Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 7
`Entered: February 16, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`_______________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 1
`
`
`Tel: 571-272-7822
`
`
`
`Paper 7
`Entered: February 16, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`_______________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 1
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`I.INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32 and 33 (“challenged
`claims”) of U.S. Patent No. 8,559,635 B1 (Ex. 1003, “the ’635 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Personalized Media
`Communications LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 5 (“Prelim. Resp.”). We have statutory authority under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” See also
`37 C.F.R § 42.4(a) (delegating authority to the Board).
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude Petitioner has
`established a reasonable likelihood it would prevail with respect to at least
`one of the challenged claims. Accordingly, for the reasons that follow, we
`institute an inter partes review.
`
`B. Additional Proceedings
`Petitioner informs us that the ’635 patent is the subject of a lawsuit:
`Personalized Media Communications, LLC v. Amazon.com, Inc., No. 2:15-
`cv-1366-JRG–RSP (E.D. Tex. filed July 30, 2015). Pet. 61. Petitioner and
`Patent Owner also list a number of related patents involved in district court
`cases and other related patents involved in inter partes reviews. Id. at 61–
`62; Paper 4, 1.
`
`
`2
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 2
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`C. The ’635 Patent
`The ’635 patent is titled “Signal Processing Apparatus and Methods”
`and generally relates to a unified system of programming communication.
`Ex. 1003, Abstr. The challenged claims relate to methods of controlling the
`decryption of programming at a subscriber station or receiver station. As
`noted above, Petitioner challenges claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32
`and 33, of which claims 13, 18, 20, 32, and 33 are independent. Dependent
`claim 4 and the independent claim from which it depends, claim 2 (not
`challenged in this proceeding), are reproduced below:
`2. A method for controlling the decryption of programming at a
`subscriber station, said method comprising the steps of:
`receiving programming, said programming having a first
`encrypted digital control signal portion and an encrypted digital
`information portion;
`detecting said first encrypted digital control signal portion of said
`programming;
`passing said first encrypted digital control signal portion of said
`programming to a first decryptor at said subscriber station;
`decrypting said first encrypted digital control signal portion of
`said programming using said first decryptor at said subscriber
`station;
`passing said encrypted digital information portion of said
`programming and the decrypted control signal portion to a
`second decryptor at said subscriber station;
`decrypting said encrypted digital information portion of said
`programming using said second decryptor at said subscriber
`station based on the decrypted control signal portion; and
`presenting said programming.
`4. The method of claim 2, wherein said programming further
`includes encrypted video.
`
`3
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 3
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`Id. at 286:7–28, 286:54–55. Also, independent claim 18, which is
`representative of the alleged invention, is reproduced below:
`18. A method of processing signals at a receiver station
`comprising the steps of:
`receiving at least one encrypted digital information transmission,
`wherein
`the at
`least one encrypted digital
`information
`transmission is unaccompanied by any non-digital information
`transmission;
`locating code;
`passing said code to a processor;
`controlling a decryptor that decrypts encrypted digital data to
`decrypt in a specific fashion on the basis of said code;
`decrypting a portion of said at least one information transmission
`in said specific fashion; and
`passing said decrypted portion of said at least one encrypted
`digital information transmission to one of said processor and an
`output device.
`Id. at 288:10–25.
`The ’635 patent describes access control to transmitted content at a
`receiver station. Ex. 1003, Abstr. Figure 4 of the ’635 patent, reproduced
`below, illustrates a receiver station:
`
`4
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 4
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`
`
`As shown above in Figure 4, the ’635 patent discloses a receiver station
`having signal processor 200 to control tuners 214, 215, and 223, the
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`230. Id. at 148:30–35. In one example described in the Specification, the
`“Wall Street Week” program is transmitted to the receiver station by a cable
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`end “encrypts the digital audio information of said transmission, in a fashion
`well known in the art, using particular cipher algorithm C and cipher key Ca,
`then transmits the information of said program on cable channel 13.” Id. at
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`local-cable-enabling-message (#7), is transmitted with instructions that
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`the instructions causes controller 20 to receive the cable channel
`transmission, select the information of a cipher key Ca from among the
`
`5
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 5
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`information portion, and transfer the cipher key to decryptor 107. Id. at
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`decryptor 107 then decrypts “using said key information and selected
`decryption cipher algorithm C, and output[s] the decrypted information of
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`152:48–51.
