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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`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
`
`
`PETITIONER’S SUR-REPLY IN OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
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`I.
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`II.
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`TABLE OF CONTENTS
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`Substitute Claims 34-35 Are Not Supported by the Specification. ........... 1
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`Substitute Claim 36 Is Not Supported by the Specification. ..................... 3
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`III. Substitute Claims 37-40 Are Not Supported by the Specification. ........... 5
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`In its Motion to Amend, PMC fails to present the necessary evidence that the
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`proposed substitute claims are supported by the specification pursuant to 35 U.S.C.
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`§ 112. Paper 24 at 5-7. To attempt to cure this deficiency, PMC submitted a new,
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`143-page declaration (Ex. 2140, “Dorney Reply Declaration”) that offers new
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`citations to the specification and removes alleged support identified in a
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`previously-submitted declaration (Ex. 2130, “Dorney Declaration”). PMC also
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`improperly attempts to incorporate the Dorney Reply Declaration by reference into
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`its Reply, citing over 135 pages of claim charts in a single conclusory cite (Paper
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`27 at 4-5 (citing Ex. 2140 ¶ 9)), and fails to provide any explanation in its Reply as
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`to how the revised citations to the specification demonstrate that the substitute
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`claims satisfy § 112 (Paper 24 at 5-7). Despite these attempts to circumvent the
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`Board’s rules, the Dorney Reply Declaration still fails to demonstrate that the
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`substitute claims are supported by the specification.
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`I.
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`Substitute Claims 34-35 Are Not Supported by the Specification.
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`Nearly all of the disclosure from the ’413 Application that the Dorney Reply
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`Declaration cites in support of Substitute Claims 34 and 35 is new. Compare Ex.
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`2140 at 4-36, 50-61 with Ex. 2130 at 9-41, 52-55. For example, where the first
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`Dorney Declaration identifies “2nd-WSW-program-enabling-message (#7)” as the
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`claimed “first encrypted digital control signal portion” (Ex. 2130 at 31-32; Ex.
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`1052 at 94:9-13), the Dorney Reply Declaration identifies “local-cable-enabling-
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`1
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`message (#7)” (Ex. 2140 at 11-17).
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`The originally-cited disclosure fails to support the claims (see Paper 24 at 7-
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`8), and the newly-cited disclosure fails too. The ’413 Application never describes
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`local-cable-enabling message (#7) as encrypted. In fact, Dr. Dorney himself
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`previously submitted a declaration to this Board that explicitly stated that “[l]ocal-
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`cable-enabling-message (#7) is unencrypted digital information.” Ex. 2144
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`(IPR2016-00755, Ex. 2130) at 12, 23, 34 (emphasis added). As such, local-cable-
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`enabling message (#7) cannot possibly support the claimed “encrypted digital
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`control signal portion.” The ’413 Application also fails to describe the decryption
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`of local-cable-enabling message (#7), leaving unsupported the limitation of Claim
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`2 that requires “decrypting said first encrypted digital control signal portion of said
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`programming.”
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`To attempt to rectify what is lacking from local-cable-enabling message
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`(#7)—which, as its name implies, appears in example #7—Dr. Dorney cites
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`disclosures pertaining to the “first message of example #4.” See Ex. 2140 at 11-15
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`(citing Ex. 2135 at 198:10-29), 25-28 (citing Ex. 2135 at 198:10-199:2, 205:5-13,
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`206:32-34), 52-53 (citing Ex. 2135 at 198:10-29, 198:30-199:2). In doing so, Dr.
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`Dorney improperly equates local-cable-enabling message (#7) and the first
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`message of example #4, relying on a sentence that states that a matrix switch has
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`the capacity “to cause the transfer of the information of [local-cable-enabling
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`2
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`message (#7)] to controller, 20, in the fashion in which information of first
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`message of example #4 is transferred … to decryptor, 39K.” Ex. 2140 at 12-13
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`(quoting Ex. 2135 at 291:33-292:6). But this language simply explains the role
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`“matrix switch, 39I” plays in the transit of the two messages. It does not support
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`equating local-cable-enabling message (#7) and the first message of example
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`#4, as Dr. Dorney suggests, particularly given that the sentence states that the
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`information of local-cable-enabling message (#7) is transferred to “controller,
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`20,” unlike the first message of example #4, which is transferred to “decryptor,
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`39K.” Ex. 2135 at 291:33-292:6. Nothing in the language cited by Dr. Dorney
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`implies that local-cable-enabling message (#7) is encrypted or decrypted.
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`II.
`
`Substitute Claim 36 Is Not Supported by the Specification.
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`The Dorney Reply Declaration adds more than 10 pages of additional
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`disclosure from the ’413 Application purporting to support Substitute Claim 36, a
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`clear admission that PMC did not identify sufficient support in its Motion to
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`Amend or original Dorney Declaration. Compare Ex. 2140 at 61-103 with Ex.
