`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK
`
`OFFICE BEFORE THE PATENT TRIAL AND
`
`APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-00754
`Patent No.: 8,559,635
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`Page
`
`I.
`
`INTRODUCTION ................................................................................................ 1
`
`II. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE ................... 1
`
` A. Substitute Claims are Patentable over 35 U.S.C. §101 ........................................ 1
`
` B. Substitute Claims are Patentable Over 35 U.S.C. §112 ....................................... 2
`
` C. Claim Construction .............................................................................................. 5
`
` D. Substitute Claims are Patentable over Guillou, Sechet, and Campbell .............. 5
`
` E. Substitute Claims are Patentable over Aminetzah ............................................... 9
`
` F. Substitute Claims are Patentable Over Seth-Smith ............................................ 10
`
` G. Substitute Claims are Patentable Over Other Prior Art ..................................... 12
`
`III. CONCLUSION ............................................................................................... 12
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The only disputed issue is whether the proposed Substitute Claims are
`
`patentable. The Substitute Claims are fully supported by both the 1987 and 1981
`
`Applications (Ex. 2130 at ¶14; Ex. 2140 at ¶9). Apple uses impermissible hindsight
`
`for their § 103 combinations as explained below.
`
`II. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`
`A.
`
`Substitute Claims are Patentable over 35 U.S.C. §101
`
`Apple contends the Substitute Claims are unpatentable under § 101 because
`
`they are “strikingly similar” to claim 1 of US Patent No. 7,801,304, found
`
`unpatentable in Personalized Media Commc’ns, LLC v Amazon.com, Inc., 161
`
`F.Supp.3d 325 (D. Del. 2015). Closer analysis reveals marked differences.
`
`Magistrate Judge Payne’s R & R, adopted by the district court (Personalized
`
`Media Commc’ns., 2:15-cv-1366, Doc. 230 (E.D. TX Sept. 29, 2016)(Ex. 2138)),
`
`specifically finds Claim 1 of the ’635 not directed to the abstract idea of decryption,
`
`but to a specific method of using a control signal to decrypt digital programming.
`
`(Ex. 2131 at 16-17; Ex. 2138). Apple neglects to address the specific limitations of
`
`the Substitute Claims. Substitute Claims 34 and 36-40 are addressed to a subscriber
`
`station, which requires (1) storing unique identifying codes, (2) having operating
`
`instructions capable of revision, and (3) being capable of communicating unique
`
`codes to a remote station. Substitute Claim 35 contains further limitations by
`
`
`
`1
`
`
`
`
`
`storing specific identifying data at the subscriber station. Apple’s critical failure is
`
`not identifying an alleged “abstract idea”. The reason for this omission is simple.
`
`The Substitute Claims define patent eligible subject matter.
`
`Apple contends that the Substitute Claims lack inventive concepts, thus
`
`failing Alice/Mayo Step 2 - relying solely on its argument that the invention’s
`
`individual elements are known in the art. PMC submits the declaration of Prof.
`
`Weaver from the district court, describing the state of data communication in the
`
`1980’s, and explaining that the techniques recited in claims 4, 7, 13, 21 and 28-30
`
`of the ’635 Patent were not conventional at that time. (Ex. 2137 at 6-16). Apple’s
`
`contention must fail as Judge Payne’s uncontested Report from the district court and
`
`Prof. Weaver’s declaration clearly supports the non-conventionality of the claims.
`
`B.
`
`Substitute Claims are Patentable Over 35 U.S.C. §112
`
`Apple cites Facebook for the proposition a “mere citation in a table to various
`
`portions of the original disclosure” is insufficient support for amendment.
`
`Facebook, Inc. v. EveryMD LLC, IPR2014-00242, 2015 WL 2268210 (P.T.A.B.
`
`May 12, 2015). In fact, the Board in Facebook did review the table, but found
`
`support missing. Specification support is the foundation for enablement of claims
`
`(35 U.S.C. § 112 ¶1). Apple then makes unsubstantiated attacks on the declaration
`
`of Dr. Dorney, calling him “not an expert in the field” and “not a PHOSITA at the
`
`time of the invention.” (Paper 24 at 6). Dr. Dorney’s declaration details his
`
`
`
`2
`
`
`
`
`
`expertise in signal processing, the focal point of the ’635 Patent and its title. (Ex.
