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’
`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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`INTRODUCTION ........................................................................................... 1
`I.
`THE ’635 PATENT ......................................................................................... 2
`II.
`III. GROUNDS AT ISSUE ................................................................................... 4
`IV. CLAIM CONSTRUCTION AND THE PERSON OF
`ORDINARY SKILL IN THE ART ................................................................. 5
`A.
`“Decrypt” and related terms (All Challenged Claims) ......................... 6
`1. Overwhelming Support In The Specifications ............................. 7
`2. The Controversial Sentence, When Read in
`Context, Supports PMC’s Construction ....................................... 9
`3. The ’490 Patent Describes Decryption as a
`Digital Process to Decipher Digital Data ................................... 11
`4. Unequivocal Statements Made During
`Prosecution, Reexamination and Other
`Proceedings Support PMC’s Construction ................................. 12
`5. BPAI and Judicial Acknowledgements of
`Prosecution Disclaimers ............................................................. 14
`Support in Wechselberger’s Prior Declaration &
`Article ......................................................................................... 15
`“Encrypted Video” (Claim 4) .............................................................. 18
`B.
`“Processor” (Claims 21) ...................................................................... 22
`C.
`“Executable Instructions” (Claim 13) ................................................. 27
`D.
`PETITIONER FAILS TO SHOW BY A
`PREPONDERANCE OF THE EVIDENCE THAT THE
`CLAIMS ARE UNPATENTABLE .............................................................. 29
`A. Aminetzah Fails to Render Claims 21, 28, 29, and 30
`Obvious ............................................................................................... 29
`1. Aminetzah Fails to Teach or Suggest Decryption
`of Programming (Independent Claims 21 and
`Dependent Claims 28, 29, and 30) ............................................. 32
`2. Aminetzah Fails To Teach or Suggest
`“Receiving A Transmission Comprising
`i
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`V.
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`6.
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`B.
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`Encrypted Materials” (Independent Claim 21) .......................... 34
`3. Aminetzah Fails To Teach Or Suggest
`“Decrypting Under First Processor Control” and
`“Decrypting Under Second Processor Control a
`Second Portion” (Independent Claim 21).................................. 39
`4. Aminetzah Fails To Teach or Suggest the
`Receiver Station Receiving a Signal Necessary
`for Decryption and a Transmission from
`Different Sources (Dependent Claim 29) ................................... 41
`5. Aminetzah Fails To Teach or Suggest
`“Contacting A Remote Transmitter Station to
`Receive One of Said Transmission And Said
`Signal Necessary for Decryption” (Dependent
`Claim 30) .................................................................................... 41
`Aminetzah, in view of Bitzer, Fails to Render Claim 4
`Obvious ............................................................................................... 43
`1. Aminetzah, In View Of Bitzer, Fails To Teach
`or Suggest Transmitting Encrypted Video
`(Dependent Claim 4) .................................................................. 43
`Guillou Fails to Anticipate Claims 7, 21 and 29 ................................. 49
`1. Guillou Fails To Expressly or Inherently
`Disclose the Subscriber Station “Detect[ing], …
`A Second Control Signal Portion Used To
`Decrypt the First Control Signal Portion” (Claim
`7) ................................................................................................. 50
`2. Guillou Fails To Expressly or Inherently
`Disclose “Decrypting Under First Processor
`Control” and “Decrypting Under Second
`Processor Control” (Claims 21 and 29) ...................................... 51
`D. Guillou Fails to Render Obvious Claims 4, 13, 28 and
`30 ......................................................................................................... 55
`1. Guillou Fails to Teach or Suggest Receiving
`Programming that Includes Encrypted Video
`(Dependent Claim 4) .................................................................. 55
`2. Guillou Fails To Teach or Suggest Receiving a
`Plurality of Digital Signals that Include
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`C.
