UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2016-00754
`Patent No.: 8,559,635
`For: Signal Processing Apparatus and Methods
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`PATENT OWNER PERSONALIZED
`MEDIA COMMUNICATIONS’ PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`D.
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`V.
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`INTRODUCTION ........................................................................................... 1
`I.
`THE ’635 PATENT ......................................................................................... 3
`II.
`III. GROUNDS AT ISSUE ................................................................................... 5
`IV. CLAIM CONSTRUCTION AND THE PERSON OF
`ORDINARY SKILL IN THE ART ................................................................. 6
`A.
`“Decrypt” and related terms .................................................................. 7
`B.
`“Processor” (Claims 18, 21, and 33) ................................................... 13
`C.
`“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 18,
`20, 32 and 33) ...................................................................................... 16
`“Communicating said control signal to said remote
`transmitter station” .............................................................................. 17
`“Executable instructions” (Claim 13) ................................................. 18
`E.
`PETITIONER FAILS TO SHOW A “REASONABLE
`LIKELIHOOD” THAT IT WILL PREVAIL ................................................ 19
`A. Aminetzah Fails to Render Claims 3, 21, 28, 29, and
`30 Obvious .......................................................................................... 19
`1. Claims 3, 21, 28, 29, and 30: Encryption of
`Programming .............................................................................. 22
`Independent Claim 3: “receiving a control signal
`which operates at the remote transmitter station
`to control the communication of a unit of
`programming and one or more first instruct
`signals” ....................................................................................... 24
`Independent Claim 3: “transmitting from said
`remote transmitter station an information
`transmission comprising said unit of
`programming, said one or more first instruct
`signals, and said one or more second instruct
`signals” ....................................................................................... 24
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`2.
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`3.
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`i
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`4.
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`6.
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`B.
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`5.
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`Independent Claim 3: “said one or more first
`instruct signals being transmitted in accordance
`with said control signal” ............................................................. 26
`Independent Claim 21: “receiving a transmission
`comprising encrypted materials” and
`“decrypting under first processor control a first
`portion of said encrypted materials in said
`transmission” .............................................................................. 27
`Independent Claim 21: “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” ............................................................ 28
`7. Dependent Claim 28 ................................................................... 29
`8. Dependent Claim 29 ................................................................... 30
`9. Dependent Claim 30 ................................................................... 30
`Aminetzah, in view of Bitzer, Fails to Render Claims
`4, 7, 18, 20, and 33 Obvious ................................................................ 31
`1. Claims 4, 7, 18, 20, and 33: Encryption of
`Digital Programming .................................................................. 32
`Independent Claims 18, 20, and 33: “Receiving
`at least one encrypted digital information
`transmission, wherein the [/said] at least one
`encrypted digital information transmission is
`unaccompanied by any non-digital information
`transmission” .............................................................................. 37
`Independent Claims 18 and 33: “controlling a
`decryptor that decrypts encrypted digital data to
`decrypt in a specific fashion on the basis of said
`code [/downloadable code]” ....................................................... 38
`Independent Claims 18 and 33: “passing said
`[downloadable] code to a processor” ......................................... 39
`Independent Claim 20: “said at least one
`decrypted signal embedded with at least one
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`2.
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`3.
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`4.
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`5.
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`ii
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`6.
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`2.
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`3.
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`C.
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`instruct signal which is effective to instruct;
`controlling said controllable device on the basis
`of decrypted information included in said at least
`one decrypted instruct signal” .................................................... 39
`Independent Claim 33: “selecting, by processing
`selection criteria, a first signal” .................................................. 40
`7. Dependent Claim 4 ..................................................................... 41
`8. Dependent Claim 7 ..................................................................... 41
`Guillou Fails to Anticipate Claims 3, 7, 21 and 29 ............................. 42
`1.
