`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`
`______________
`
`Case: IPR2016-00754
`Patent No. 8,559,635
`______________
`
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND THE CLAIMS
`UNDER 37 C.F.R. § 42.121(c)
`
`
`
`

`

`TABLE OF CONTENTS
`I. STATEMENT OF RELIEF REQUESTED .................................................... 1
`II.
`INTRODUCTION .......................................................................................... 1
`III. LISTING OF AMENDMENTS .................................................................... 9
`IV. SUPPORT FOR THE SUBSTITUTE CLAIMS ......................................... 9
`V. CLAIM CONSTRUCTION .........................................................................13
`A. “a digital information transmission unaccompanied by any non-digital
`information transmission.”....................................................................................13
`B. “a unique digital code capable of identifying a signal processing
`apparatus”…………… .........................................................................................13
`C. “a unique digital code identifying a source of said programming” .................14
`VI. THE SUBSITUTE CLAIMS ARE PATENTABLE UNDER 35 U.S.C.
`§101… ......................................................................................................................14
`A. The Substitute Claims Are Statutory ...........................................................14
`VII. THE SUBSTITUTE CLAIMS ARE NOT ANTICIPATED BY THE
`PRIOR ART ...........................................................................................................17
`VIII. THE SUBSTITUTE CLAIMS ARE NOT ANTICIPATED BY THE
`PRIOR ART ...........................................................................................................18
`IX. THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS OVER THE
`PRIOR ART ...........................................................................................................18
`A. The Prior Art Does Not Disclose “encrypted video and encrypted audio,
`wherein said subscriber station comprises memory in which a first unique digital
`code capable of identifying a signal processing apparatus is stored, said signal
`processing apparatus at least in part controlled by operating instructions that are
`capable of being revised, wherein said programming further comprises a second
`unique digital code identifying a source of said programming, said second unique
`digital code is stored at said subscriber station, and wherein said subscriber
`station is capable of communicating said second unique digital code to a remote
`site through a digital information transmission unaccompanied by any non-digital
`information transmission.” accompanied by at least one other element of the
`claims. ...................................................................................................................19
`B. The Prior Art Does Not Disclose “wherein said subscriber station stores data
`including information particular to a customer and stores data identifying a
`source of said programming” accompanied by at least one other element of the
`claims. ...................................................................................................................20
`
`
`
`

`

`C. The Prior Art Does Not Disclose “controlling said controllable device on the
`basis of said embedded executable instructions of said passed decrypted second
`of said plurality of signals, wherein said receiver station comprises memory in
`which a first unique digital code capable of identifying a signal processing
`apparatus is stored, said signal processing apparatus at least in part controlled by
`operating instructions that are capable of being revised, wherein said at least one
`information transmission further comprises unique digital codes identifying a
`data unit and a source of said data unit, said unique digital codes are stored at
`said receiver station, and wherein said receiver station is capable of initiating a
`transmission of digital data to a remote station unaccompanied by any non-digital
`information transmission, said digital data indicative of successful operation of
`said decrypting and comprising at least in part said unique digital codes.”
`accompanied by at least one other element of the claims. ...................................21
`D. The Prior Art Does Not Disclose “wherein said receiver station comprises
`memory in which a first unique digital code capable of identifying said first
`processor is stored, said first processor at least in part controlled by operating
`instructions that are capable of being revised, wherein said transmission further
`comprises unique digital codes identifying a data unit and a source of said data
`unit, said unique digital codes are stored at said receiver station, and wherein said
`receiver station is capable of initiating communication of digital data with a
`remote station using a digital information transmission unaccompanied by any
`non-digital information transmission, said digital data comprising at least in part
`said unique digital codes.” accompanied by at least one other element of the
`claims. ...................................................................................................................22
`E. The Prior Art Does Not Disclose “contacting a remote transmitter station to
`receive one of said transmission and said signal necessary for decryption using a
`digital information transmission unaccompanied by any non-digital information
`transmission, wherein said receiver station is capable of generating a query to
`retrieve data using a digital information transmission unaccompanied by any
`non-digital information transmission.” accompanied by at least one other element
`of the claims. .........................................................................................................23
`F.
`The Invention Would Not Have Been Obvious. .........................................24
`X. PATENT OWNER IS NOT AWARE OF OTHER MATERIAL PRIOR
`ART. ........................................................................................................................25
`XI. CONCLUSION .............................................................................................25
`
`
`
`
`
`
`
`
`
`