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`ii
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`Embedded Executable Instructions and
`Controlling a Controllable Device On The Basis
`Of Said Embedded Executable Instructions
`(Independent Claim 13) .............................................................. 57
`3. Guillou Fails to Teach or Suggest Receiving and
`Decrypting Encrypted Materials that Includes a
`Portion of a Television Program (Dependent
`Claim 28) .................................................................................... 60
`4. Guillou Fails To Teach or Suggest “Contacting
`A Remote Transmitter Station to Receive One of
`Said Transmission And Said Signal Necessary
`for Decryption” (Dependent Claim 30) ...................................... 61
`VI. OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS ................................ 63
`VII. CONCLUSION .............................................................................................. 63
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`
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`iii
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`Cases
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`TABLE OF AUTHORITIES
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .............................................................. 5
`
`Cisco Systems, Inc., V. C-Cation Technologies, LLC,
`IPR2014-00454 (PTAB August 29, 2014) ........................................... 35
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................ 29
`
`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb 06, 2009) ................. 29
`
`Ex parte Tessler,
`IPR2012-006616 (PTAB Oct. 2, 2014) ................................................ 36
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`Fidelity National Information Services, Inc., v. Datatreasury Corp.,
`IPR2014-00489 (PTAB August 13, 2014) ........................................... 35
`
`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1 (1966) .................................................................................. 63
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183 (PTAB July 31, 2013) ................................................ 45
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ............................................................ 47
`
`In re Nuvasive, Inc.,
`2016 WL 7118526 (Fed. Cir. 2016) ..................................................... 30
`
`In Re: Magnum Oil Tools International,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................ 35
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................ 29, 30
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`MBO Laboratories, Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007) ............................................................ 12
`
`iv
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................. 5, 14, 23
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`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) ............................................................ 29
`
`Norman International v. Andrew J. Toti Testamentary Trust,
`IPR2014-00283 (PTAB June 18, 2015) ................................................ 45
`
`Omega Engineering, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................ 13
`
`Philips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................ 23
`
`Purdue Pharma L.P. v. Depomed, Inc.,
`2016 WL 1161229 (Fed. Cir. Mar. 24, 2016) ....................................... 40
`
`Sensonics Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir. 1996) .............................................................. 36
`
`Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated,
`IPR2015-01741 (PTAB Feb. 6, 2016) .................................................. 35
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................ 30
`
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .............................................................. 14
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors
`USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ............................................................ 63
`
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .............................................................. 6
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................. 49
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ...................................................... 30, 40
`
`v
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`Statutes
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`Statutes
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`35 U.S.C. § 316 ........................................................................................ 29
`35 U.S.C. § 316 ...................................................................................... ..29
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`
`Rules
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`Rules
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`37 C.F.R. § 42.6 ....................................................................................... 35
`37 C.F.R. § 42.6 ..................................................................................... .. 35
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`37 C.F.R. 1.321 ...................................................................................... 1, 4
`37 C.F.R. 1.321 .................................................................................... .. 1, 4
`
`vi
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`Vi
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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 response to the petition for inter partes review of claims 3, 4, 7, 13, 18, 20-21,
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`28-30, 32 and 33 (the “Challenged Claims”) of U.S. Pat. 8,559,635 (the “’635
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`Patent,” Ex. 1003), filed by Apple Inc. (“Petitioner”) on March 14, 2016 (Paper
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`No. 1, or “Petition”). PMC filed its Preliminary Patent Owner Response on June
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`24, 2016. Paper 7. The Board issued an Institution Decision on September 21,
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`2016 (Paper 8), finding claims 3, 18, 20, 32 and 33 to be patentable over the prior
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`art cited by Petitioner and claim 7 to be patentable over Aminetzah in view of
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`Bitzer.1
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`The Board should reject the remaining grounds and find all of the claims of
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`the ’635 Patent patentable. Aminetzah, Guillou and Bitzer fail to disclose, teach or
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`suggest the remaining Challenged Claims. For a vast majority of the remaining
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`claims, Petitioner does not even dispute that the references fail to disclose the
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`claimed inventions because they do not disclose every limitation of the claims.
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`Petitioner attempts cure these defects by suggesting that a person of ordinary skill
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`in the art would have made a myriad of modifications, none of which were
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`suggested by the prior art. Apart from improper hindsight bias, there is no reason
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`1 Claims 1 and 2 of the ’635 Patent were disclaimed pursuant to 37 C.F.R.
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`1.321(a).
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`1
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`why a person of ordinary skill in the art would have modified Aminetzah and
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`Guillou in the manners that Petitioner argues. On the contrary, Petitioner’s
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`proposed modifications offered no advantages, would have completely changed the
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`disclosed systems’ principal functions, and in many cases, would have rendered the
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`resulting systems inoperable.