`Independent Claim 3: “communicating said
`control signal to said remote transmitter station” ....................... 43
`Independent Claim 3: “receiving a control signal
`which operates at the remote transmitter station
`to control the communication of a unit of
`programming and one or more first instruct
`signals” ....................................................................................... 44
`Independent Claim 3: “said one or more first
`instruct signals being transmitted in accordance
`with said control signal” ............................................................. 45
`4. Dependent Claim 7 ..................................................................... 46
`5.
`Independent Claim 21: “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” .................................................................................... 46
`Independent Claim 21: “decrypting under first
`processor control a first portion of said
`encrypted materials in said transmission” .................................. 48
`D. Guillou Fails to Render Obvious Claims 4, 15, 18, 20,
`28, 30, 32 and 33 ................................................................................. 49
`1.
`Independent Claims 18, 20, 32, 33: “Receiving
`at least one encrypted digital information
`transmission, wherein the [/said] at least one
`encrypted digital information transmission is
`unaccompanied by any non-digital information
`transmission” .............................................................................. 49
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`6.
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`iii
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`2.
`3.
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`4.
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`Independent Claim 13: “executable instructions” ...................... 51
`Independent Claims 18 and 33: “passing said
`code [/downloadable code] to a processor” ................................ 55
`Independent Claim 18: “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” ....................................................................................... 56
`Independent Claim 20: “said at least one
`decrypted signal embedded with at least one
`instruct signal which is effective to instruct;
`controlling said controllable device on the basis
`of decrypted information included in said at least
`one decrypted instruct signal” .................................................... 56
`6. Dependent Claim 28 ................................................................... 56
`7. Dependent Claim 30 ................................................................... 57
`8.
`Independent Claim 33: “selecting, by processing
`selection criteria, a first signal of said plurality
`of signals including downloadable code” ................................... 59
`9. Dependent Claim 4 ..................................................................... 60
`VI. CONCLUSION .............................................................................................. 61
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`5.
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`iv
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`TABLE OF AUTHORITIES
`
`Cases
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .............................................................. 7
`
`Cisco Systems, Inc.,
`IPR2014-00454 ..................................................................................... 50
`
`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb 06, 2009) ................. 19
`
`Ex Parte Personalized Media Commc’ns,
`No. 2008-4228, 2008 WL 5373184 (B.P.A.I. Dec. 19, 2008) .............. 11
`
`Ex. Parte Personalized Media Commc’ns, LLC,
`No. 2009-6825, 2010 WL 200346 (B.P.A.I. Jan. 19, 2010) ................. 12
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`Case No. IPR2013-00183 (July 31, 2013) ............................................ 34
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ............................................................ 35
`
`In re Gordon,
`733 F.2d 900, 221 U.S.P.Q. 1125 (Fed. Cir. 1984) .............................. 26
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ................................................................ 25
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 19
`
`MBO Laboratories, Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007) ............................................................ 13
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ........................................................ 7, 14
`
`Normal v. Andrew Trust,
`IPR2014-00283 (June 18, 2015) ........................................................... 34
`
`v
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`

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`Omega Engineering, Inc., v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................ 12
`
`Purdue Pharma L.P. v. Depomed, Inc.,
`2016 WL 11161229 (Fed. Cir. Mar. 24, 2016) ..................................... 29
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................ 20
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................. 42
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ...................................................... 19, 29
`
`
`Rules
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`37 C.F.R. § 1.68 ......................................................................................... 6
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`37 C.F.R. § 42.120 ..................................................................................... 6
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`37 C.F.R. § 42.6 ....................................................................................... 50
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`37 C.F.R. 1.321 ...................................................................................... 1, 6
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`vi
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`

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`EXHIBIT LIST
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`Description
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`Declaration of Alfred Weaver, PH.D. Pursuant to 37 C.F.R. § 1.68
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`Curriculum Vitae of Alfred Weaver
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`Ex Parte Personalized Media Commc’ns, LLC, No. 2009-6825, 2010 WL
`200346 (B.P.A.I. Jan. 19, 2010)
`
`Excerpt of Special Master’s Report and Recommendation, Personalized
`Media Commc’ns, LLC v. Scientific-Atlanta, Inc. et al., No. 1:02-CV-824
`(N.D. Ga. Mar. 1 2005)
`
`Ex Parte Personalized Media Commc’ns, No. 2008-4228, 2008 WL
`5373184 (B.P.A.I. Dec. 19, 2008)
`
`Reply Brief in Reexamination Control Nos. 90/006,563 and 90/006,698
`(Nov. 10, 2008)
`
`Anthony Wechselberger, Encryption: A Cable TV Primer (Oak
`Communications Inc. 1983)
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`Transcript of Deposition of Mr. Wechselberger, Amazon, Inc. v.