`

`Ex. No.
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`2011.
`
`LIST OF EXHIBITS
`
`Description
`
` Declaration of Alfred Weaver, Ph.D. Pursuant to 37 C.F.R. § 1.68
`
` Curriculum Vitae of Alfred Weaver
`
` 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)
`
` Examiner’s Answer in Reexamination Control Nos. 90/006,563
`and 90/006,698 (Sep. 24, 2008)
`
` Anthony Wechselberger, Encryption: A Cable TV Primer (Oak
`Communications Inc. 1983)
`
` Transcript of Deposition of Mr. Wechselberger, Amazon, Inc. v.
`Personalized Media Commc’ns, LLC, IPR2014-01532 (June 9,
`2015)
`
` Appeal Brief (Reexam No. 90/006,536 of U.S. Patent No.
`4,965,825)
`
` 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)
`
`2012.
`
` Excerpt of IEEE Standard Dictionary of Electrical and Electronics
`Terms (1984) (Definition of “execution (software)”)
`
`2013.
`
`
`
`J. Free, High-resolution TV–here come wide-screen crystal-clear
`
`
`
`
`

`

`pictures, Popular Science, November 1981, pp. 108-110.
`
` Claim Construction Order, Personalized Media Commc’ns v.
`Zynga, Inc., No. 2:12-CV-68-JRG-RSP (August 28, 2013)
`
` 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
`
` 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)
`
` Declaration of Alfred Weaver in support of Patent Owner’s Non-
`Preliminary Response
`
` Declaration of Thomas Scott in support of Patent Owner’s Non-
`Preliminary Response
`
` U.S. Patent No. 4,390,898 to Bond
`
` Bronwyn H. Hall, Adam Jaffe, and Manuel Trajtenberg, Market
`Value and Patent Citations, 36 RAND J. ECON. 16, 29-30 (2005)
`
` Christopher A. Cotropia, Mark Lemley, and Bhaven Sampat, Do
`Applicant Patent Citations Matter? 31 n. 13 (April 24, 2012)
`(Stanford Law and Economics Olin Working Paper No. 401)
`
` Patent portfolio management and patent evaluation – FAQ,
`European Patent Office (2011)
`
` Claim Construction Order, Personalized Media Commc’ns, LLC v.
`Apple, Inc. 2:15-cv-01366-JRG-RSP, Dkt. No. 246 (October 25,
`2016)
`
` U.S. Patent No. 8,752,088
`
`
`
`Joint Claim Construction Chart, Personalized Media Commc’ns,
`
`2014.
`
`2015.
`
`2016.
`
`2017.
`
`2018.
`
`2019.
`
`2020.
`
`2021.
`
`2022.
`
`2023.
`
`2024.
`
`2025.
`
`2026.
`
`2027.
`
`
`
`
`
`

`

`LLC v. Zynga. (Dkt. 87)
`
` PMC’s Opening Claim Construction Brief, Personalized Media
`Commc’ns, LLC v. Zynga (Dkt. 77)
`
` PMC’s Reply Brief, Personalized Media Commc’ns, LLC v. Zynga
`(Dkt. 86)
`
` Personalized Media Commc’ns, LLC v. Amazon, Inc., IPR2014-
`01532, Paper 57 (March 29, 2016)
`
` Appeal Brief, Reexamination Control Nos. 90/006,563 and
`90/006,698 (Aug. 16, 2006)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
`Intentionally left Blank
` Wang, et al., Exploring Legal Patent Citations for Patent
`
`Valuation, Proceedings of the 23rd ACM International Conference
`on Conference on Information and Knowledge Management, 2014,
`pp. 1379-1388
` Cox, Using Citation Analysis to Value Patents, January 2016,
`
`Financier Worldwide
` Ocean Tomo Patent Quality Inventor Study, OCEAN TOMO, Apr.
`
`2011
` Patent Application Ser. No. 06/317,510
`
`
` U.S. Patent 4,965,825
`
` U.S. Patent 4,233,628 (“Ciciora”)
`
`2028.
`
`2029.
`
`2030.
`
`2031.
`
`2032.
`2033.
`2034.
`2035.
`2036.
`2037.
`2038.
`2039.
`2040.
`2041.
`2042.
`2043.
`2044.
`2045.
`2046.
`2047.
`
`2048.
`
`2049.
`
`2050.
`2051.
`2052.
`
`
`
`
`
`