`Subsequently, a second SPAM message that consists of an “01”
`header provides “1st-stage-enable-WSW-program” instructions as the
`information segment information. Id. at 153:38–43. Executing the “1st-
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`first stage of decrypting the video information of the “Wall Street Week”
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`received information using decryption cipher key Ba and decryption cipher
`algorithm B. Id. at 154:28–33.
`A third SPAM message provides “2nd-WSW-program enabling-
`message” instructions, causing the controller to affect a second stage of
`decrypting the digital video information of “Wall Street Week.” Id. at
`156:62–157:5. The second stage of decrypting the video information of the
`“Wall Street Week” program transmission is completed using the decryption
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`station to commence the transfer of the decrypted television information of
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`Id. at 159:55–59.
`
`6
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 6
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 3, 4, 7, 13, 18, 20, 21,
`28–30, 32 and 33 of the ’635 patent based on the following grounds:
`Reference(s)
`Basis
`Claim(s) Challenged
`Chandra1
`§ 102 13, 18, 20, and 32
`Chandra and Nachbar2
`§ 103 33
`Seth-Smith3
`§ 102 4, 7, 21, and 28–30
`Campbell4
`§ 103 3
`
`
`II. ANALYSIS
`
`A. Priority Date for the Challenged Claims of the ’635 Patent
`Patent Owner argues that all of the prior art references cited by the
`Petitioner were filed or published after November 3, 1981, the priority date
`which Patent Owner argues is applicable to claims of the ’635 Patent; thus,
`Patent Owner argues that the references do no constitute prior art and cannot
`render each of the challenged claims unpatentable. Prelim. Resp. 1. The
`prior art status of the prior art hinges on the effective priority date for the
`’635 patent with respect to support for the challenged claims. Petitioner
`contends that the earliest effective priority date for the challenged claims of
`the ’635 patent (through a series of continuation patents) is the filing date of
`U.S. Patent No. 4,965,825 (“’825 patent”) on September 11, 1987. See
`
`
`1 US Patent No. 4,817,140, filed Nov. 5, 1986 (Ex. 1041) (“Chandra”).
`2 Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-
`13, 1986 (Ex. 1042) (“Nachbar”).
`3 US Patent No. 4,886,770, filed Aug. 14, 1986 (Ex. 1043) (“Seth-Smith”).
`4 US Patent No. 4,536,791, PCT filed Mar. 31, 1981 (Ex. 1044)
`(“Campbell”).
`
`7
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 7
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`Pet. 5. The ’635 patent claims Continuation-in-Part (“CIP”) status from
`September 11, 1987 to a chain of continuing applications purportedly having
`a priority date of November 3, 1981––the filing date of the earliest-filed
`ancestor patent in the chain, U.S. Patent No. 4,694,490 (“’490 patent”). See
`Ex. 1003 [63]. Patent Owner contends that the effective priority date of the
`challenged claims of the ’635 patent is the filing date of the ’490 patent on
`November 3, 1981. Prelim. Resp. 7.
`1. “programming”
`Claims 3, 4, and 7 of the ’635 Patent recite the term “programming.”
`The ’490 patent discloses “provid[ing] techniques whereby, automatically,
`single channel, single medium transmissions, presentations, be they radio,
`or other electronic transmissions, [which] may be recorded, [and] co-
`ordinated in time with other programing previously transmitted and
`recorded.” Ex. 1004, 3:51–56 (emphasis added). On the other hand, the
`later-filed ’635 patent states that “[t]he term ‘programming’ refers to
`everything that is transmitted electronically to entertain, instruct or inform,
`including television, radio, broadcast print, and computer programming as
`well as combined medium programming.” Ex. 1003, 6:31–34 (emphasis
`added).
`Therefore, the broad disclosure in the ’635 patent potentially includes
`not only “combined medium programming” and “computer programming,”
`it also includes “everything . . . transmitted electronically” (subject to the
`quoted qualifiers) at the time of filing of the ’635 patent (i.e., assuming for
`the sake of argument written description exists for “everything” so
`transmitted), whereas the earlier disclosure, in context, only includes “other
`electronic transmissions”––i.e., in context, those “other” transmissions that
`
`8
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 8
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`were similar to conventional “single channel, single medium,” “television”
`or “radio” transmissions at the time of filing of the ’490 patent. Compare
`Ex. 1003, 6:31–34, with Ex. 1004, 3:51–56, 10:48–49.