`
`2130; Ex. 1052 at 125:1-126:11). Being a POSA at the time of the invention is not
`
`required, only “the capability of understanding the scientific and engineering
`
`principles applicable to the pertinent art.” (MPEP § 2141.03).
`
`Apple cites Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, Paper 46 at
`
`24 (P.T.A.B. Sept. 17, 2014) for the proposition PMC is inviting the Board to do its
`
`work. PMC relies on Example #7 for Substitute Claims 34-35, 37- 40, Example #4
`
`for Substitute Claim 36, and disclosure of the functionality of the apparatus
`
`(specification beginning) that supports all embodiments. (Ex. 2130 at ¶14). There
`
`are no “extensive modifications” in the amendments wherein the “combination with
`
`all the other claim limitations” is difficult to “piece together.” (Respironics, Paper
`
`46 at 24).
`
`Apple argues the original language in the claims is unsupported by the
`
`specification. On the contrary, in claim 2, “the decrypted control signal portion” is
`
`the result (producing key Aa) of decrypting the “2nd-WSW-program-enabling-
`
`message (#7)”, even if local data is used. Apple reads-in limitations to claim 2 that
`
`are not present. (Ex. 2130 at pp. 31-34; Ex. 1052 at 99:2-15). Alternatively, the
`
`second decryptor 231 may be expanded to include circuitry, such as EOFS valve
`
`39H, which directly receives “the decrypted control signal portion” from decryptor
`
`39K. (Ex. 2130 at 31). In claim 35, the received execution segment of the message
`
`
`
`3
`
`
`
`
`
`
`
`is used by the processor to identify which key (Z or J) is needed to decode the
`
`message, and thus is “a second control signal portion”, not the pre-stored key (J or
`
`Z) itself. (Ex. 2130 at 52-53; Ex 2135 at 198:30-199:2; Ex, 1052 at 105:6-106:2).
`
`For claim 36, Apple misreads the claim. (Ex. 2130 at 73-77). The message in
`
`Example #4 contains both an execution segment (“a first of said plurality of
`
`signals”) that sets key Z for use in decryption, and a distinct encrypted program
`
`instruction set (“a second of said plurality of signals”). (Ex. 2130 at 62, 73-74).
`
`The “first” and “second” are different signals, therefore, supporting the claim.
`
`The requirement of “indicative of successful … decrypting” in amended
`
`claim 36 is supported by “to account for the use of the information … and bill
`
`subscribers.” The content must be decrypted to be used in Example #4. (Ex. 2130
`
`at 88-91; see also Ex. 2135 at 197:26-198:9). The original language in claim 37,
`
`and its dependents, are supported because the claimed “transmission” is the
`
`entirety of the program and the enabling information, which may all be received on
`
`the same channel 13. (Ex. 2135 at 249:6-14, 258:30-33, 290:26-29). The “unique
`
`digital code capable of identifying said first processor” identifies signal processor
`
`200, containing control processor 20 (Ex. 2135 at 202:9, Fig. 2), and is separate
`
`from “a second processor” (decryptor 107). Controller 20 has a preprogrammed
`
`unique digital code. (Ex. 2135 at 244:7-10).
`
`The declaration (Ex. 2130 at ¶14) provides full support for the Substitute
`
`4
`
`
`
`
`
`Claims; however, additional embodiments also provide support. (Ex. 2140 at ¶9).
`
`C. Claim Construction
`
`Apple posits “a unique digital code identifying a source of said
`
`[programming/data unit]” is not the BRI because PMC states that the code must
`
`identify “the producer” of programming and “these limitations are neither
`
`supported by the claim language nor required by the specification.” (Paper 24 at
`
`14). On the contrary, the specifications list the types of information contained in
`
`meter-monitor segments. A source, origin, or supplier is a different and separately
`
`listed code than the program or content. (Ex. 2135 at 49:25-50:26, 50:29-32; Ex.
`
`2050 at 31:9-11). The “source” of programming or content should not be confused
`
`with the programming or content itself. This limitation is fully supported by both
`
`the ’413 and ’510 specifications. (Exs. 2135, 2050).
`
`D.
`
`Substitute Claims are Patentable over Guillou, Sechet, and
`Campbell
`
`For claim 34, Apple argues the use of a microprocessor implies the claimed
`
`“operating instructions that are capable of being revised.” At least some operating
`
`instructions must be available at power-up to control a microprocessor. These
`
`operating instructions are stored in nonvolatile memory; however, read only
`
`memory (ROM) storage allows only one-time programmability. (Ex. 2136 at 5; Ex.
