`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————
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`APPLE INC.,
`
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`
`Patent Owner.
`
`—————
`
`Case IPR2016-00754
`Patent 8,559,635
`
`—————
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`
`
`
`ACTIVE/101525692.1
`
`
`
`
`NOTICE OF APPEAL TO THE FEDERAL CIRCUIT
`
`IPR2016-00754
`Patent 8,559,635
`
`
`Notice is hereby given, pursuant to 35 U.S.C. §§ 141 and 142 and 37 C.F.R.
`
`§ 90.2, that Patent Owner Personalized Media Communications, LLC (“PMC”)
`
`hereby appeals to the United States Court of Appeals for the Federal Circuit from
`
`the Final Written Decision (FWD) entered on September 19, 2017 (Paper 41), the
`
`Decision on Request for Rehearing (RfR) entered on September 19, 2019 (Paper
`
`43), and from all underlying orders, decisions, rulings, and opinions, regarding
`
`claims 4, 7, 13, 21 and 28-301 (“Challenged Claims”) of U.S. Pat. No. 8,559,635
`
`(“the ’635 Patent”).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner further states
`
`that the issues on appeal include, but are not limited to:
`
`(1) Whether the Board erred as a matter of law in construing “decrypt,”
`
`“encrypt” and related terms—as used in claim limitations such as “decrypting said
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`encrypted digital information portion of said programming” including “encrypted
`
`video” (claim 4), “decrypting a second of said plurality of [detected] signals”
`
`(claim 13), “decrypting . . . a second portion of said encrypted materials” (claim
`
`21)—to encompass deciphering through the descrambling of analog information
`
`such as analog television signals, rather than being limited exclusively to the
`
`
`1 Claims 1 and 2 were included in the petition but were later disclaimed by PMC.
`
`1
`
`
`
`deciphering of digital information signals.
`
`IPR2016-00754
`Patent 8,559,635
`
`
`(2) Whether the Board erred as a matter of law in disregarding multiple
`
`instances of prosecution disclaimer presented in the prosecution of the ’635 Patent
`
`and related patents “that limit ‘decrypt’ to operations on digital data and exclude
`
`operations on analog information.”
`
`(3) Whether the Board erred in construing “encrypted video” in claim 4
`
`as requiring “non-static imagery” that “requires moving visuals” but then applying
`
`a different construction in finding that the claim term is met by teletext characters
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`and simple graphics in U.S. Pat. No. 4,337,483 (“Guillou”) and U.S. Pat. No.
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`4,388,643 (“Aminetzah”) without any showing that they are non-static imagery
`
`with moving visuals.
`
`(4) Whether the Board incorrectly held that claims 7, 21, and 29 are
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`anticipated by Guillou.
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`(5) Whether the Board incorrectly held that claims 4, 13, 28, and 30 are
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`obvious based on Guillou.
`
`(6) Whether the Board incorrectly held that claims 21 and 28-30 are
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`obvious based on Aminetzah.
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`(7) Whether the Board incorrectly held that claim 4 is obvious based on
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`Aminetzah in view of U.S. Pat. No. 3,743,767 (“Bitzer”).
`
`(8) Whether, in arriving at its decision, the Board acted in a manner that
`
`2
`
`
`
`was arbitrary, capricious, an abuse of discretion, or otherwise not in accordance
`
`IPR2016-00754
`Patent 8,559,635
`
`
`with law, or based on factual findings unsupported by substantial evidence.
`
`(9) Whether the appointment of the Administrative Patent Judges (APJs)
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`who presided over the inter partes review was unconstitutional, requiring at a
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`minimum vacatur of that panel’s rulings and decisions and remand to a new panel
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`of APJs, pursuant to Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed.
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`Cir. Oct. 31, 2019).
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`Concurrently with this submission, a copy of this Notice of Appeal is being
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`filed with the Patent Trial and Appeal Board, and a copy is being filed
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`electronically with the United States Court of Appeals for the Federal Circuit along
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`with the requisite filing fee. No fees are believed to be due to the United States
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`Patent and Trademark Office in connection with this filing, but authorization is
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`hereby given for any required fees to be charged to Deposit Account No. 50-6989.
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`Dated: November 19, 2019
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`Respectfully submitted,
`
`
`
`
`
`
`/Douglas J. Kline/
`
`By:
`
`Douglas J. Kline
`GOODWIN PROCTER LLP
`100 Northern Ave.
`Boston, MA 02210
`(617) 570-1000
`
`Ce Li
`GOODWIN PROCTER LLP
`1900 N Street, NW
`
`3
`
`
`
`IPR2016-00754
`Patent 8,559,635
`
`
`Washington, DC 20036
`(202) 346-4000
`
`Attorneys for Patent Owner
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-00754
`Patent 8,559,635
`
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was served on
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`November 19, 2019, via email, to attorneys for Petitioner:
`
`
`
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory Arovas
`KIRKLAND & ELLIS LLP
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`greg.arovas@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`The undersigned certifies that, in addition to being filed electronically
`
`
`
`through the Patent Trial and Appeal Board End to End (PTAB E2E) system on
`
`November 19, 2019, a true and correct copy of the foregoing PATENT
`
`OWNER’S NOTICE OF APPEAL was served November 19, 2019, on the
`
`Director of the United States Patent and Trademark Office at the following
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`address:
`
`
`
`
`
`
`
`The undersigned also certifies that a true and correct copy of the foregoing
`
`IPR2016-00754
`Patent 8,559,635
`
`
`PATENT OWNER’S NOTICE OF APPEAL was filed electronically on
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`November 19, 2019, with the United States Court of Appeals for the Federal
`
`Circuit.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Douglas J. Kline/
`
`Douglas J. Kline
`Goodwin Procter LLP
`100 Northern Ave.
`Boston, MA 02210
`(617) 570-1000
`
`
`
`
`
`
`
`
`
`
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