receiver
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`station does this by causing the controller 20 of Signal Processor 200 to select the
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`audio decrypting key Ca from the received digital audio content. (Id. at 152:11-
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`32.) Signal Processor 200 provides the key Ca to audio decryptor 107, which is
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`then controlled to decrypt the audio using algorithm C. A record reflecting
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`successful decryption of the audio is created. (Id. at 152:66-153:15; Ex. 2016 at ¶
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`44.)
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`A second SPAM message, contained in the decrypted audio, is extracted and
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`routed to decoder 203 for detection. This second SPAM message is an instruction
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`to perform the first-stage digital video decryption. The second SPAM message is
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`forwarded to Signal Processor 200 for loading and execution. (Ex. 1004 at 153:16-
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`46; Ex. 2016 at ¶ 45.) It includes a formula that uses receiver station ID data to
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`compute the memory location of a key Ba previously-stored at the receiver station.
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`(Ex. 1004 at 153:47-154:10.) The key Ba is retrieved by Signal Processor 200
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`from that location and is supplied to the first-stage video decryptor 224 which
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`6
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`APPLE EX. 1010
`Page 14
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`decrypts the video using algorithm B. (Id. at 154:10-39; Ex. 2016 at ¶ 45.)
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`A third SPAM message is contained in the video and is routed to decoder
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`203 for detection. This third SPAM message is an instruction to perform the
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`second-stage digital video decryption. (Ex. 1004 at 157:4-17.) The third SPAM
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`instructions include a formula that uses that receiver station’s ID data as an input to
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`compute a key Aa. The key Aa is sent by Signal Processor 200 to the second-stage
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`video decryptor 231 for the final stage of decryption of the video using algorithm
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`A. (Id. at 158:3-23.) A record of the successful decryption of the digital program
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`content and its delivery to the user is created and stored for later retrieval. (Id. at
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`157:48-63; 159:30-160:14; Ex. 2016 at ¶ 46.)
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`
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`By way of summary, the specification discloses a sophisticated access
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`control system using multiple keys Aa, Ba, Ca and multiple algorithms A, B, and C
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`for the decryption of encrypted video and audio. The content keys and algorithms
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`are selectable under the control of the processor. The content keys may be
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`encrypted so that they must be decrypted before they can be used to decrypt the
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`actual content. Finally, the instructions transmitted for causing the decryption of
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`content may contain encrypted computer program, thus requiring that they be
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`decrypted before they can be loaded and executed.
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`V. CLAIM CONSTRUCTION
`Under the broadest reasonable construction (“BRC”) standard, claims are
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`7
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`APPLE EX. 1010
`Page 15
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`presumed to be given their ordinary and customary meaning as would be
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`understood by “one of ordinary skill in the art” when considered “in light of the
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`specification of the patent in which it appears.” Phillips v. AWH Corp., 415
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`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)(emphasis added). “Ordinary and
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`customary meaning” is not a definition itself. The Board must consider the term
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`from the perspective of a person of ordinary skill in the art reviewing the
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`specification.
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`Even before the recent Microsoft decision (discussed below) it was well
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`established that determining whether a patent claim is rendered obvious in view of
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`prior art involves a two-step process: first, the claim terms must be construed, and
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`second, the construed claim must be applied to the prior art. In the claim
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`construction step, a claim term is (a) presumptively accorded its “ordinary and
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`customary meaning” in the art, and (b) then that meaning is tested against the
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`specification for concordance or modification. The Board agrees with the first part
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`of the claim construction analysis: “There is a ‘heavy presumption’ that a claim
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`term carries its ordinary and customary meaning.” (Paper 8 at 6, citing CCS
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).) The
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`Board agrees with the second part because the presumptive meaning must be
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`considered “in light of the Specification of the patent.” (Id., cites omitted.)
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`Just recently in Microsoft, the Federal Circuit explained what the broadest
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`8
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`APPLE EX. 1010
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`reasonable construction is not: a construction that is “unreasonably broad” that
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`does not “reasonably reflect the plain language and disclosure.” Microsoft, 2015
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`WL 3747257 at *3. Such a construction simply “will not pass muster.” Id.
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`Broadest reasonable construction “does not give the PTO an unfettered license to
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`interpret claims to embrace anything remotely related to the claimed invention”;
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`rather, the “claims should always be read in light of the specification and
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`teachings in the underlying patent.” Id. (emphasis added). Furthermore, the PTO
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`must consider all relevant intrinsic evidence including “consult[ing] the patent’s
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`prosecution history in proceedings in which the patent has been brought back to
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`the agency for a second review,” such as prior reexamination proceedings.