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`For the reasons set forth in detail below, Petitioner has failed to meet its
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`burden of proof and the Board should find that the remaining Challenged Claims—
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`claims 4, 7, 13, 21, and 28-30—are patentable over the cited prior art.
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`II. THE ’635 PATENT
`The ’635 Patent and parent U.S. Patent No. 4,694,490 (the “’490 Patent,”
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`Ex. 1004)2 disclose a programming transmission and receiving system with access
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`control. The access control system uses multiple decryption keys and multiple
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`decryption algorithms for the decryption of encrypted video and audio. Not only
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`are the video and audio encrypted, but so are the decryption keys. The decryption
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`keys may be encrypted and transmitted with the programming transmission so that
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`they must be decrypted before they can be used to decrypt the programming.
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`Moreover, the instructions that cause the decryption could also be encrypted. See,
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`e.g., Ex. 1003, 144:1-161:21; Ex. 1004, 20:38-53; 21:44-22:4; Ex. 2019 ¶¶33-45.
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`2 The ’635 Patent claims priority to Appl. No. 317,510, filed November 3, 1981,
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`and which issued as the ’490 Patent.
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`2
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`For instance, FIG. 4A of the ’490 Patent shows a receiver station’s signal
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`processor, 100, and a programing decrypter and/or interrupt means, 101, each of
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`which receives transmissions of programming. Ex. 1004, 13:12-15. The devices
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`may receive programming and instruct signals, codes, or other signals, over one or
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`several channels. See Ex. 1004, 6:42-7:5; 13:31-32; 15:20-25; 6:30-32; FIGs, 1,
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`2A Ex. 1004.
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`The disclosed access control systems allow users at the receiver stations to
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`access digital content through purchases or other means. For example, in one of
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`the many examples that the ’490 Patent describes, the disclosed inventions allow a
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`user to purchase, receive, decrypt, and output a printed cooking recipe:
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`Suppose a viewer watches a television program on cooking techniques
`…. Julia Childs’ “The French Chef” is one such program. Halfway
`through the program, the host says, “If you are interested in cooking
`what we are preparing here and want a printed copy of the recipe for a
`charge of only 10 cents, press 567 on your Widget Signal Generator
`and Local Input.” The viewer then presses buttons 567 on local input
`… Five minutes later, a signal is identified in the incoming
`programing on TV set, … [t]his signal instructs buffer/comparator, 8,
`that, if 567 has been received from signal generator, 225, signal
`processor, 200, should, in a predetermined fashion, instruct tuner, 223,
`to tune cable converter box, 222, to the appropriate channel to receive
`the recipe in encoded digital form and instruct control means, 226, to
`activate printer, 221. … [S]ignal processor, 200, decrypts and
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`3
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`

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`transfers to decrypter, 224, to serve as the code upon which
`decrypter, 224, will decrypt the incoming encrypted recipe.… When
`the transmission of the recipe is received, box 222, transfers the
`transmission to decrypter, 224, for decryption and thence to printer,
`221, for printing.
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`Ex. 1004, 20:16-50 (emphasis added).
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`III. GROUNDS AT ISSUE
`PMC filed a Preliminary Patent Owner Response on June 24, 2016. Paper 7.
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`The Board issued an Institution Decision on September 21, 2016 (Paper 8), in
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`which the Board agreed with PMC that Petitioner failed to show a reasonable
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`likelihood that it would prevail to show that claims 3, 18, 20, 32 and 33 are
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`unpatentable based on any of the alleged grounds. Furthermore, Petitioner failed
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`to show a reasonable likelihood that it would prevail to show that claim 7 is
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`unpatentable based on Aminetzah in view of Bitzer.3
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`The following grounds remain at issue:
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`# Claims
`1 7, 21, 29
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`2 4, 13, 28, 30
`3 21, 28, 29, 30
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`Prior Art
`U.S. Patent No. 4,337,483
`(Ex. 1006 “Guillou”)
`Guillou
`U.S. Patent No. 4,388,643
`(Ex. 1008, “Aminetzah”).
`Aminetzah in view of U.S. Patent No.