`Petitioner argues that the broader 1987 definition of “programming”
`expands the scope of the subject matter; thus, claims 3, 4, and 7 are not
`entitled to the 1981 priority date. Pet. 12. More particularly, Petitioner
`argues the Federal Circuit instructed in PowerOasis, Inc. v. T-Mobile USA,
`Inc., 522 F.3d 1299 (Fed. Cir. 2008) that 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.
`Pet. 12 (citing PowerOasis, 522 F.3d at 1310–11). Patent Owner responds
`that the argument in PowerOasis is inapplicable because the proper inquiry
`in determining priority is whether the earlier filed application alone provides
`written description support for the claim in question and that it is legally
`improper to compare two specifications. Prelim. Resp. 17 (citing
`Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1333–34 (Fed.
`Cir. 2008)). We are not persuaded by Patent Owner’s argument, as the
`Federal Circuit considered both the original application and a continuation-
`in-part application in PowerOasis, and ultimately determined that support
`did not exist in the original application for a variation of the customer
`interface later introduced in the continuation-in-part application.
`PowerOasis, 522 F.3d at 1310 (“Because none of this support was present in
`the Original Application and because the Original Application did not
`disclose a customer interface apart from the vending machine, the asserted
`claims are only entitled to the 2000 CIP Application filing date of June 15,
`2000.”)
`
`9
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 9
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`Here, we determine that Patent Owner does not dispute in a clear and
`persuasive fashion that the 1987 ’635 patent Specification broadened the
`term “programming.” See Prelim. Resp. 16–17. On this record, we
`determine that whatever the term “programming” meant in 1987, it meant
`something different in 1987 than it did in 1981, because it grew to
`encompass many different types of known analog and digital programming
`not contemplated in 1981 according to the ’490 patent. As noted, the 1987
`’635 patent Specification broadened the meaning of programming to
`encompass “everything that is transmitted electronically to entertain, instruct
`or inform, including television, radio, broadcast print, and computer
`programming as well as combined medium programming.” Ex. 1003, 6:31–
`34 (emphasis added). Accordingly, notwithstanding Patent Owner’s
`characterization of the holding of PowerOasis, 522 F.3d at 1306, we
`determine Patent Owner impermissibly broadened the scope of the claim
`term “programming” in the ’635 patent, relative to the disclosure of the term
`in the ancestor 1981 ’490 patent. Therefore, based on this record and for
`purposes of this Decision, we determine that Patent Owner fails to
`sufficiently rebut Petitioner’s contention that the 1981 ’490 patent does not
`support at least claims 3, 4, and 7 of the’635 patent and that the earliest
`effective priority date for these claims is no earlier than that of the ’825
`patent on September 11, 1987.
`2. “unaccompanied by any non-digital information
`transmission”
`Claim 18 of the ’635 Patent recites the “receiving at least one
`encrypted digital information transmission, wherein the at least one
`encrypted digital information transmission is unaccompanied by any non-
`digital information transmission” (claims 20, 32, and 33 provide similar
`
`10
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 10
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`recitations). As discussed below, we have previously determined with
`respect to the ’635 Patent that the broadest reasonable construction of the
`limitation “at least one encrypted digital information transmission is
`unaccompanied by any non-digital information transmission” means “the at
`least one encrypted digital information transmission does not include non-
`digital information such as analog information.” Apple Inc., v. Personalized
`Media Communications LLC, Case No. IPR2016-00754 (“the ’754 IPR”),
`slip. op. at 10 (PTAB Sept. 21, 2016) (Paper 8) (“’754 Inst. Dec.”). We do
`not deviate from the construction for purposes of this decision, as described
`below. Petitioner argues that the negative limitation that transmissions are
`“unaccompanied by any non-digital information transmission” is never
`described in the 1981 ’490 patent. Pet. 6 (citing Ex. 1001 ¶¶ 83–87).
`Petitioner’s declarant, Mr. Wechselberger, states that the 1981
`’490 patent describes receiving a “recipe in encoded digital form,” but this
`recipe is received via a cable television channel. Ex. 1001 ¶ 84 (citing
`Ex. 1004, 20:28–37). Mr. Wechselberger states that the 1981 ’490 patent
`explains that these signals are embedded into programs and “lie outside the
`range of the television picture displayed on a normally tuned television set.”
`Id. (citing Ex. 1004, 4:5–6, 4:18–22). Mr. Wechselberger testifies that
`person of ordinary skill in the art would have understood, in view of this
`disclosure, that the transmission of the recipe is accompanied by
`conventional analog programming. Id. Accordingly, Petitioner argues that
`the 1981 ’490 patent fails to support the claim recitation that the
`transmissions are “unaccompanied by any non-digital information
`transmission.” Pet. 7.
