Trials@uspto.gov
`571-272-7822
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`Paper No 23
`Entered: May 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMAZON.COM, INC. AND AMAZON WEB SERVICES, LLC,
`Petitioner,
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`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01533
`Patent 7,805,749
`_______________
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`BRADEN, Administrative Patent Judge.
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`
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`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`APPLE EX. 1012
`Page 1
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`IPR2014-01533
`Patent 7,805,749
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`I. INTRODUCTION
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`Amazon.Com, Inc. and Amazon Web Services, LLC (“Petitioner”) filed a
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`Request for Rehearing (Paper 11, “Reh’g Req.”) of the Board’s Decision to
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`Institute (Paper 7, “Decision”). Personalized Media Communications LLC
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`(“Patent Owner”) filed a Request for Rehearing (Paper 14, “PO Reh’g Req.”)
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`Patent Owner disagrees with the Decision due to alleged errors in claim
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`construction. PO Reh’g Req. 1–2.
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`For the reasons provided below, we deny Patent Owner’s request with
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`respect to making any change thereto.
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`II. ANALYSIS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d). The party challenging a decision bears the burden of showing the
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`decision should be modified. Id. When rehearing a decision on a petition, a panel
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`will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`Patent Owner challenges our construction of the term “decrypting” as
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`incorrect, arguing we abused our discretion by (i) not following two decisions
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`issued previously by other panels of the Board, and (ii) overlooking Patent
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`Owner’s disclaimer of analog descrambling being encompassed by the term
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`“decryption.” PO Reh’g Req. 3-6. Patent Owner contends that during prosecution
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`of related U.S. Patent Nos. 4,965,825 and 5,335,277, Patent Owner disclaimed
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`“decryption” from encompassing analog descrambling. Id. at 5–6 (citing Exs.
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`2007, 2008). Patent Owner argues that this disclaimer was relied upon by the
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`Board in issuing two prior decisions where the term “decrypting” was construed.
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`Id. at 6. Thus, Patent Owner disagrees with our Decision diverging from the claim
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`2
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`APPLE EX. 1012
`Page 2
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`

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`IPR2014-01533
`Patent 7,805,749
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`construction in the Board’s prior decisions and requests that “the Chief Judge grant
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`the request for rehearing with an expanded panel to address the harm caused by a
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`panel inexplicably disregarding prior decisions of other panels on the very same
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`issue.” Id. at 2.
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`Contrary to Patent Owner’s arguments, the prior decisions of other panels of
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`the Board appear to have relied upon characterizations of the invention and the
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`specification provided by Patent Owner. See Ex. 1026, 67–68, 91. The prior
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`decisions make no mention of the Patent Owner disclaiming claim scope with
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`regards to the term “decrypting.” See Ex. 1026, 1027. To the extent that Patent
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`Owner argues it affirmatively gave up the ability to have a claim in the ’749 patent
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`with the scope to cover “analog descrambling” (see PO Reh’g Req. 5–6), that
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`argument does not appear to have been made in Patent Owner’s Preliminary
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`Response. A request for rehearing is not an opportunity to present new arguments
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`or evidence that could have been presented and developed in the Preliminary
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`Response. See 37 C.F.R. § 42.71(d) (stating that the request must specifically
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`identify . . . the place where each matter was previously addressed in a motion, an
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`opposition, or a reply”). We could not have overlooked or misapprehended
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`arguments or evidence not presented and developed by Patent Owner in the first
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`instance. In any event, as stated in the Decision, we are not persuaded that the
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`specification (Ex. 1001) or the prosecution history of the ’749 patent (Ex. 1003)
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`shows that Patent Owner affirmatively relinquished claim scope that would
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`encompass “analog descrambling.” See Decision 10.
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`
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`Patent Owner also challenges our construction of the term “decrypting” as
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`incorrect, because we relied on all of the embodiments disclosed in the
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`specification and not just the preferred embodiments. PO Reh’g Req. 7–8.
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`According to Patent Owner, “[t]he analog descrambling embodiment that spans
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`3
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`APPLE EX. 1012
`Page 3
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`IPR2014-01533
`Patent 7,805,749
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`several lines in the instant specification is the farthest thing from a preferred
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`embodiment,” and, thus, should not be considered during our claim construction
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`analysis. Id. at 8.
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`Patent Owner is correct in that we relied on all the embodiments disclosed in
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`the specification to inform our claim construction. In other words, we have
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`construed the claim term “decrypting” consistently with the specification of the
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`’749 patent. In re Suitco Surface, Inc. 603 F.3d 1255, 1260 (Fed. Cir. 2010). The
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`broadest reasonable interpretation of a claim must be consistent with the
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`specification. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010);
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`see also TiVo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1298 (Fed.