`Personalized Media Commc’ns, LLC, IPR2014-01532 (June 9, 2015)
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`Appeal Brief, In Re Reexamination of U.S. Patent No. 4,965,825, Reexam
`No. 90/006,536 of U.S. Patent No. 4,965,825 (January 29, 2007)
`
`Order dated May 15, 2003, from Judge Gregory Sleet in Personalized
`Media Commc’ns, LLC v. DirecTV, et al. (D. Del. C.A. No. 00-1020)
`
`Expert Declaration Of Anthony J. Wechselberger dated September 16,
`2002 in Broadcast Innovation, LLC v. Echostar Communications Corp
`(D. CO: 01-WY-2201 AJ)
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`Excerpt of IEEE Standard Dictionary of Electrical and Electronics Terms
`(1984) (Definition of “execution (software)”)
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`J. Free, High-Resolution TV–Here Come Wide-Screen Crystal-Clear
`Pictures, Popular Science, November 1981, pp. 108-110.
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`No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`

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`2014
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`2015
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`2016
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`2017
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`2018
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`Claim Construction Order, Personalized Media Commc’ns v. Zynga, Inc.,
`No. 2:12-CV-68-JRG-RSP (August 28, 2013)
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`Final Decision, Amazon, Inc. v. Personalized Media Commc’ns LLC,
`IPR2014-01532, Paper 57 (March 29, 2016)
`
`Prosecution History of U.S. Patent Appl. No. 08/449,431 (U.S. Patent No.
`8,559,635)
`
`Computer Security and The Data Encryption Standard, National Bureau
`of Standards, U.S. Department of Commerce, NBS Publ. 500-27 (1978)
`
`Excerpt of Joint Claim Construction Chart, Personalized Media
`Commc’ns, LLC v. Apple, Inc. 2:15-cv-01366-JRG-RSP, Dkt. No. 172-2
`(June 16, 2016)
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`
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`

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`I.
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`INTRODUCTION
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`Patent owner Personalized Media Communications LLC (“PMC”) submits
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`this preliminary response to the petition for inter partes review of claims 3-4, 7,
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`13, 18, 20, 21, 28-30, 32, and 331 (the “Challenged Claims”) of U.S. Pat. 8,559,635
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`(the “’635 patent”), filed by Apple Inc. (“Petitioner”) on March 14, 2016 (Paper
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`No. 1, or “Petition”). The Petitioner has failed to show a reasonable likelihood that
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`it will prevail on at least one Challenged Claim as set forth in detail below.
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`None of the Petition’s invalidity grounds are new: all three references were
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`before the examiner during prosecution. It is not at all surprising then that these
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`references fail to teach or suggest multiple limitations of the Challenged Claims.
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`For instance, each Challenged Claim requires decryption of digital programming
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`transmissions, a feature not found anywhere in the Aminetzah reference.
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`Aminetzah’s descrambling of analog information is distinct from the ’635 Patent’s
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`decryption, which, as shown by the specification, the claims, and the conventional
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`understanding of those skilled in the art, requires the processing of digital
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`information. The applicants made this distinction unequivocally clear when they
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`expressly disclaimed descrambling from the scope of the claimed invention during
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`prosecution of the application that issued as the ’635 Patent.