`
`2141 at 103). Campbell teaches the memory associated with microprocessor 410 is
`
`only internal ROM and ROM 420. (Ex. 1023 at 14:29-15:26, Figs. 6-7). Guillou is
`5
`
`
`
`
`
`
`
`silent as to both a microprocessor and memory in K restoring circuit 110 at the
`
`receiver station. The K restoring circuit 110 could be fixed function logic, which is
`
`not “capable of being revised.” Apple’s expert highlights the word “programmed”
`
`but fails to note the citation relates to the emitting centre (using an Intel 8080
`
`processor), not the claimed “subscriber station.” Next, Apple argues Campbell
`
`teaches the claimed “communicating said second unique digital code to a remote
`
`site … unaccompanied by any non-digital information transmission.” (Paper 24 at
`
`15-16). First, Apple ignores the Board’s claim construction for “unaccompanied by
`
`any non-digital information transmission.” (Paper 8 at 9-10, 23-25). Campbell
`
`teaches a color burst oscillating pulse 722 to synchronize color decoding circuitry.
`
`(Ex. 1023 at 10:7-26, 28:3-17, Fig. 2B). Campbell teaches “a relatively inexpensive
`
`and simple cable communication system having the capability of transmitting data
`
`signals in a video format”. (Ex. 1023 at 4:25-28, Fig. 2B, emphasis added).
`
`Campbell’s digital packet (including full-channel shown in Ex. 1023 at 28:18-32,
`
`Figs. 2B, 14) is transmitted with a “non-digital information transmission”, contrary
`
`to the Substitute Claims. Second, in Campbell’s full-channel, data-only two-way
`
`communications, the programming lacks the claimed “encrypted audio”, which
`
`must be “presented”, according to claim 2. Campbell never even suggests that the
`
`upstream connection is all-digital, and only teaches data transmission in a video
`
`format. Finally, Campbell teaches and desires, with regards to full-channel
`
`
`
`6
`
`
`
`
`
`transmission, a simple design without need for “expensive receivers and other
`
`equipment” (Ex. 1023 at 32:15-30), while Guillou / Sechet advocate the addition of
`
`other equipment that adds cost and lacks simplicity as a physical card is needed;
`
`hence, Campbell teaches away from Guillou / Sechet.
`
`For claim 35, Guillou teaches a user may purchase keys for a selected
`
`duration. (Ex. 1006 at 8:15-38). At most, 22 keys are available to all users for a
`
`given month. Nothing in the key is specific to a user, as the cards may be used with
`
`any terminal, passed to other users (e.g., as a gift), and may have many cards with
`
`exactly the same keys stored. No information stored on the cards is information
`
`particular to a customer, such as a stock portfolio, family size, dietary preferences,
`
`or house address as taught by Harvey et al. (Ex. 2050 at 37:5-31, 38:29-39:2; Ex.
`
`2135 at 474:2-35, 485:14-21). Apple has not argued, nor can it, that Campbell
`
`teaches “a second control signal portion used to decrypt the first control signal
`
`portion” as originally claimed. Nor does Campbell teach “encrypted digital control
`
`signal portion” and an “encrypted digital information portion” as required by claim
`
`2. Campbell’s video is a scrambled, analog signal using an unscramble code
`
`transmitted in the clear. Campbell does not teach that teletext is scrambled. (Ex.
`
`1023 at Abstract). Again, Campbell teaches away from Guillou / Sechet. (Supra
`
`claim 34).
`
`For claim 36, as explained for claim 34 (supra), Guillou and Campbell fails
`
`
`
`7
`
`
`
`
`
`to show or suggest a receiver station is controlled by operating instructions that may
`
`be revised. Guillou fails to suggest a code identifying the receiver station. (Paper
`
`24 at 17-18). Campbell teaches away from Guillou / Sechet. (Supra claim 34).
`
`Campbell teaches digital data transmitted in the video format, which necessarily
`
`includes a “non-digital information transmission.” (Ex. 1023 at Fig. 2B, supra claim
`
`34). Claim 36 requires the receiver station “initiating transmission … [of] said
`
`unique digital codes”, where the digital codes comprise codes identifying “a data
`
`unit.” Campbell discloses what information is transmitted, and omits this claim
`
`limitation. (Ex. 1023 at 24:29-28:2). Note, selection of pay-per-view content is
`
`requested only by the channel, not the claimed “data unit.” (Ex. 1023 at 26:21-32).