`
`11
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 11
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`Patent Owner argues that certain embodiments in the 1981 ’490 patent
`support the negative limitation. Prelim. Resp. 24–26. For example, Patent
`Owner cites to the illustration of Path C in Figure 2A, which is reproduced
`below.
`
`
`
`Ex. 1004, Fig. 2A. With respect to Figure 2A, the 1981 ’490 patent
`describes that a “television channel signal is [] transmitted to a standard
`amplitude demodulator, 32, which uses standard demodulator techniques
`well known in the art to define the television base band signal.” Ex. 1004,
`6:45–48. The 1981 ’490 patent describes that “[t]his base band signal is
`then transmitted through three separate paths to three separate detector
`devices.” Id. at 6:48–50. Patent Owner argues that the 1981 ’490 patent
`describes that the Path C transmission is “separately defined” and is “all-
`digital.” Prelim. Resp. 25 (citing Ex. 1004, 6:67–7:1) (emphasis added).
`Although the ’490 patent states that “Path C inputs the separately defined
`
`12
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 12
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`transmission to a digital detector, 38,” Figure 2A of the ’490 patent fails to
`state that Path C is “all-digital.” In addition, Path C includes digital detector
`38, indicating the signals are not “all-digital,” else there would be no reason
`to detect them. Furthermore, the decoder of Figure 2A receives and
`processes an analog signal using filter 31 and amplitude demodulator 32.
`See Ex. 1004, 6:67–7:1, Fig. 2A. We determine that Patent Owner fails to
`describe sufficiently how the “One TV Channel” output from amplitude
`demodulator 32, shown above in Figure 2A, results in an “all-digital” Path
`C, and even if it does, how this sufficiently shows support for claims at issue
`here. In addition, as shown in Figure 2A above, the other two paths of the
`transmission of the base band signal, Paths A and B, also pass signals to
`digital detectors 34 and 37, but Patent Owner does not describe these paths
`as “all-digital.” Id. at Fig. 2A. Accordingly, Patent Owner does not
`establish sufficiently on this preliminary record that the decoder of Figure
`2A or Path C provides an example of the claimed transmissions that are
`“unaccompanied by any non-digital information transmission.”
`Even if Path C somehow is all-digital, Patent Owner’s arguments
`appear to rest on an unpersuasive construction of claim 18 that includes a
`receiver receiving a transmission from itself. Claim 18 recites “a method of
`processing signals at a receiver station comprising the steps of . . . receiving
`at least one encrypted digital information transmission, wherein the at least
`one encrypted digital information transmission is unaccompanied by any
`non-digital information transmission.” By focusing on an alleged “all-
`digital” signal within an internal receiver station Path C, Patent Owner
`implies that the claimed receiver station broadly may receive a transmission
`from itself. On this preliminary record, the claim language does not support
`
`13
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 13
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`that implied construction. See Rambus Inc. v. Rea, 527 Fed. Appx. 902, 907
`(Fed. Circ. 2013) (Board erred by reading the claim limitation “[p]roviding a
`signal to the memory device” as including “providing the signal from one
`part of the memory device to another part of it”) (non-precedential––“not
`selected for publication”).
`Patent Owner also argues that Figure 6E of the ’490 patent provides
`an example of the claimed limitation. Figure 6E is reproduced below.
`
`
`Ex. 1004, Fig. 6E. Figure 6E, shown above, illustrates a “decryption
`technique which could serve to facilitate the electronic distribution of
`copyrighted materials such as books and movies by tending to discourage
`piracy and the unauthorized retransmission of copies.” Ex. 1004, 21:3–7.
`Patent Owner argues that “Fig. 6E of the ’490 patent shows a direct
`connection between the output of laser videodisc system 232 and both the
`signal processor (Fig. 1) 200 and decrypter 224 to print out a book” and that
`“[p]rintable text was readily known to be stored in digital form.” Prelim.
`Resp. 26 (citing Ex. 1004, 21:1–22:4; Ex. 2001 ¶ 112). Claim 18 requires a
`
`14
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 14
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`“method of processing signals at a receiver station” including “receiving at
`least one encrypted digital information transmission, wherein the at least one
`encrypted digital information transmission is unaccompanied by any non-
`digital information transmission” (similar recitations are set forth in claims
`20, 32, and 33).