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`Id.(emphasis added).
`
`A.
`“Decryptor”/ “Decrypt”
`Each of the claimed methods recites steps of decrypting digital data and
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`information. Claims 1 and 23 further require a decryptor to perform the
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`decrypting. Dr. Weaver explains in his declaration that a person of ordinary skill
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`in the art, in view of the ’304 Patent, would understand these terms to mean “a
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`device or method that uses a digital key in conjunction with an associated
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`mathematical algorithm to decipher (render intelligible or usable) digital data.”
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`(Ex. 2016 at ¶¶ 47-48.) This definition excludes the processing of non-digital data,
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`such as the descrambling of an analog television transmission.
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`In its Decision, the Board provisionally held at Institution that there was not
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`“a significant distinction between encryption/decryption and
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`scrambling/unscrambling” because “the ’304 Patent Specification expressly
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`equates the two by stating that ‘decryptors, 107, 224, and 231, may be
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`conventional descramblers, well known in the art, that descramble analog
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`television transmissions.’” (Paper 8 at 25 (citing to Ex. 1004 at 160:34–37).)
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`The Board’s reliance on column 160, lines 34-37 of the ’304 Patent is
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`misplaced for the following reasons:
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`(1) Prosecution disclaimer by PMC during reexamination of patents with the
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`same specification disavowed the term “decrypt” from having any scope
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`encompassing analog descrambling. Under the Microsoft decision, prosecution
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`history from reexamination is intrinsic evidence that the Board must consult.
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`Microsoft, 2015 WL 3747257 at *3. PMC unequivocally and repeatedly
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`disclaimed “decrypt” from encompassing analog descrambling during the
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`reexamination of two patents, U.S. Pat. Nos. 4,965,825 and 5,335,277, as detailed
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`in Dr. Weaver’s declaration. (Ex. 2016 at ¶¶ 52-53.) In both cases, the Board
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`relied on this disclaimer in confirming the patentability of the claims.
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`In the reexamination of the parent U.S. Patent 4,965,825 (Reexam No.
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`90/006,536), PMC stated:
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`The Aminetzah reference discussing scrambling/unscrambling
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`systems does not disclose or suggest the additional step recited in
`claim 15. Scrambling and encryption are different terms in the art.
`In particular, encryption relates to digital signals. In fact, the claim
`constructions in the Harmon report and the Peterson report both
`reflect the ordinary understanding in the art that decryption pertains
`to digital signals, which is different from descrambling, which
`pertains to analog signals.
`(Ex. 2021 at 29-30; see, also Ex. 2016 at ¶ 52.) In the reexamination of U.S Patent
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`No. 5,335, 277 (Reexam Control No. 90/006,563 & 90/006,698), PMC again
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`disavowed decryption as encompassing unscrambling. (Ex. 2010 at 49.)
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`Indeed, Judge Gregory Sleet in the District of Delaware made the very same
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`finding that PMC’s prosecution disclaimer excluded analog descrambling from
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`“decrypt.” (Ex. 2022 at 2 (“the court agrees with the plaintiffs that the patentee's
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`statements before the Board . . . represent an unambiguous disavowal of claim
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`scope.”).) In sum, prosecution disclaimer settles the issue of the proper meaning of
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`“decrypt,” and the Board need not even consider paragraphs (2)-(4) below.
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`(2) The Board’s construction unjustifiably ignores two of the Board’s own
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`prior decisions on patents with identical specifications that held “decrypt”
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`excluded analog descrambling and was patentably distinct from descrambling - the
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`very opposite of the finding in this panel’s preliminary Decision. In one of the
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`prior decisions, the Board stated:
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`We agree with Appellant that ‘encryption,’ as it would have been
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`commonly defined by one of ordinary skill in the art at the time of
`filing, requires a “digital” signal. . . . We conclude that ‘encryption’
`and ‘decryption’ are not broad enough to read on ‘scrambling’ and
`‘unscrambling.
`(Ex. 2005, Ex Parte Personalized Media Commc’ns, No. 2008-4228, 2008
`WL 5373184 at *27 (B.P.A.I. Dec. 19, 2008).) In another prior decision, the
`Board held:
`We find encryption to be distinct from scrambling and do not find the
`use of one to teach the use of the other. We find that decryption has
`utility with digital signals, and the use of a decryptor and decryption,
`in the context of the instant Specification, is made specifically with
`respect to digital signals.