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`2130 at 60-96. For example, the Dorney Declaration fails to identify both a “first
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`of said plurality of signals” that causes a change in decryption technique and a
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`“second of said plurality of signals” decrypted “on the basis of said changed
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`decryption technique,” because it identifies the first message of example #4 as both
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`the first and second of said plurality of signals. See Paper 24 at 9-10.
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`3
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`
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`The Dorney Reply Declaration adds numerous citations to unrelated portions
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`of the ’413 Application. See, e.g., Ex. 2140 at 74 (citing 46:8-16, 48:16-29), 86
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`(citing 292:35-293:4), 89-91 (citing 524:8-12, 516:16-28, 516:29-517:296), 96-97
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`(citing 294:30-295:3), 100-01 (citing 297:3-19, 310:33-311:9). Despite these
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`additional citations, the Dorney Reply Declaration still does not show that the ’413
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`Application discloses both a first and a second of said plurality of signals, as
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`claimed. Instead, PMC omits details and draws arbitrary lines to suggest that the
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`cited disclosures illustrate distinct first and second signals. They do not.
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`The Dorney Reply Declaration also includes newly added disclosure and
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`subheadings pertaining to the ’510 Application. Compare Ex. 2140 at 61-98 with
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`Ex. 2130 at 60-96. This new evidence cites disclosures from numerous unrelated
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`embodiments, and fails to explain how the ’510 Application supports Substitute
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`Claim 36. A sentence in the Dorney Reply Declaration attempts to map disclosure
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`from “The French Chef” embodiment to the claim limitation which recites “said
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`digital data indicative of successful operation of said decrypting ....” Ex. 2140 at
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`96-97. But PMC does not show that “The French Chef” embodiment discloses all
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`claim limitations, citing nothing from this embodiment in support of the “changing
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`a decryption technique,” “passing said decrypted second of said plurality of signals
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`to a controllable device,” and “said at least one information transmission further
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`comprises unique digital codes …” limitations. In instances where PMC does
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`4
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`claim to find support, the disclosure does not bear scrutiny. For example, there is
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`simply no disclosure in that embodiment of a decrypted signal “embedded with
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`executable instructions.”
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`III. Substitute Claims 37-40 Are Not Supported by the Specification.
`The portions of the ’413 Application that the Dorney Reply Declaration
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`identifies as supporting Substitute Claim 37—and, by extension, dependent
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`Substitute Claims 38-40—are also almost entirely new. Compare Ex. 2140 at 103-
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`33 with Ex. 2130 at 97-125. Where the first Dorney Declaration identifies “2nd-
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`WSW-program-enabling-message #7” as the claimed “first portion of said
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`encrypted materials” (Ex. 2130 at 106-08; Ex. 1052 at 109:5-14), the Dorney
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`Reply Declaration identifies “local-cable-enabling-message (#7)” (Ex. 2140 at
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`109-14). But, as explained above with regard to Substitute Claims 34 and 35, the
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`’413 Application provides no evidence that local-cable-enabling message (#7) is
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`either encrypted or decrypted. As such, the cited disclosures do not provide written
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`description support under § 112 for the limitations of Substitute Claims 37-40
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`which recite “decrypting … a first portion of said encrypted materials in said
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`transmission,” “inputting said first portion of said encrypted materials to a
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`decryptor,” or “decrypting … a second portion of said encrypted materials based
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`on said step of decrypting said first portion of said encrypted materials.”
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`5
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`
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-00754
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`Date: May 17, 2017
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`Respectfully submitted,
`
`
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel (Reg. No. 55,606)
`Joel R. Merkin (Reg. No. 58,600)
`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
`
`Attorneys For Petitioner
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`6
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
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`PETITIONER’S SUR-REPLY IN OPPOSITION TO PATENT OWNER’S
`
`CONTINGENT MOTION TO AMEND was served on May 17, 2017 to the
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`following attorneys of record by electronic transmission:
`
`Douglas Kline
`GOODWIN PROCTER LLP
`Exchange Place, 53 State Street
`Boston, Massachusetts 02109
`dkline@goodwinlaw.com
`DG-PMC-Apple@goodwinprocter.com
`
`Jennifer Albert
`Stephen Schreiner
`Krupa K. Parikh
`April E. Weisbruch
`GOODWIN PROCTER LLP
`901 New York Avenue N.W.
`Washington, D.C. 20001
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`kparikh@goodwinlaw.com
`aweisbruch@goodwinlaw.com
`DG-PMC-Apple@goodwinprocter.com
`
`
`
`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`14090 Southwest Freeway, Suite 450
`Sugar Land, TX 77478
`tscott@pmcip.com
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`
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel
`
`
`
`
`
`Date: May 17, 2017
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