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`1 Claims 1 and 2 of the ’635 patent are disclaimed pursuant to 37 C.F.R. 1.321(a).
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`See Section III, infra.
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`1
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`The Aminetzah, Guillou and Bitzer references also fail to teach or suggest
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`claims 18, 20, 32 and 33’s reception of an encrypted all-digital information
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`transmission, where the transmission “is unaccompanied by any non-digital
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`information transmission.” The prior art’s “full-channel” teletext transmissions
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`not only include analog components, but these non-digital components are
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`functionally essential to these prior art systems. Without any teaching or
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`suggestion in the prior art, it is not at all obvious how a person of ordinary skill in
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`the art could have arrived at the claimed invention.
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`As another striking example that illustrates the depth of the shortcomings in
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`the cited references and allegations raised by the Petition, Petitioner argues that the
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`Guillou reference explicitly discloses claim 3’s requirement of “communicating
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`said control signal to said remote transmitter station.” But, as the reference clearly
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`shows, the alleged control signal is generated at the remote transmitter station.
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`Petitioner attempts to obscure these and other deficiencies of the prior art by
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`glossing over the limitations of the claims with vague, conclusory assertions.
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`Petitioner’s “analysis” is often nothing more than a citation to Petitioner’s expert
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`declaration, improperly incorporating by reference entire sections of new
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`arguments. Indeed, the majority of the prior art references that Petitioner’s expert
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`relies upon as alleged evidence of obviousness are never even mentioned in the
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`2
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`petition.2
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`Petitioner has failed to establish a reasonable likelihood that it will prevail in
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`establishing the invalidity of at least one claim as set forth below.
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`II. THE ’635 PATENT
`The ’635 patent discloses a programming transmission and receiving system
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`with access control. Ex. 1003 at 144:1-161:21; Ex. 2001 ¶¶32-45. The ’635
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`patent’s access control system uses multiple decryption keys (e.g., Aa, Ba, Ca) and
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`multiple decryption algorithms (e.g., A, B, and C) for the decryption of encrypted
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`video and audio. Not only is the video and audio encrypted, but so are the
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`decryption keys. The decryption keys may be encrypted and transmitted with the
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`programming transmission so that they must be decrypted before they can be used
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`to decrypt the programming. Moreover, the instructions that are transmitted to
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`cause the decryption are themselves encrypted, thus requiring that they be
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`decrypted before they are loaded and executed.
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`In Example #7, a cable head end sends a transmission of digital video and
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`2 Petitioner misleadingly cites to an improper notice of abandonment issued during
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`prosecution of the ’635 patent. Pet. at 9. The notice of abandonment was later
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`withdrawn by the Office because the paper—not PMC’s conduct—was improper
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`and required the Examiner’s SPE to repudiate the Examiner’s conduct and the
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`notice. Ex. 2016 at 982.
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`3
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`

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`digital audio to the receiver station. The digital audio is singly-encrypted using
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`key Ca and encryption algorithm C while the digital video is doubly-encrypted
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`using key Ba with algorithm B and key Aa with algorithm A. Ex. 1003 at 146:7-
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`19; 149:23-31. The cable head end transmits a series of instruction messages
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`called “SPAM messages,” which cause authorized receiver stations to receive and
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`decrypt the digital television content. Ex. 2001 ¶42. These instructions are also
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`encrypted to offer additional security. Only stations having a key J can process
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`them. Ex. 1003 at 145:40-47. Each SPAM message may include executable
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`instructions generated at cable head ends.
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`The receiver station decrypts the instructions, loads the instructions into
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`RAM, and executes the instructions as a computer program using a processor. Ex.
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`1003 at 146:25-30. In Example #7, a receiver station receives a first SPAM
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`message, decrypts the message, and executes the content of the message to enable
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`the station to decrypt the digital audio content. Ex. 1003 at 152:10-18.