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`Statute
`§ 102
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`§ 103
`§ 103
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`4 4
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`3 PMC disclaimed claims 1-2 pursuant to 37 C.F.R. 1.321(a) in a submission filed
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`§ 103
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`with the Patent Office on June 24, 2016.
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`4
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`3,743,767 to Bitzer (Ex. 1009, “Bitzer”)
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`With this Response, PMC submits the Declaration of Dr. Alfred Weaver, Ph.
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`D., Ex. 2019, a computer scientist and professor with extensive experience in the
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`field of computer science and electrical engineering, including computer
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`communications and microprocessor systems.
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`IV. CLAIM CONSTRUCTION AND THE PERSON OF ORDINARY
`SKILL IN THE ART
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`Determining whether prior art renders a patent claim obvious involves a
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`two-step process: first, the claim terms must be construed, and second, the
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`construed claim must be applied to the prior art. A claim term is presumptively
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`accorded its “ordinary and customary meaning” in the art, and then that meaning is
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`tested against the specification for concordance or modification. CCS Fitness, Inc.
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`v. Brunswick 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). Here, the Board should construe the claims of
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`the ’635 Patent from the perspective of a person of ordinary skill in the art with at
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`least a bachelor’s degree or equivalent in digital electronics, electrical engineering,
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`computer engineering, computer science, or a related technical degree, with 2-5
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`5
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`years of post-degree work experience in system engineering (or equivalent)
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`(hereinafter, “POSITA”). Ex. 2019 ¶32.
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`“[T]he Board is not bound by any findings made in its Institution Decision,”
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`including its claim construction opinions, because, “[a]t that point, the Board is
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`considering the matter preliminarily without the benefit of a full record.”
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`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). After
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`institution, “[t]he Board is free to change its view of the merits after further
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`development of the record, and should do so if convinced its initial [(preliminary)]
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`inclinations were wrong.” Id. PMC respectfully requests that the Board adopt the
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`following constructions.
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` “Decrypt” and related terms (All Challenged Claims)
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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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`in conjunction with an associated mathematical algorithm to decipher (render
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`intelligible or usable) digital data.” Ex. 2001 ¶¶46-71. This definition excludes
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`processes of deciphering non-digital data, including descrambling of an analog
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`television transmission.
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`6
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`1. Overwhelming Support In The Specifications
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`The specifications of the ’635 Patent and the ’490 Patent are clear:
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`decryptors operate on digital data only. The ’635 Patent discloses systems that use
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`decryptors “well known in the art” in 1981 that decipher digital data using digital
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`keys and algorithms. Ex. 1003, 16:40-45; Ex. 1004, 7:39-49. The ’635 Patent
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`describes a “Decryptor, 10, … a standard digital information decryptor, well
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`known in the art, that receives signals from buffer/comparator, 8, and under control
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`of said controller, 20, uses conventional decryptor techniques, well known in the
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`art, to decrypt said signals as required.” The ’635 Patent similarly describes that
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`the decryptors in Examples #6-7 are devices for decrypting digital information:
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`“Decryptors, 107, 224 and 231, are conventional decryptors, well
`known in the art, with capacity for receiving encrypted digital
`information, decrypting said information by means of a selected
`cipher algorithm and a selected cipher key, and outputting the
`decrypted information.”
`Ex. 1003, 148:11-16 (emphasis added); see also Ex. 1003, 16:40-45; Ex. 1004,
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`7:36-47, 8:35-44, 20:38-42, 20:60-68.
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`A POSITA reading the specifications would not confuse the encryption or
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`decryption of digital data with the scrambling and descrambling of an analog
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`television signal. Ex. 2019 ¶¶48-53. Not only does the patent describe decryption
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`as a digital process, as quoted above, it also unequivocally distinguishes
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`7
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`“encryption/decryption means and methods” from, and contrasts them with, analog
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`processes like scrambling and descrambling:
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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 transmission and display the transmitted television
`image information. Encryption/decryption means and methods,
`well known in the art, can regulate the reception and use of, for
`example, digital video and audio television transmission, digital
`audio radio and phonograph transmission, digital broadcast print
`transmission, and digital data communications.”
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`Ex. 1003, 144:9-19 (emphasis added). Thus, the ’635 Patent informs a POSITA in
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`no uncertain terms what decryption is and what decryption is not.