`

`2053.
`2054.
`
`2055.
`2056.
`2057.
`
`2058.
`2059.
`
`2060.
`
`2061.
`
`2062.
`
`2063.
`
`2064.
`
`2065.
`2066.
`
`2067.
`2068.
`2069.
`2070.
`
`2071.
`
` CBS Rulemaking Petition to FCC (“CBS”) (1980)
`
`
` Blatt et al., “The Promise of Teletext for Hearing-Impaired
`Audiences,” IEEE Transactions on Consumer Electronics, Vol.
`CE-26:717-722 (November 1980) (“Blatt”)
` U.K. Patent 1,370,535 (“Millar”)
`
`
` U.S. Patent 4,306,250 (“Summers”)
`
` Chambers, “Enhanced UK Teletext Moves Towards Still
`Pictures,” BBC Research Department Report BBC RD 1980/4,
`June 1980, reprinted in IEEE Transactions on Consumer
`Electronics, Vol. CE-26: 527-554 (August 1980)
` U.S. Patent 4,538,174 (“Gargini”)
`
`
` Crowther, “Teletext and Viewdata Systems and Their Possible
`Extension To Europe and USA,” IEEE Transactions on Consumer
`Electronics, Vol. CE-25:288-294 (July 1979)
` Gunn & Harper, “A Public Broadcaster’s View of Teletext in the
`
`United States,” March 26-28, 1980 Conference, London
` Hedger et al., “Telesoftware – Value Added Teletext,” IEEE
`
`Transactions on Consumer Electronics, Vol. CE-26:555-567
`(August 1980) (“Hedger”)
` Viewdata and Videotext 1980-81: A Worldwide Report, Transcript
`
`of Viewdata ’80 Conference, London, March 26-28, 1980
` Ciciora et al, “An Introduction To Teletext and Viewdata With
`
`Comments on Compatibility,” IEEE Transactions on Consumer
`Electronics, Vol. CE-25:235-245 (“Ciciora article”)
` E.C. Sedman, The Use of MicroCobol for Telesoftware,
`
`VIDEOTEX, VIEWDATA, & TELETEXT – A TRANSCRIPT
`OF THE ONLINE CONFERENCE ON VIDEOTEX,
`VIEWDATA, & TELETEXT (Online Publications Ltd., 1980)
`(“Sedman”)
` U.S. Patent 4,751,578 (“Reiter”)
`
`
` Fedida, Viewdata 1, Wireless World, Vol. 83:32-36 (February
`1977)
` Fedida, Viewdata 2, Wireless World, Vol. 83:52-54 (March 1977)
`
`
` Fedida, Viewdata 3, Wireless World, Vol. 83:65-69 (April 1977)
`
` Fedida, Viewdata 4, Wireless World, Vol. 83:55-59 (May 1977)
`
` Gecsei, Jan, The Architecture of Videotex Systems, Prentice-Hall,
`Inc., 1983
` Daniel Nachbar, When Network File Systems Aren’t Enough:
`
`Automatic Software Distribution Revisited, USENIX Association
`
`
`
`
`
`