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`Specifically, the receiver station’s signal processor 200 selects the audio
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`decrypting key Ca from the received digital audio content and the audio decryptor
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`uses the key Ca to decrypt the audio content using algorithm C. Ex. 1003 at
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`152:30-51; Ex. 2001 ¶43.
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`The receiver station extracts a second SPAM message contained in the
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`decrypted audio. This second SPAM message is an instruction to perform the first-
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`4
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`stage digital video decryption. When executed, the second SPAM message causes
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`the receiver station to execute an algorithm embedded in the message that
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`identifies a memory location of a key Ba previously stored at the receiver station.
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`Ex. 1003 at 153:35-154:28. Using this algorithm, the signal processor 200
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`retrieves the decryption key Ba and a first-stage video decryptor decrypts the video
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`using the decryption key and a decryption algorithm B. Id. at 154:28-58; Ex. 2001
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`¶44.
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`A third SPAM message is embedded in the decrypted video. This third
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`SPAM message is an instruction to perform the second-stage digital video
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`decryption. Ex. 1003 at 157:22-35. Execution of the third SPAM instruction
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`causes the receiver station to execute an algorithm that uses that station’s ID data
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`to compute a decryption key Aa, which is used by second-stage video decryptor
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`231 for the final stage of decryption of the video using a decryption algorithm A.
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`Id. at 158:22-42; Ex. 2001 ¶45.
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`The prior art cited by Petitioner lacks many of the novel features of the
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`claimed invention and fails to render the claimed invention unpatentable.
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`III. GROUNDS AT ISSUE
`The Petitioner bears the burden of proof to demonstrate that there is a
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`reasonable likelihood that Petitioner would prevail as to at least one claim being
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`challenged.
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`5
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`

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`As an initial matter, Patent Owner has dedicated claims 1 and 2 of the ’635
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`Patent to the public by disclaiming claims 1-2 pursuant to 37 C.F.R. 1.321(a) in a
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`submission filed with the U.S. Patent Office on June 24, 2016. Therefore, claims 1-
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`2 are no longer in controversy before the Board. The remaining claims, including
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`claims 4 and 9 (which depend from claim 2), remain at issue and are challenged on
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`the following grounds by the Petitioner:
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`# Claims
`1 3, 7, 21, 29
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`Prior Art
`U.S. Patent No. 4,337,483
`(Ex. 1006 “Guillou”)
`2 4, 13, 18, 20, 28, 30, 32, 33 Guillou
`3 3, 21, 28, 29, 30
`Aminetzah
`(Ex. 1008, “Aminetzah”).
`Aminetzah in view of U.S. Patent No.
`3,743,767 to Bitzer (Ex. 1009, “Bitzer”)
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`4 4, 7, 18, 20, and 33
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`Statute
`§ 102
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`§ 103
`§ 103
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`§ 103
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`This Response is submitted pursuant to 37 C.F.R. § 42.120. With this
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`Response, PMC submits the Declaration of Dr. Alfred Weaver, Ph. D. under 37
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`C.F.R. § 1.68. Ex. 2001. Dr. Weaver is a computer scientist and professor with
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`extensive experience in the field of computer science and electrical engineering,
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`including computer communications and microprocessor systems which includes
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`cryptographic systems. Dr. Weaver’s declaration addresses certain opinions and
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`testimony that Petitioner’s expert Mr. Wechselberger submitted in his declaration.
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`IV. CLAIM CONSTRUCTION AND THE PERSON OF ORDINARY
`SKILL IN THE ART
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`It is well established that determining whether a patent claim is rendered
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`6
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`obvious in view of prior art involves a two-step process: first, the claim terms
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`must be construed, and second, the construed claim must be applied to the prior art.
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`In the claim construction step, a claim term is presumptively accorded its “ordinary
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`and customary meaning” in the art, and then that meaning is tested against the
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`specification for concordance or modification. CCS Fitness, Inc. v. Brunswick
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`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).)