`Based on this record, we determine that Patent Owner fails to describe
`sufficiently what constitutes the “at least one encrypted digital information
`transmission” in the Figure 6E embodiment, where the 1981 ’490 patent
`expressly or inherently indicates that any non-digital information is
`prohibited from this transmission, and where Patent Owner appears to be
`relying somehow on a known printing technique without an adequate
`explanation as to how this known technique impacts support for the
`challenged claims. See Prelim. Resp. 26 (“[p]rintable text was readily
`known to be stored in digital form”). Accordingly, we determine that based
`on this record Patent Owner fails to describe sufficiently how this
`embodiment in the 1981 ’490 patent provides support for the limitations in
`claim 18, and similar recited limitations in claims 20, 32, and 33. Therefore,
`based on this record and for purposes of this Decision, we determine that
`Patent Owner fails to rebut sufficiently Petitioner’s contention that the 1981
`’490 patent does not support at least claims 18, 20, 32, and 33 of the’635
`patent, and that the earliest effective priority date for these claims is no
`earlier than that of the ’825 patent on September 11, 1987.
`3. “executable instructions”
`Claim 13 of the ’635 Patent recites: “said decrypted second of said
`plurality of signals is embedded with executable instructions.” Petitioner
`argues that the ’490 patent describes the general notion of passing “operating
`
`15
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 15
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`instructions to equipment” but does not provide sufficient disclosure to
`support Patent Owner’s proposed construction for the term “executable
`instructions” set forth in claim 13. Pet. 5 (citing Ex. 1004, 12:11–12;
`Ex. 1039, 18).
`In response, Patent Owner argues that the 1981 ’490 patent describes
`passing “operating instructions.” Prelim. Resp. 22 (citing Ex. 1004, 4:5–6,
`12:11–12). The portion of the ’490 patent relied upon by Patent Owner
`discloses the following: “[w]ere this head end facility equip[p]ed with
`automatic operating equipment well known in television studios,
`controller/computer, 73, could pass appropriate operating instructions to
`such equipment.” Ex. 1004, 12:8–12 (emphasis added). Patent Owner fails
`to describe sufficiently how this general disclosure of the potential capability
`of the head end facility to pass operating instructions to equipment provides
`support for the claim 13 recitation of “said decrypted second of said plurality
`of signals is embedded with executable instructions.” Patent Owner cites
`additional similar disclosures in the 1981 ’490 patent regarding transmitted
`instructions (Prelim. Resp. 22–23 (citing Ex. 1004, 8:56–65, 19:42–20:7)),
`but similarly fails to describe sufficiently how these instructions provide
`sufficient support for the claim 13 recitation of “said decrypted second of
`said plurality of signals is embedded with executable instructions.”
`Therefore, based on this record and for purposes of this Decision, we
`determine that Patent Owner fails to rebut sufficiently Petitioner’s
`contention that the 1981 ’490 patent does not support at least claim 13 of
`the’635 patent and that the earliest effective priority date for this claim is no
`earlier than that of the ’825 patent on September 11, 1987.
`
`16
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 16
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`4. “second processor control”
`Claim 21 of the ’635 Patent recites both “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 based on said step of decrypting said first
`portion of said encrypted materials.” Claims 28, 29, and 30 depend either
`directly or indirectly from claim 21. Petitioner argues that the 1981
`’490 patent discloses that decryption is carried out under the control of a
`single processor rather than a first processor and a second processor required
`by claim 21. Pet. 10 (citing Ex. 1004, 14:28–32, 21:20–67).
`As discussed below, we construe to the term “processor” to mean “a
`device that operates on data.” Patent Owner counters Petitioner’s contention
`by arguing that Figure 4D of the 1981 ’490 patent “shows components that
`perform the double decryption process under a first and second processor
`control.” Prelim. Resp. 28 (citing Ex. 1004, 20:16–50). Figure 4D of the
`1981 ’490 patent is reproduced below.
`
`
`Ex. 1004, Fig. 4D. As shown above, Figure 4D illustrates signal processor
`109 in communication with decryptor/interruptor 110 and
`
`17
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 17
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`decryptor/interruptor 111. Ex. 1004, 14:29–32; Fig. 4D. The 1981
`’490 patent states that “FIG. 4D shows that a multi-stage
`decryption/interruption process may be used in which transmissions must be
`processed by one or more additional decryptor/interruptors, 111, that follow
`decryptor/interruptor, 110.” Ex. 1004, 14:29–32. As a separate example,
`Patent Owner also argues that the embodiment illustrated in Figure 6E of the
`1981 ’490 patent implements a similar architecture with components that
`perform the double decryption process under a first processor control and a
`second processor control. Prelim. Resp. 28–29 (citing Ex. 1004, 21:1–22:4).