`

`2072.
`2073.
`2074.
`
`2075.
`2076.
`2077.
`
`2078.
`
`2079.
`
`2080.
`
`2081.
`2082.
`2083.
`2084.
`
`2085.
`2086.
`2087.
`
`2088.
`
`2089.
`
`2090.
`
`2091.
`2092.
`2093.
`
`2094.
`
`Summer Conference Proceedings, 1986
` U.S. Patent No.4,788,637 (“Tamaru”)
`
`
` U.S. Patent No. 4,558,413 (“Schmidt”)
`
` John Hedger, Telesoftware, Wireless World (November 1978)
`(“Hedger”)
` U.S. Patent No. 4,138,718 (“Toke”)
`
`
` U.S. Patent No. 4,359,631 (“Lockwood”)
`
` The NABU Network Specification 50-90020490 (June 8, 1984)
`(“NABU Specification”)
` John Hughes, The NABU Concept – Distributed Data Processing
`
`Via Cable Networks, CCTA 1982 Convention (June 1982)
`(“Hughes”)
` NABU Personal Computer User’s Guide (Nabu Manufacturing
`
`Corp., 1983) (“the NABU Guide”)
` Virtual Inventory: Electronic Distribution of Software, RELease
`
`1.0 (September 12, 1983) (formerly The Rosen Electronic
`Newsletter) (“Rosen”)
` U.S. Patent No. 4,025,851 (“Haselwood”)
`
`
` U.S. Patent No. 4,660,170 (“Hui”)
`
` U.S. Patent No. 4,658,093 (“Hellman”)
`
` Peter Heinicke, et al., A Multiple Node Software Development
`Environment, IEEE Transactions on Nuclear Science, Vol. NS-34,
`No. 4 (August 1987) (“Heinicke”)
` U.S. Patent No. 4,245,245 (“Matsumoto”)
`
`
` U.S. Patent No. 4,099,024 (“Boggs”)
`
` European Patent Application No. EP0166441 (published January
`2, 1986) (“Caine”)
` Kuo-Sheng Hsiao, Download Remote Node Using Ethernet
`
`Bootstrap (1984) (“Hsiao”)
` Gregor Bochmann, Towards Videotext Standards, Viewdata and
`
`Videotext, 1980–81: A Worldwide Report (1980) (“Bochmann”)
` Finlayson, Bootstrap Loading using TFTP, Network Working
`
`Group Request for Comments: 906 (1984) (“Finlayson”)
` U.S. Patent No. 4,337,483 (“Guillou”)
`
`
` U.S. Patent No. 4,352,011 (“Guillou ’011”)
`
` International Patent Application No. WO 80/01636 (“Guillou
`PCT”)
` DES Modes of Operation, Federal Information Processing
`
`Standards Publication 81), U.S. Dept. of Commerce, Nat’l Bureau
`
`
`
`
`
`

`

`2095.
`
`2096.
`2097.
`2098.
`2099.
`2100.
`
`2101.
`
`2102.
`2103.
`2104.
`2105.
`2106.
`2107.
`2108.
`2109.
`
`2110.
`
`2111.
`
`2112.
`
`2113.
`
`2114.
`2115.
`
`2116.
`2117.
`
`of Standards (Dec. 2, 1980) (“FIPS PUB 81”)
` Data Encryption Standard, Federal Information Processing
`
`Standards Publication 81), U.S. Dept. of Commerce, Nat’l Bureau
`of Standards (Jan. 15, 1977) (“FIPS PUB 46”)
` U.S. Patent No. 4,172,213 (“Barnes”)
`
`
` U.S. Patent No. 4,182,933 (“Rosenblum”)
`
` U.S. Patent No. 4,556,904 (“Monat”)
`
` U.S. Patent No. 4,805,134 (“Calo”)
`
` Broadcast Teletext Specification, , published by British
`Broadcasting Corporation et al. (September 1976)
` Videotex/Teletext Presentation Level Protocol Syntax, North
`
`American PLPS (“NAPLPS” Standard) (December 1983)
` U.S. Patent No. 4,739,510 (“Jeffers”)
`
`
` U.S. Patent No. 4,536,791 (“Campbell”)
`
` U.S. Patent No. 2,843,655 (“Gottfried”)
`
` U.S. Patent No. 3,211,830 (“Sargent”)
`
` U.S. Patent No. 4,068,264 (“Pires”)
`
` U.S. Patent No. 3,924,059 (“Horowitz”)
`
` U.S. Patent No. 3,886,302 (“Kosco”)
`
` Chris Powell, Prestel: the opportunity for advertising,
`VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE
`REPORT (“Powell”)
` Robert C. Moore, Home Information Systems: A Primer (July
`
`1981) (“Moore”)
` J.F. Courtney, Videotel: An Extension of the Use of the Display
`
`Equipment of a Prestel TV set for the Travel Industry,
`VIDEOTEL, VIEWDATA AND VIDEOTEXT 1980-81:
`AWORLDWIDE REPORT (“Courtney”)
` R. F. Park, The Role of Viewdata in Electronic Funds Transfer,
`
`VIEWDATA AND VIDEOTEXT 1980-81: AWORLDWIDE
`REPORT (“Park”)
` Waring, Cox’s INDAX System – Delivering Future Two-Way
`
`Cable Services Today, Videotex ’81 (“Waring”)
` The Viewtron Handbook (1983) (“Viewtron Handbook”)
`
`
` Viewtron: A Service of the Future for American Homes
`(“Viewtron Brochure”)
` Viewtron Magazine & Guide (1983) (“Viewtron Magazine”)
`
`
` Varadharajan, Some Cryptographic Techniques for Secure Data
`Communication, Plymouth Polytechnic, 1984 (“Varadharajan”)
`
`
`
`
`
`