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`Under the broadest reasonable construction standard, claims are presumed to
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`be given their ordinary and customary meaning as would be understood by “one of
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`ordinary skill in the art” and “should always be read in light of the specification
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`and teachings in the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789
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`F.3d 1292, 1298 (Fed. Cir. 2015). In this case, this means that the claims of the
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`’635 Patent are construed from the perspective of a person of ordinary skill in the
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`art with at least a bachelor’s degree or equivalent in digital electronics, electrical
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`engineering, computer engineering, computer science, or a related technical
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`degree, with 2-5 years of post-degree work experience in system engineering (or
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`equivalent) (hereinafter, “POSITA”). Ex. 2001 ¶31.
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`“Decrypt” and related terms
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`A.
`The claims of the ’635 patent recite steps of decrypting encrypted signals
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`and programming and the use of decryptors. A POSITA, in view of the ’635
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`Patent, would understand “decrypt” and similar terms to mean to “use a digital key
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`7
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`

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`in conjunction with an associated mathematical algorithm to decipher (render
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`intelligible or usable) digital data.” Ex. 2001 ¶47. This definition excludes the
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`processes of deciphering non-digital data, including descrambling of an analog
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`television transmission. Id.
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`The ’635 patent discloses systems that use decryptors “well known in the
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`art” in 1981 that decipher digital data using digital keys and algorithms. Ex. 1003
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`at 16:40-45. The patent describes a “Decryptor, 10, … a standard digital
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`information decryptor, well known in the art, that receives signals from
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`buffer/comparator, 8, and under control of said controller, 20, uses conventional
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`decryptor techniques, well known in the art, to decrypt said signals as required.”
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`Ex. 1003 at 16:40-45. In response to receiving digital information, the decryptor
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`10 begins “decrypting it using said key J information and transferring it to
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`controller, 12, as quickly as controller, 12, accepts it.” Id. at 77:10-38; Ex. 2001
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`¶¶51-54.
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`It was well known in the art by 1981 that decryptors, such as those used in
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`the ’635 patent, were devices that deciphered digital information, not non-digital
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`information like analog transmissions. Ex. 2001 ¶54. Several “encryption” and
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`“decryption” standards were established in the 1970s and early 1980s, all of which
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`set forth methods of enciphering digital data using digital keys and an associated
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`mathematical algorithm. For example, the National Bureau of Standards (NBS)
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`established the Data Encryption Standard (DES) in 1977, which used:
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`a Key Generator (KG) in the conventional method of enciphering … a
`bit stream. The data bit stream is presented to the modulo-2 adder
`simultaneously with a pseudorandom bit stream produced by the
`KG. Each data bit and key bit produces a cipher bit which is
`transmitted via the communications channel. At the receiving device,
`the inverse process occurs.
`Ex. 2017 at 40 (emphasis added).
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`Scrambling, in contrast, was understood to involve the deciphering of analog
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`information. The ’635 Patent explicitly distinguished descrambling from
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`decrypting based on the type of data being deciphered (analog vs. digital):
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`Various scrambling means are well known in the art for scrambling,
`usually the video portion of analogue television transmissions in
`such a fashion that only subscriber stations with appropriate
`descrambling means have capacity to tune suitably to the television
`transmissions . . . Encryption/decryption means and methods, well
`known in the art, can regulate the reception and use of, for example,
`digital video and audio television transmissions, digital audio radio
`and phonograph transmissions, digital broadcast print transmission,
`and digital data communications.
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`Ex. 1003 at 144:7-19, emphasis added;3 Section II (Example #7), supra; Ex. 2001
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`¶49. Petitioner’s own reference, Aminetzah, recognizes this distinction and
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`describes scrambling as involving the inversion of analog signal lines. Ex. 2001
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`¶55; Ex. 1008 at 1:23-29 (scrambling is the “inversion of selected groups of video
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`signal lines”). Thus, the distinction between decryption and descrambling
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`described by the ’635 patent and, as understood in the art in 1981, could not be
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`clearer: decryption relates to deciphering digital data, whereas descrambling
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`relates to deciphering analog data. Ex. 1003 at 144:7-19; Ex. 2001 ¶¶50-52.