`Additionally, Patent Owner argues that Figure 1 of the 1981 ’490 patent
`illustrates a signal processor 12 and controller 20 that can provide processor
`control to perform as recited in claim 21. Id. at 29 (citing Ex. 2001 ¶¶ 129–
`30). We are persuaded that these cited disclosures in the 1981 ’490 patent
`provide example embodiments of the claimed processor control recited in
`claim 21. In light of these disclosures in the 1981 ’490 patent cited by
`Patent Owner, we determine for purposes of this Decision that Patent Owner
`sufficiently rebuts Petitioner’s assertion that claims 21, 28, 29, and 30 of
`’635 patent are not entitled to the filing date of the ’490 patent.
`Accordingly, we are persuaded, for purposes of this Decision, that claims 21,
`28, 29, and 30 of ’635 patent are entitled to an effective priority date of the
`’490 patent, filed on November 3, 1981.
`5. Conclusions Regarding Priority Date of Challenged Claims
`In view of the above, we determine that for purposes of this decision,
`Chandra, Nachbar, Seth-Smith and Campbell qualify as prior art against
`challenged claims 3, 4, 7, 13, 18, 20, 32 and 33 of the ’635 Patent.
`Additionally, given our determination that claims 21 and 28–30 of the
`
`18
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 18
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`’635 patent are entitled to a priority date of November 3, 1981, we determine
`that for purposes of this decision, the Seth-Smith reference does not
`constitute prior art against claims 21 and 28–30 because on its face, Sam-
`Smith’s priority date can be no earlier than July 8, 1986.5
`
`B. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,6 the Board will interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the
`Specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Petitioner and Patent Owner
`dispute several claim terms that require construction.
`1. “decrypt”
`Patent Owner argues that the term “decrypt” should be construed to
`exclude descrambling of an analog television transmission. Prelim. Resp. 30
`(citing Ex. 2001 ¶ 48). Petitioner argues to the contrary that a person of
`ordinary skill in the art would have understood “decrypt” and “descramble”
`as interchangeable terms that would apply to both analog and digital data.
`Pet. 22 (citing Ex. 1001 ¶¶ 62–65). Petitioner notes that in the previous and
`related inter partes review proceedings, the Board rejected Patent Owner’s
`similar proposals to construe “decrypting” to exclude descrambling. Id.
`at 20–21 (citing. Ex. 1045, 8–10; Ex. 1011, IPR2014-01533, Decision on
`
`
`5 Seth-Smith was filed on August 14, 1986 and claims priority as a
`continuation-in-part of an application filed on July 8, 1986.
`6 Pub. L. No. 112-29,125 Stat. 284 (2011).
`
`19
`
`PMC Exhibit 2139
`Apple v. PMC
`IPR2016-00754
`Page 19
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`Institution, Paper 7, 7–11; Ex. 1013, IPR2014-01532, Decision on
`Institution, Paper 8, 25–26). Additionally, Petitioner notes that the District
`Court for the Eastern District of Texas rejected Patent Owner’s argument
`that decrypting excludes descrambling. Pet. 21–22 (citing Ex. 1017,
`Personalized Media Communication, LLC v. Motorola, Inc., No. 2:08-cv-70,
`2011 WL 4591898 (E.D. Tex. Sept. 30, 2011), 29).
`The parties have proffered these same arguments in several previous
`proceedings before the Board, and we have determined consistently that the
`term “decryptor” includes a descrambler. See e.g., Amazon.com, Inc. v.
`Personalized Media Communication, LLC, Case No. IPR2014-01532 (“the
`’1532 IPR”), slip op. at 7–10 (PTAB March 29, 2016) (Paper 57) (“’1532
`Final Decision”). We see no reason to depart from that conclusion in this
`case. Our analysis primarily rests upon the passage from the specification of
`the ’635 patent reproduced below:
`For example, the decryption cipher key information and/or
`algorithm instructions and/or the location or locations of said
`key information and/or instructions may be computed in other,
`more complex or less complex, fashions. And for example, the
`transmitted programming may be processed through fewer than
`three steps of decryption or more than three. And for example,
`the “Wall Street Week” transmission may be of conventional
`analog television, and the decryptors, 107, 224, and 231, may
`be conventional descramblers, well[] known in the art, that
`descramble analog television transmissions and are actuated by
`receiving digital key information.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
