Paper No. 34
`Entered: September 29, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC. AND AMAZON WEB SERVICES, LLC,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01532
`Patent 7,801,304
`_______________
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`APPLE EX. 1014
`Page 1
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`

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`IPR2014-01532
`Patent 7,801,304
`
`
`
`
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`I. INTRODUCTION
`Personalized Media Communications LLC (“Patent Owner”) filed a Request
`
`for Rehearing (Paper 14, “PO Reh’g Req.”) of the Board’s Decision to Institute
`(Paper 8, “Decision” or “Dec. on Inst.”). Patent Owner disagrees with the
`Decision due to alleged errors in claim construction. PO Reh’g Req. 1–2.
`For the reasons provided below, we deny Patent Owner’s request with
`respect to making any change thereto.
`
`II. ANALYSIS
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`§ 42.71(d). The party challenging a decision bears the burden of showing the
`decision should be modified. Id. When rehearing a decision on a petition, a panel
`will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
`Patent Owner challenges our construction of the term “decrypting” as
`incorrect, arguing we abused our discretion by (i) not following two decisions
`issued previously by other panels of the Board, and (ii) overlooking Patent
`Owner’s disclaimer of analog descrambling being encompassed by the term
`“decryption.” PO Reh’g Req. 3-6. Patent Owner contends that during prosecution
`of related U.S. Patent Nos. 4,965,825 and 5,335,277, Patent Owner disclaimed
`“decryption” from encompassing analog descrambling. Id. at 4–5. Patent Owner
`argues that this disclaimer was relied upon by the Board in issuing two prior
`decisions where the term “decrypting” was construed. Id. at 4. Thus, Patent
`Owner disagrees with our Decision as alleged by diverging from the claim
`construction in the Board’s prior decisions and requests that “the Chief Judge grant
`the request for rehearing with an expanded panel to address the harm caused by a
`
`2
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`APPLE EX. 1014
`Page 2
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`IPR2014-01532
`Patent 7,801,304
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`panel inexplicably disregarding prior decisions of other panels on the very same
`issue.” Id. at 2.
`Contrary to Patent Owner’s arguments, the prior decisions of other panels of
`the Board appear to have relied upon characterizations of the invention and the
`specification provided by Patent Owner. See e.g., Ex. 2001, 67–68, 91. Those
`decisions did not rely on the same respective part of the lengthy specification relied
`upon here, as described in the next paragraph. See id.; see also Tempo Lighting,
`Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (Although prosecution
`history serves as intrinsic evidence, the “court also observes that the PTO is under
`no obligation to accept a claim construction proffered as a prosecution history
`disclaimer, which generally only binds the patent owner.”)
` We previously considered the arguments made by Patent Owner regarding
`the construction of “decrypting,” and, as stated in the Decision, we determined
`Patent Owner failed to establish a “significant distinction between
`encryption/decryption and scrambling/unscrambling.” Dec. on Inst., 25. More
`particularly, we determined that “the ’304 patent Specification expressly equates
`the two by stating that ‘decryptors, 107, 224, and 231, may be conventional
`descramblers, well, known in the art, that descramble analog television
`transmissions.’” Id. (quoting Ex. 1004, 160:34–37) (emphasis added). Thus,
`Patent Owner fails to establish that the Board misapprehended and/or overlooked
`any evidence or argument regarding the construction of “decrypting,” and merely
`argues that the Board should have been more persuaded by the evidence in the
`record. See Req. Reh’g. 3–9.
`
`Patent Owner also challenges our construction of the term “decrypting” as
`relying upon the arbitrary and capricious decision of the Board in the related matter
`of Amazon.Com, Inc. and Amazon Web Services, LLC v. Personalized Media
`
`3
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`APPLE EX. 1014
`Page 3
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`

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`IPR2014-01532
`Patent 7,801,304
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`Communications LLC, IPR2014-01533, Paper 7 (PTAB Mar. 26, 2015). Req.
`Reh’g. 9–10. Patent Owner, however, fails to identify what we misapprehended or
`overlooked as required by 37 C.F.R. § 42.71(d). Thus, Patent Owner’s challenge
`does not meet the standard set forth for a request for rehearing.
`Patent Owner lastly challenges our construction of the term “selecting,”
`arguing that we overlooked its request to construe this term. PO Reh’g Req. 11.
`Specifically, Patent Owner argues that it proposed a construction for “selected” but
`the Board overlooked it. Id. Contrary to Patent Owner’s contention, we expressly
`addressed Patent Owner’s proposed construction of the term “selected” in the
`Decision. Dec. on Inst. 16 (“Patent Owner argues that the plain and ordinary
`meaning of ‘selected’ in claim 23 is ‘to choose between alternatives.’” (citing
`Prelim. Resp. 19)). As stated in the Decision, we do “not agree with Patent
`Owner’s proposed construction of the ‘selected’ in claim 23.” Id. at 16–17. We
`note that merely disagreeing with our analysis or conclusions does not serve as a
`proper basis for a rehearing. It is not an abuse of discretion to provide analysis or
`conclusions with which a party disagrees. For the forgoing reasons, Patent Owner
`has not carried its burden of demonstrating that the Board’s Decision should be
`modified. See 37 C.F.R. § 42.71(d).
`Regarding Patent Owner’ request for an expanded panel to address its
`Request for Rehearing (PO Reh’g Req. 2), Patent Owner directs us to no
`persuasive authority that a panel of the Board is empowered to grant a request for
`panel expansion. See Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-
`00506, slip. op at 6 (PTAB Dec. 10, 2014) (Paper 25). The members of the Board
`deciding an institution matter are not authorized to select themselves or, of their
`own accord, select other Board members to decide the matter, upon request of a
`party or otherwise. As indicated in the Standard Operating Procedure, the Chief
`
`4
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`APPLE EX. 1014
`Page 4
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`IPR2014-01532
`Patent 7,801,304
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`Judge, on behalf of the Director, may act to expand a panel on a suggestion from a
`judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates
`“internal norms for the administration of the Board” but “does not create any
`legally enforceable rights.” Id. Accordingly, we deny Patent Owner’s request for
`rehearing by an expanded panel.
`
`
`
`
`IV. ORDER
`It is hereby ORDERED that Patent Owner’s request for rehearing is denied.
`
`
`
`For PETITIONER:
`
`Brenton Babcock
`2BRB@knobbe.com
`Colin Heideman
`2cbh@knobbe.com
`Kent Shum
`2kns@knobbe.com
`Joseph Cianfrani
`2JSC@knobbe.com
`Jeremy Anapol
`2JAA@knobbe.com
`
`For Patent Owner:
`
`Stephen Schreiner
`sschreiner@goodwinprocter.com
`Thomas Scott
`tscott@pmcip.com
`Phong Dinh
`pdinh@goodwinprocter.com
`Jennifer Albert
`JAlbert@goodwinprocter.com
`Eleanor Yost
`EYost@goodwinprocter.com
`
`5
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`APPLE EX. 1014
`Page 5