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`While the inventors’ preferred embodiments protected digital data through
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`decryptors that deciphered digital signals and programming, the inventors also
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`recognized that these decryption (digital) components could be replaced with
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`descrambling (analog) components in order to decipher analog transmissions in the
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`alternative. In such an alternative embodiment, the analog descramblers would
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`decipher analog signals:
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`It is obvious to one of ordinary skill in the art that the foregoing is
`presented by way of example only and that the invention is not to be
`unduly restricted thereby since modifications may be made in the
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`
`3 At deposition for IPR2014-01532, regarding a related patent sharing the same
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`specification, Mr. Wechselberger agreed that this passage distinguished
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`encryption/decryption from scrambling/descrambling. Ex. 2008 at 132:20-133:13.
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`structure of the various parts without functionally departing from
`the spirit of the invention. . . . 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.
`Ex. 1003 at 160:40-55. Thus, in one alternative embodiment, where the
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`transmission is conventional analog television, the decryptors 107, 224, and 231
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`could be replaced with “conventional descramblers.” These descrambling
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`(analog) components would “descramble analog television transmissions.” Ex.
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`2001 ¶72. Nowhere does this passage suggest that the inventors considered
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`decryption to include descrambling. Id. at ¶¶56, 72-73.
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`This Board and district courts, having reviewed the same specification, have
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`found the specification to describe “decrypting” as patentably distinct from
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`descrambling. In one of the prior decisions, the Board stated:
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`We agree with Appellant that ‘encryption,’ as it would have been
`commonly defined by one of ordinary skill in the art at the time of
`filing, requires a “digital” signal … We conclude that ‘encryption’
`and ‘decryption’ are not broad enough to read on ‘scrambling’ and
`‘unscrambling.
`Ex. 2005, Ex Parte Personalized Media Commc’ns, No. 2008-4228, 2008 WL
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`5373184, at 53-43 (B.P.A.I. Dec. 19, 2008); Ex. 2010 at 2. The Board arrived at
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`the same conclusion in a separate case. Ex. 2003, Ex. Parte Personalized Media
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`Commc’ns, LLC, No. 2009-6825, 2010 WL 200346, at 68-69 (B.P.A.I. Jan. 19,
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`2010).
`
`
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`Even if the ordinary understanding of decryption held by a POSITA in 1981
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`were determined to encompass descrambling—a premise that PMC submits is
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`unsupported by the intrinsic evidence and the understanding of those in the art—
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`the doctrine of prosecution disclaimer applies in this case to exclude descrambling
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`from the scope of the claimed invention. It is well established that “where the
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`patentee has unequivocally disavowed a certain meaning to obtain his patent, the
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`doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of
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`the claim congruent with the scope of the surrender.” Omega Engineering, Inc., v.
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`Raytek Corp., 334 F.3d 1314, 1323-24 (Fed. Cir. 2003).
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`During prosecution of the application that lead to the ’635 patent, the
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`applicants unequivocally disclaimed descrambling from the scope of the invention,
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`asserting that the claims’ requirement of decryption was “not broad enough to read
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`on scrambling and unscrambling” and encryption was limited to processing of
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`“digital” information. Ex. 2016 at 1330. The applicants further distinguished the
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`prior art from the claims because it described descrambling, rather than the
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`encrypting set forth in the claims:
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`Applicants note that “encryption” is not disclosed anywhere in the
`specification of Davidson, only in the claims added via reissue.
`Davidson describes scrambling video signals and converting analog
`audio signals to coded digital audio signals, but does not teach or
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`suggest “encryption” as claimed in the instant application and
`understood by the Board.
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`Id.; MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330
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`(Fed. Cir. 2007) (“Prosecution arguments … which draw distinctions between the
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`patented invention and the prior art are useful for determining whether the patentee
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`intended to surrender territory, since they indicate in the inventor's own words
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`what t