`(Ex. 2001, Ex. Parte Personalized Media Commc’ns, LLC, No. 2009-6825, 2010
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`WL 200346 at *34 (B.P.A.I. Jan. 19, 2010).) Respectfully, this panel cannot
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`disregard two of its own prior holdings on exactly the same claim term, involving
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`the same specification, and the same Patent Owner, in favor of a finding that is
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`exactly the opposite of the prior USPTO decisions and also contradicts the entire
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`body of intrinsic evidence. This aspect of the preliminary Decision is arbitrary and
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`capricious.
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`(3) Applying standard principles of claim construction proves the Board’s
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`preliminary construction is erroneous. We start with ordinary and customary
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`meaning, as the case law instructs. The ordinary and customary meaning of
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`“decrypt” in the 1980s entailed a digital operation using a digital key to unlock
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`encoded digital data, as distinguished from “descrambling” which entailed
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`operations on reordering (hence descrambling) analog information. Both parties’
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`experts agree on the customary meaning of “decrypt” in the 1980’s. (Ex. 2016 at
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`¶¶ 47-66.)
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`Indeed, Amazon’s expert, Anthony Wechselberger, previously testified via
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`sworn declaration in 2002 in another case that the ordinary and customary meaning
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`of “decrypt” in the 1980s entailed a digital operation using a digital key to unlock
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`encoded digital data, not “descrambling” of analog transmissions. In his
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`declaration in Broadcast Innovation, LLC v. Echostar Comm’s Corp., No. 01-WY-
`
`2201 (D. Col. Sept 11, 2002) , Mr. Wechselberger stated:
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`It is understood and accepted by those knowledgeable in the art that
`‘encryption’ is a digital process, meaning that the signal to be secured
`is a binary or digital signal, and the process that ‘secures’ the signal
`is a digital process. The securing of a digital signal by the application
`of encryption uses what is called an “algorithm.”
`
`(Ex. 2037 at 8 (emphasis added). He reiterated that a customary meaning had
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`emerged such that “decryption excluded analog descrambling: “By the mid-1980s,
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`a convention for using the terms ‘scrambling’ for modifying analog signals and
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`‘encryption’ for transforming digital signals had developed in the field of TV
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`security systems.” Id.
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`Having established the ordinary and customary meaning of the term, we now
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`turn to the specification to see if it provides concordance or, instead, unmistakably
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`disavows the customary meaning. The specification is in accord. An early passage
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`in the specification establishes a clear dichotomy between “decryption”—which
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`involves the use of digital processes to unlock encoded digital data—and
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`“descrambling”—which involves the use of analog processes to unlock encoded
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`analog information:
`
`“In the prior art, various means and methods exist for regulating the
`reception and use of electronically transmitted programming. Various
`scrambling means are well known in the art for scrambling, usually
`the video portion of analogue television transmissions in such a
`fashion that only subscriber stations with appropriate descrambling
`means have capacity to tune suitably to the television transmissions
`and display
`the
`transmitted
`television
`image
`information.
`Encryption/decryption means and methods, well known in the art,
`can regulate the reception and use of, for example, digital video and
`audio television transmissions, digital audio radio and phonograph
`transmissions, digital broadcast print transmission, and digital data
`communications.
`
`(Ex. 1004 at 143:56-144:1, emphasis added.)1 The conclusion drawn in this
`
`
`1 Mr. Wechselberger agreed at deposition that this passage distinguished
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`encryption/decryption from scrambling/descrambling. (Ex. 2016 at ¶ 64; Ex. 2018
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`at 132:20-23; 132:24-133:13.)
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`paragraph could not be more clear: decryption = digital, whereas
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`descrambling = analog.
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`Now, the correct interpretation of the Col. 160 passage mentioned by the
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`Board becomes apparent. The passage in Col. 160 does not state that
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`decryptors/decrypting and descramblers/descrambling are the same. (Ex. 2016 at
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`¶¶ 61-63.) Instead, this passage reiterates the distinction between a decryptor and
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`a descrambler drawn in the passage at Col. 143, because Col. 160 suggests a
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`different embodiment where descramblers replace the decryptors because the
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`digital television programming content has been replaced with analog television
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`programming content. (Id.) The passage distinguishes—not equates—decryption
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`and descrambling.
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`Elsewhere, the specification consistently confirms the customary meaning of
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`“decrypt” as exclu