`

`2118.
`2119.
`
`2120.
`
`2121.
`
`2122.
`
`2123.
`
`2124.
`2125.
`
`2126.
`2127.
`2128.
`
`2129.
`2130.
`
`2131.
`
`2132.
`
`2133.
`
`2134.
`
`2135.
`
` Lewiston Daily Sun, March 27, 1984
`
`
` The Micro Cookbook User’s Guide and Reference Booklet (1984)
`(“Cookbook Guide”)
` Brian G. Champness, Social Uses of Videotex, VIDEOTEX ’81
`
`INTERNATIONAL CONFERENCE & EXHIBITION (Online
`Conferences Ltd., May 20, 1981) (“Champness”)
` Leslie T. Mapp, Telesoftware for Beginners, JOURNAL OF
`
`EDUCATIONAL TELEVISION AND OTHER MEDIA, Vol. VII,
`Issue No. 1 (Spring 1981)
` David Shnaider, Taking Videotex to Market: The CBS Role in the
`
`Joint CBS/AT&T Ridgewood Trail, VIDEOTEX ’83
`INTERNATIONAL CONFERENCE & EXHIBITION (1983)
`(“Shnaider”)
` Sollins, The TFTP Protocol (Revision 2), Network Working Group
`
`Request for Comments: 783 (1981) (“Sollins”)
` U.S. Patent No. 4,547,851 (“Kurland”)
`
`
` THE TELIDON BOOK (David Godfrey & Ernest Chang eds.,
`1981) (“The Telidon Book”)
` U.S. Patent No. 5,270,922 (“Higgins”)
`
`
` U.S. Patent No. 4,439,784 (“Furukawa”)
`
` Robert M. Metcalfe & David R. Boggs, Ethernet: Distributed
`Packet Switching for Local Computer Networks, 19 COMM. OF
`THE ACM 395 (1976) (“Metcalfe”)
` CV of Timothy D. Dorney
`
`
` Declaration Of Timothy D. Dorney, Ph.D., In Support Of Patent
`Owner’s Contingent Motion to Amend
` Personalized Media Communications LLC v. Apple, Inc., Case No.
`
`2:15-cv-1366-JRG-RSP, Doc. 209 at 20 (E.D. Tex. Sept. 13, 2016)
` Personalized Media Communications, LLC v.
`
`Amazon.com, Inc. et al., Case No. 13-1608-RGE, Doc. 148 (D.Del.
`Aug. 10, 2015)
` Personalized Media Communications LLC v. Samsung Elecs. Am.,
`
`Inc. et al., Case No. 2:15-cv-1754-JRG-RSP (E.D. Tex.)
`Transcript of Telephone Conference in IPR2016-00753, IPR2016-
`00754, and IPR2016-00755, dated December 12, 2016
`U.S. Application Serial No,. 08/449,413
`
`
`
`
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`With respect to the challenged claims 1-2, 4, 7, 13, 21, and 28-30 of U.S.
`
`Patent No. 8,559,635 (“the ’635 Patent”), if any of those challenged claims are
`
`found unpatentable, Patent Owner moves (with authorization from the Board (Ex.
`
`2134)) to cancel the claim found to be unpatentable and replace the unpatentable
`
`claim with a corresponding one of the proposed substitute claims 34-40. See 37
`
`C.F.R. §§ 42.22(a)(2); 42.121; 35 U.S.C. § 316(d).
`
`
`
`The proposed substitute claims are patentable over the prior art applied in
`
`the Petition and other art known to PMC. Patentability is supported by the
`
`declaration of Timothy D. Dorney, Ph.D. (Ex. 2130). Dr. Dorney is an electrical
`
`engineer with extensive experience in the field of electrical and computer
`
`engineering.
`
`II.
`
`INTRODUCTION
`
`The ‘635 Patent, based on U.S. Application Serial No. 08/449,413 (the ‘413
`
`Application), and its parent application, U.S. Patent Application, Serial No.
`
`06/317,510, (the ‘510 Application) which issued as US Patent No. 4,694,490 (the
`
`‘490 Patent), teach a variety of different embodiments, often that build upon each
`
`other. It would have been readily understood by a skilled artisan that components
`
`of the invention may have been integrated with other components, as well as
`
`interchangeable with other embodiments of the invention. A system, signaling
`
`
`
`1
`
`