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`Even if, arguendo, the Board disagrees with PMC, and believes decryptors
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`may be conventional descramblers, claims 2, 4 and 7 recite steps of decrypting
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`digital information using a digital control signal portion. Accordingly, the
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`decryptors must operate using a cipher algorithm and a selected cipher key because
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`the specification only provides that technique for decrypting digital information.
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`Descrambling is used for analog information, not digital.
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`8
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`2.
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`The Controversial Sentence, When Read in Context,
`Supports PMC’s Construction
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`Petitioner’s sole basis for reading the “decrypting” terms to cover analog
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`descrambling is the prior claim construction decisions by a PTAB panel and a
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`district court judge which boil down to an erroneous interpretation of a single
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`sentence from the specification that was taken out of context. Pet. at 7. Although
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`both Petitioner and the Board only quoted a part of this controversial sentence, it is
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`important to carefully read the entire sentence in its full context—
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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 structure of the various parts without functionally departing
`from the spirit of the invention. For example, the decryption
`cipher key information and/or algorithm instructions and/or the
`location or locations of said key information and/or instructions
`may be computed in other, more complex or less complex,
`fashions. And for example, the transmitted programming may be
`processed through fewer than three steps of decryption or more
`than three. 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.”
`
`9
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`

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`
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`Ex. 1003, 160:40-55 (emphasis added). This quoted passage is focused on
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`alternative embodiments. Rather than equating descrambling to decryption, the
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`highlighted sentence states quite the opposite: “conventional (analog)
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`descramblers” would be used in place of, or as an alternative to, the “decryptors,
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`107, 224, and 231” if and when “the ‘Wall Street Week’ transmission [is] of
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`conventional analog television” instead of digital television programming.
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`Read in the proper context, the sentence actually conveys to a POSITA that
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`if the “Wall Street Week” is transmitted as a conventional analog television signal,
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`then the decryptors 107, 224, and 231, may be replaced by conventional
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`descramblers to perform descrambling of the analog signal. Ex. 2019 ¶¶67-70.
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`Thus, read in its proper context, this statement once again contrasts, rather than
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`conflates, digital decryption with analog descrambling since it confirms a
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`conventional analog television transmission requires conventional (analog)
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`descramblers instead of digital decryptors. Id.
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`Indeed, a recent Markman decision involving the ’635 Patent noted that “the
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`intrinsic record is not one passage” and found that “the intrinsic record as a whole
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`shows that PMC’s reading of the passage is the correct one.” Ex. 2025 at 16-17
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`(“The parties cannot seriously dispute that the specification, as a whole, talks about
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`decryption and encryption in the context of digital operations.”). Addressing the
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`controversial sentence specifically, the district court finds: “The intrinsic record
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`10
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`

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`
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`shows that descramblers and decryptors are different and that in analog situations,
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`instead of decrypting, descrambling may be used.” Id. The district court
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`concluded that “decrypting” and “decryption” means “a method that uses a digital
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`key in conjunction with an associated algorithm to decipher (render intelligible or
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`usable) digital data.” Id at 17.
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`3.
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`The ’490 Patent Describes Decryption as a Digital Process
`to Decipher Digital Data
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`The claim construction inquiry further requires consultation of the
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`specification of the ’490 Patent, to which the ’635 Patent claims priority. The ’490
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`Patent, notably, does not contain the passage that is linchpin of Petitioner’s
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`position. In fact, the ’490 Patent is devoid of any discussion regarding scrambling,
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`and describes decryption entirely in terms of deciphering digital data using digital
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`keys and digital codes. Ex. 2019 ¶53; Ex. 1004, 7:39-49. For instance, the ’490
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`Patent describes that the receiver station uses a signal processor 200’s decrypter to
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`decrypt a cooking recipe received “in encoded digital form.” Ex. 1004, 20:60-68.
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`Similarly, decrypter 10 only receives signal words (i.e., “one or more digital data
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`bits,” id. at 3:6-8) for decryption and uses digital keys to decrypt the digital data.
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`Id. at 7:36-47; 8:35-44; Fig. 1. Furthermore, the ’490 Patent describes that
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`decryptor 224 receives digital data that “serve[s] as the code upon which decrypter,
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`224, will decrypt the incoming encrypted recipe.” Id. at 20:38-42.