`
`Contrary to Apple’s expert’s declaration, Campbell already maintains billing
`
`records absent a teaching of the Substitute Claim limitations. (Ex. 1055 ¶54).
`
`For claims 37-39, as in claim 34 (supra), neither Guillou nor Campbell teach
`
`revisable operating instructions, nor should they be combined, and Guillou does not
`
`teach a unique code identifying a first processor. As in claim 36 (supra), Guillou
`
`does not teach transmitting any of the claimed codes, let alone both codes; and
`
`Campbell fails to teach at least transmitting a code identifying “a data unit”, and
`
`transmission “unaccompanied by any non-digital information transmission.”
`
`For claim 40, Campbell completely fails to show or suggest transmission
`
`“unaccompanied by any non-digital information transmission” (supra claim 34),
`
`
`
`8
`
`
`
`
`
`and teaches away from adding more/expensive circuitry to allow data transmission
`
`other than that disclosed. (Ex. 1023 at 32:15-30, 34:35-35:9).
`
`E.
`
`Substitute Claims are Patentable over Aminetzah
`
`For claims 37-39, Apple argues Aminetzah’s teaching of using software is
`
`sufficient to suggest “operating instructions that are capable of being revised”
`
`(Paper 24 at 20); however, as seen in other references (supra claim 34), one-time
`
`programmable memory (ROM) may be used. (Ex. 2136 at 5; Ex. 2141 at 103).
`
`Aminetzah is silent as to software revision, and any method to revise software
`
`would not yield predictable results. (MPEP 2143). Distributed systems like decoder
`
`boxes risk being made inoperable if a revision has an error; no mechanism exists to
`
`swap parts; and customer dissatisfaction occurs (plus expense) if a box is replaced.
`
`Furthermore, Aminetzah completely omits any mention of the claimed “source of
`
`said data unit”, let alone a transmission of the same. Apple’s expert premises his
`
`argument on an unsupported need. Aminetzah provided a complete billing system
`
`including pay-per-view without the need for “source” information. (Ex. 1008 at
`
`5:64-67). Also, Aminetzah teaches polling initiated by the DDC (data collection
`
`center) to the HT (home terminal), not the claimed “initiating a transmission” by the
`
`receiver station. (Ex. 1008 at 5:44-48). Polling must occur because the DCC must
`
`know what SN to use for decryption, the opposite of a query-driven system that the
`
`claim requires. In Aminetzah, faults or tampering indications are merely stored at
`
`
`
`9
`
`
`
`
`
`the HT for when the DCC initiates communication. (Ex. 1008 at 6:51-68).
`
`F.
`
`Substitute Claims are Patentable Over Seth-Smith
`
`The Seth-Smith and Jeffers references are not prior art as they post-date the
`
`Nov. 3, 1981 priority of the parent ’510 application. Apple questions the 1981
`
`priority date for the Substitute Claims. The Board already held that claims 21, 28-
`
`30 have 1981 priority in a related institution decision in IPR2016-01520. (Ex. 2139
`
`at 18-19). PMC independently demonstrated that all Substitute Claims are fully
`
`supported by both the 1981 and 1987 Applications (Ex. 2130 at ¶14, Ex. 2140 at
`
`¶9). As to Substitute Claims 34 and 35, the only limitation the Board questioned
`
`in IPR2016-01520 was to “programming.” PMC fully explained in its Rehearing
`
`Petition in IPR2016-01520 why the limitation to “programming” in these claims
`
`was supported in both specifications. (Ex. 2142). The Patent Owner’s complete
`
`explanation of the support for the “programming” limitation in both specifications
`
`is not foreclosed by the Petition’s denial on March 31, 2017. (Ex. 2143).