`

`protocol and exemplary methods are disclosed that allow a network to combine
`
`mass medium programming with information specific to, and customized to, a
`
`particular user of the receiver station. Various aspects of such a system operating
`
`in a networked environment, such as content protection, key distribution, tracking
`
`equipment usage, tracking decryption performance, and updating software are
`
`disclosed. One such aspect of the parent ‘490 Patent are novel methods for flexible
`
`decryption of encrypted programming and encrypted keys in the network
`
`environment (Ex. 2050 at 25-30, 40-43; Ex. 2135 at 197-248, 288-312). Different
`
`aspects of the technology are explained using examples of a ‘Wall Street Week’
`
`program that shows combined personalized video with mass media programming
`
`(Ex. 2050 at 37-40; Ex. 2135 at 288-312, 447-457, 463-468), an interactive system
`
`to receive encrypted print programming with ‘The French Chef’ program (Ex.
`
`2050 at 40-41; Ex. 2135 “Exotic Meals of India” at 469-516). Each of these
`
`examples reveal possible combinations of the features of the underlying system
`
`which often use conventional hardware components but combined and controlled
`
`in novel ways to meet the challenges of the networked system. The breadth of the
`
`technology disclosed in the system meant that the inventors drew from a variety of
`
`art areas to enable their technology, including cable and over-the-air broadcast
`
`networking, computer and electronics system technology, digital communication
`
`networking, encryption/decryption, and computer software distribution. The
`
`
`
`2
`
`