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`Cir 2008) (concluding that the claim term “multitude of standards” includes not
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`only broadcast standards of the type set forth in the claim, but also data standards
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`of the type set forth in the written description portion of the specification). Patent
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`Owner cites to no case law holding that only the preferred embodiments of an
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`invention disclosed in a specification are to be used during claim construction. In
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`fact, later in its Request for Rehearing regarding another claim term, Patent Owner
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`appears to recognize the importance of the specification for claim construction
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`when it states that “[e]ven when applying broadest reasonable construction, ‘the
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`specification is always highly relevant to the claim construction
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`analysis . . . [u]sually, it is dispositive; it is the single best guide to the meaning of
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`a disputed term.’” PO Reh’g Req. 12 (citing In re Abbott Diabetes Care, Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012)).
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`Patent Owner also challenges our construction of the term “decrypting” as
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`moot, “arbitrary[,] and capricious,” because our grant of an inter partes review
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`based on Powell in view of Guillou did not turn on whether “decrypting” includes
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`analog descrambling. PO Reh’g Req. 7, 9. Patent Owner, however, fails to
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`4
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`APPLE EX. 1012
`Page 4
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`IPR2014-01533
`Patent 7,805,749
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`identify what we misapprehended or overlooked as required by 37 C.F.R.
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`
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`§ 42.71(d). Thus, Patent Owner’s challenge does not meet the standard set forth
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`for a request for rehearing.
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`Patent Owner lastly challenges our construction of the term “selecting,”
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`asserting we overlooked their request to construe this term. PO Reh’g Req. 11.
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`Patent Owner specifically argues that we “abdicated its duty to conscientiously
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`evaluate each argument raised by the parties” when it failed to construe “key claim
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`terms like ‘selecting.’” Id. at 1. Patent Owner, however, argued originally that
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`“selecting” should be “construed according to its plain and ordinary meaning”
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`(Prelim. Resp. 17–18), and our Decision states, “absent any special definitions, we
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`give claim terms their ordinary and customary meaning” (Decision 7). Thus, we
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`did not overlook Patent Owner’s request for construction of the term “selecting.”
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`Rather, we simply applied the ordinary and customary meaning of the term
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`“selecting” during our analysis.
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`Moreover, we note that merely disagreeing with our analysis or conclusions
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`does not serve as a proper basis for a rehearing. It is not an abuse of discretion to
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`provide analysis or conclusions with which a party disagrees. As discussed above,
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`Patent Owner believes that we committed an error in this inter partes review by
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`not articulating our application of the ordinary and customary meaning of the term
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`“selecting” in our claim construction. PO Reh’g Req. 11–15. That contention can
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`be submitted by Patent Owner in its Patent Owner Response.
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`For the forgoing reasons, Patent Owner has not shown that the Board abused
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`its discretion in construing the claim term “decryption” to encompass analog
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`descrambling. As noted in the Decision, we determined that the Patent Owner’s
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`proposed construction for this limitation is not the broadest reasonable
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`construction. The Request for Rehearing similarly is not persuasive as to Patent
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`5
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`APPLE EX. 1012
`Page 5
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`IPR2014-01533
`Patent 7,805,749
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`Owner’s position on the claim construction issue regarding the claim term
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`“selecting.” Thus, Patent Owner has not carried its burden of demonstrating that
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`the Board’s Decision should be modified. See 37 C.F.R. § 42.71(d).
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`Regarding Patent Owner’ request for an expanded panel to address its
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`Request for Rehearing (PO Reh’g Req. 2), Patent Owner directs us to no
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`persuasive authority that a panel of the Board is empowered to grant a request for
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`panel expansion. See Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-
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`00506, slip. op at 6 (PTAB Dec. 10, 2014) (Paper 25). The members of the Board
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`deciding an institution matter are not authorized to select themselves or, of their
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`own accord, select other Board members to decide the matter, upon request of a
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`party or otherwise. As indicated in the Standard Operating Procedure, the Chief
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`Judge, on behalf of the Director, may act to expand a panel on a suggestion from a
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`judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates
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`“internal norms for the administration of the Board” but “does not create any
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`legally enforceable rights.” Id. Accordingly, we deny Patent Owner’s request for
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`rehearing by an expanded panel.
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`
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`It is hereby ORDERED that Patent Owner’s request for rehearing is denied.
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`IV. ORDER
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`6
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`APPLE EX. 1012
`Page 6
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`7
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`IPR2014-01533
`Patent 7,805,749
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`For PETITIONER:
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`Brenton Babcock
`2BRB@knobbe.com
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`Colin Heideman
`2cbh@knobbe.com
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`Kent Shum
`2kns@knobbe.com
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`
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`For Patent Owner:
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`Stephen Schreiner
`sschreiner@goodwinprocter.com
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`Thomas Scott
`tscott@pmcip.com
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`Phong Dinh
`pdinh@goodwinprocter.com
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`Jennifer Albert
`JAlbert@goodwinprocter.com
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`Eleanor Yost
`EYost@goodwinprocter.com
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`APPLE EX. 1012
`Page 7