`
`For the Substitute Claims, Seth-Smith teaches, “it is highly undesirable that a
`
`continuous uplink or landline connection be provided” (Ex. 1046 at 9:38-40, 10:19-
`
`27, 17:45-66, 27:34-58), thus failing to even suggest “[communicating / contacting]
`
`… a remote [site / station]”. Seth-Smith teaches away from a user station uplink,
`
`such as Campbell or Jeffers, which teach an uplink accompanied by a non-digital
`
`information transmission. Furthermore, the “memory patch[es]” referenced by
`
`
`
`10
`
`
`
`
`
`Apple in Seth-Smith (Paper 24 at 23) update an address or fault conditions, neither
`
`of which are instructions, not meeting the claimed revisable “operating
`
`instructions.” The microprocessor 114 “software [cannot be] … altered without
`
`destroying it” (Ex. 1046 at 26:50-53), and no other memory exists to store revised
`
`operating instructions; therefore, Seth-Smith fails to even suggest “operating
`
`instructions capable of being revised.” Apple argues Seth-Smith teaches “ROM
`
`117 stores the microprogram.” (Id. at 27:49-51). ROM is one-time programmable,
`
`unable by definition “of being revised.” (Ex. 2136 at 5; Ex. 2141 at 103).
`
`Claim 2 requires “presenting said programming”, while dependent Substitute
`
`Claim 34 requires “programming further includes encrypted video and encrypted
`
`audio.” (Ex. 2130 at ¶14). Apple argues teletext is the programming for claim 2
`
`(Paper 24 at 22), but teletext lacks presenting audio. (Ex. 2100). If Apple points to
`
`the scrambled video and audio in Seth-Smith, then the “digital information portion”
`
`(i.e., teletext) is not “present[ed]” as required by claim 34, dependent on claim 2.
`
`Seth-Smith teaches pay-per-view and record keeping using its one-way system.
`
`(Paper 24 at 23-24; Ex. 1046 at 9:38-40, 10:19-27, 17:45-66, 27:34-58). Note, the
`
`“telephone system” (Ex. 1046 at 10:19-27) is for voice conversations between the
`
`customer and broadcaster.
`
`Claim 36 requires a “subscriber station” “decrypting … said plurality of
`
`signals is embedded with executable instructions.” (Ex. 2130 at ¶14). “Executable
`
`
`
`11
`
`
`
`
`
`instructions” at a subscriber station are not for a field location (Ex. 1046 at 11:54-
`
`63, Fig. 1A for 314A with 320) also known as an intermediate transmission station
`
`(ITS) by Harvey et. al. (Ex. 2135 at 12:18-21), or a single bit source switch request
`
`(Ex. 1046 at 19:22-27) or an address data or key data used by a program already
`
`running (id. at 29:6-30:5) as Apple argues. These transmissions only cause an
`
`activity because executable instructions are already running and ready to detect
`
`these requests or data. As above for claim 34, Seth-Smith fails to teach the capacity
`
`to revise operating instructions, any subscriber station transmission, let alone one
`
`initiated by the subscriber station, and digital data indicative of successful
`
`decrypting and codes identifying a data unit and source.
`
`G.
`
`Substitute Claims are Patentable Over Other Prior Art
`
`Apple throws out Exhibits 1008 and 1048-1051 as additional prior art;
`
`however, these references fall woefully short and were already considered by PMC.
`
`They all fail even to suggest a plurality of claim limitations from a list including
`
`revisable operating instructions, data identifying a source of the programming or a
`
`processing apparatus, initiating a transmission [that indicates successful decryption]
`
`[unaccompanied by any non-digital information transmission], generating a query,
`
`information particular to a customer, and encrypted digital information portion.
`
`III. CONCLUSION
`
`If all issued claims are deemed unpatentable, the motion should be granted.
`
`
`
`12
`
`
`
`
`
`
`
`Dated: April 13, 2017
`
`Respectfully submitted,
`
`
`
`/ Thomas J. Scott, Jr. /
`By
`Thomas J. Scott, Jr.
`Registration No.: 27,836
`Senior Vice President & General Counsel
`
`Personalized Media
`Communications, LLC
`
`11491 Sunset Hills Road, Suite 340
`Reston, Virginia 20190
`Telephone: (281) 201-2213
`tscott@pmcip.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND And
`EXHIBITS 2136-2144
`
`was served on April 13, 2017 to the following attorneys of record by electronic
`transmission:
`
`Marcus E. Sernel, Joel R. Merkin, and Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: (312) 862-2000; F: (312) 862-2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`Gregory S. Arovas
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`P: (212) 446-4800; F: (212) 446-4900
`greg.arovas@kirkland.com
`
`Date: April 13, 2017
`
`
`
`/ Thomas J. Scott, Jr. /
`Thomas J. Scott, Jr.
`
`
`
`
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