`

`combinations of components, the control infrastructure required to coordinate the
`
`system and specific steps in the use of that combination are novel and nonobvious.
`
`The features added in the contingent amended claims set forth in Appendix A
`
`(hereafter, “the amended claims” or “the substitute claims”) are true to the
`
`embodiments disclosed in both the disclosures of the ‘413 Application and the
`
`‘510 Application. Exhibit 2130 identifies support therefore in accordance with 35
`
`U.S.C. §112 in both specifications, thus demonstrating the continuity under 35
`
`U.S.C. §120. Ex. 2130 at §14.
`
`However, to “identify known combinations with other elements in the
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`claim” (Corning Optical Communications v. PPC Broadband, Inc., IPR2014-
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`00441, Paper 19 at 4 (P.T.A.B. Oct. 30, 2014)) is a daunting task because the
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`parent ’490 Patent of the child ‘635 Patent (and their corresponding applications)
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`cover technical fields involving broadcast, computers, computer networks, circuits,
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`and signals to control the interoperation of all of these elements. Patent Owner,
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`however, asserts that the contingent amended claims are patentable over prior art in
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`these various technical areas. In the following, the analysis investigates not only
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`the instant prior art in this case, but also the relevant art (relevant art, in this case,
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`including those references that precede the Nov 3, 1981 priority date of the ‘510
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`and ‘413 applications) cited in IPR2016-00751, IPR2016-00753, IPR2016-00755,
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`and IPR2016-01520 (“the Apple IPRs”) and IPR2014-01527, IPR2014-01528,
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`IPR2014-01530, IPR2014-01531, IPR2014-01532, IPR2014-01533, and IPR2014-
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`01534 (“the Amazon IPRs”), to which this Board has already been exposed. By
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`considering these wide swaths of art previously applied to the parent ‘490 and ‘635
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`Patents which encompass numerous different technical areas, Patent Owner
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`believes it is fairly representing all prior art known to be relevant to the amended
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`claims.
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`In offering patentable amended claims, the Patent Owner, for the purposes of
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`this motion only, adopts and uses the preliminary claim constructions set forth by
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`the Board in its Institution Decision. Paper 8 at 7-10. Support for the amended
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`claims (which claim priority to the ‘510 Application), is centrally focused on
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`“Coordinating Print and Video” section describing an example involving ‘The
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`French Chef’ program (Ex. 2050 at 40-41), and the subsequent example that builds
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`on it, “Using Signaling and Decryption Techniques to Control Distribution of
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`Copyrighted Materials” (Ex. 2050 at 41-43). As required by 35 U.S.C. §120,
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`support for the amended claims is shown in both the ‘413 and ‘410 applications
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`(Ex. 2130).
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`The claim amendments overcome the instant prior art in this case by
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`providing additional features of the invention disclosed in the specification but not
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`previously found in the claims. Claim 34 is amended to include encrypted audio in
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`addition to encrypted video. Even insofar as a still graphic image encoded in an
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`encrypted teletext transmission meets the limitation of ‘encrypted video’, neither
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`the Guillou reference (Ex. 1006) nor any of the other encrypted teletext references
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`such as Exhibit 1007 and 2092, offer any discussion of encrypting audio in a
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`teletext transmission.
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`Claims 34, 36, and 37 (and dependent amended claims 38-40) are amended
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`to include structural features of the invention such as a signal processor that, at
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`least in part, is controlled by operating instructions capable of being revised,
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`storing, at the receiver station, unique digital codes of the signal processor and the
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`source of the programming, and the capability of reporting via a digital
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`communications channel to a remote device. In particular, a ‘unique digital code
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`identifying the source of the programming’ is not identifying the content of the
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`programming. As taught in the ‘510 and ‘413 Applications, storing an
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`identification of the source of the data or programming for example, allows the
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`system to monitor, for example, networks and channels viewed, or the publisher of
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`book (Ex. 2050 starting at 16:7, Ex. 2032 starting at 33:7). None of the references
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`suggest or disclose this combination of elements. Neither Aminetzah (Exhibit
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`1008) nor Bitzer (Exhibit 1009) disclose storing unique digital codes of the source
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`of the programming.
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`Amended claim 35 adds the features of storing information particular to a
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`customer and data identifying a source of said programming. This feature is not
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`disclosed in either of the Guillou references (Exhibit 1006, 1007). There would be
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`no reason to implement this in the Guillou system that is a ‘pre-pay’ system and
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`lacks the requirement to report on equipment usage by tracking it at the receiver
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`station. Other references, too, fail to make up this deficiency.
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`Exs. 1006-1010, 1020-21, 1023-1029 are silent to at least storing a unique
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`digital code indicating the source of the programming/data. Exs. 1006-1007, 1022-
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`1024, 1027-1029 further lack the capability of communicating to a remote site
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`through a digital information transmission unaccompanied by any non-digital
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`information transmission.
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`Exs. 1006-1007, 1027-1028 also lack the presence of a signal processor at
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`least in part controlled by operating instructions that are capable of being revised
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`In general, all Teletext prior art and the like (e.g., CEEFAX, ORACLE,
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`ANTIOPE, Telidon etc., Ex. 1006-7, 1020, 1022, and Exhibits 2052, 2054-2057,
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`2066-2069) did not suggest or disclose communicating to a remote site via a
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`digital-only communication. Although some of the references (Ex. 2054) describe
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`sending graphics over a teletext system, sending encrypted audio along with
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`graphics that were decrypted with a common key was not disclosed nor is it
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`necessary as Teletext is simply an enhancement of conventional Television which
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`already includes an audio transmission.
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`Videotex systems (e.g., Prestel, Viewdata, etc. including Exhibits 1021,
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`1026, and Exhibits 2062, 2089, 2109, 2121, 2126, 2113) connected a subscriber
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`station to a computer via a two-way telephone line in a point-to-point connection,
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`and offer no disclosure or discussion of secure key distribution since there are only
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`2 endpoints on the network. Indeed in 1981 a rudimentary 4-digit password was
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`deemed sufficient (Ex. 1021 p.76). The example of Exhibit 2114 provides a
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`Videotex system connected via cable, but otherwise suffers the same deficiency as
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`a telephone-line based system. Systems to deliver software over a Videotex or
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`Teletext connection (Ex. 2061, 2064, 2074, 2122) also fail to disclose any such
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`feature.
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`Digital encryption references (Exhibits 2092, 2094-7) only cover limited
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`aspects of decrypting an encoded signal using a digital key and lack any
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`description of encrypting video and audio signals. Even when combined with
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`digital video references (Exhibits 2132, 2133) many of the limitations of the
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`amended claims are missing, including at least processors capable of being revised,
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`and reporting usage via a digital link.
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`Controlled-access Television references (Exhibits 2104-2108) at least fail to
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`disclose transmitting executable instructions in the (analog) scrambled television
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`signal, and offer no reprogrammable processor components at the receiver station.
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`Television Monitoring references (Exhibits 2081, 2085, 2103, 2128) also at
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`least fail to disclose initiating a communication over an all-digital information
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`channel.
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`Finally, computer network references (Exhibits 2086, 2124, 2129) may have
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`used completely digital communications with unique names and/or numbers to
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`identify each computer as a node on the network. Multi-drop, packet-based
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`networks such as Ethernet, however, are not compatible with point-to-point
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`Videotex systems without substantial modification nor are they compatible with
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`Teletext systems that embedded control signals with analog television. In fact, a
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`standard for recording and transmission of digital television and digital video on a
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`computer network was not published until 1993 (ISO/IEC 11172-2) over a decade
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`after the ‘510 and ‘413 applications were filed. Furthermore, Ethernet technology
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`was not designed for the long-haul traffic that was easily handled by Videotex
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`systems using the standard phone network ( “Ethernet is a system for local
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`communication among computing stations” “Local networks 10-0.1km” Ex. 2086
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`at 396).
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`Given these six broad areas of endeavor discussed above, “there was no
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`reason in the record why one of skill in the art would attempt to combine the cited
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`prior art to arrive at the claimed invention.” (Nike, Inc. v. Adidas AG, 812 F.3d
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`1326 (Fed. Cir. 2016) (citing Leo Pharmaceutical Prods. v. Rea, 726 F.3d 1346
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`8
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`(Fed. Cir. 2013))). As discussed below, the Patent Owner has exhaustively
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`examined alternative combinations of art in very different technical areas,
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`particularly with an eye toward the prior art cited by the Petitioner. Based on that
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`review, the Patent Owner believes that the proposed contingent amended claims
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`are patentable over all the prior art of which it is aware.
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`III. LISTING OF AMENDMENTS
`Patent Owner provides, in Appendix A, a complete listing of proposed
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`contingent claim amendments with a correlation of the substitute claims to the
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`original claims. No more than one substitute claim is proposed for each challenged
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`claim. 37 C.F.R. §§ 42.24(a)(1), 42.121 (a)(3). The proposed substitute claims are
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`not broader than the original claims. They simply clarify the meaning of the claims
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`in a manner that is consistent with the description of the inventions in the
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`specification. The amendments are responsive to a ground of unpatentability
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`involved in the trial and do not remove any limitations. 35 U.S.C. § 316(d)(3); 37
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`C.F.R. § 42.121.
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`In this listing of amendments, all the challenged dependent claims, including
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`those which have not been substantively amended, have been renumbered to reflect
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`the proper claim dependency.
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIMS
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`9
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`The substitute claims find Section 112 support in the earliest filed disclosure
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`at issue for each proposed substitute claim.1 Specifically, the claims are supported
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`by parent patent application the ’510 Application, filed Nov. 3, 1981, now U.S.
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`Pat. No. 4,694,490, as well as the ‘635 patent specification, the ‘413 Application.
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`No new matter is added. Based on the disclosures of the ’510 and ‘413
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`Applic