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`4.
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`Unequivocal Statements Made During Prosecution,
`Reexamination and Other Proceedings Support PMC’s
`Construction
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`In addition to the overwhelming support in the specifications, PMC also
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`repeatedly and consistently confirmed during prosecution, reexamination, and
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`litigation proceedings that the claimed “decrypting” terms are limited to a digital
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`context. For instance, during prosecution of the application that lead to the ’635
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`Patent, PMC unequivocally excluded descrambling from the scope of the
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`invention, asserting that the claims’ requirement of decryption was “not broad
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`enough to read on scrambling and unscrambling” and encryption was limited to
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`processing of “digital” information. Ex. 2016 at 1330. PMC further distinguished
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`the prior art from the claims because the prior art described descrambling, rather
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`than the 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
`suggest “encryption” as claimed in the instant application and
`understood by the Board.
`
`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 the invention is not.”). PMC’s clear and unequivocal exclusion of
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`descrambling from the scope of decryption terms led the Examiner to allow the
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`claims-at-issue. Ex. 2016 at 1362.
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`In addition to the statements made during prosecution of the ’635 Patent,
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`PMC also expressly limited the scope of encryption and decryption to digital
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`signals while excluding scrambling and descrambling in other proceedings on
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`related patents or applications. See Ex. 2009 at 30 (“Scrambling and encryption
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`are different terms in the art. In particular, encryption relates to digital
`
`signals.”); Ex. 2006 at 41 (“… one of ordinary skill in the art would understand
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`that a decryptor that decrypts signals as interpreted in light of the specification
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`does not include analog scrambling and descrambling.”); Ex. 2031 at 77 (“…
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`decryption … is a digital operation performed on digital signals, not analog
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`signals. Descrambling of analog television signals does not correspond to
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`decryption whatsoever, as is well understood in the art.”) (emphasis added).
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`Here, where PMC’s statements that “decryption” did not encompass
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`descrambling are found throughout the file history of the ’635 Patent and also in
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`proceedings involving patents from the same family, the proper construction could
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`not be more clear and unequivocal. Omega Engineering, Inc., v. Raytek Corp., 334
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`F.3d 1314, 1324-26 (Fed. Cir. 2003) (“where the patentee has unequivocally
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`disavowed a certain meaning to obtain his patent . . . [it] . . . narrows the ordinary
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`meaning of the claim congruent with the scope of the surrender.”). Statements that
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`narrow claim scope in ancestor patents attach to later applications. Id. at 1333;
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`Microsoft, 789 F.3d at 1298 (“The PTO should also consult the patent’s
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`prosecution history in proceedings in which the patent has been brought back to the
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`agency for a second review.”); Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
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`977 (Fed. Cir. 2014) (the prosecution history “serves as intrinsic evidence for
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`purposes of claim construction. This remains true in construing patent claims
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`before the PTO.”).4
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`5.
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`BPAI and Judicial Acknowledgements of Prosecution
`Disclaimers
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`Indeed, several BPAI and court decisions agreed with PMC that ’635
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`Patent’s specification’s use of the terms “encryption” and “decryption” refers to
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`operations on digital data and does not encompass the descrambling of analog
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`4 While the Board is not under an obligation to accept a construction based on
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`“prosecution disclaimer,” it has the authority to do so. Id., 742 F.3d at 977-78.
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`Disregarding the cited prosecution history would be so unreasonable as to be
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`contrary to the broadest reasonable construction framework. Microsoft, 789 F.3d
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`at 1298 (Board may not “construe claims during IPR so broadly that its
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`constructions are unreasonable under general claim construction principles.”).
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`television transmissions, thereby correctly concluding that, as a matter of law,
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`PMC’s prosecution disclaimer trumps any confusion (if there is any) caused by
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`that single sentence in the specification (taken out of context). See Ex. 2003 at 68-
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`69 (“We find encryption to be distinct from scrambling … and the use of a
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`decryptor and decryption, in the context of the instant Specification, is made
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`specifically with respect to digital signals.”); Ex. 2005 at 53-54 (“‘[E]ncryption,’
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`as it would have been commonly defined by one of ordinary skill in the art at the
`
`time, requires a ‘digital’ signal … We conclude that ‘encryption’ and
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`‘decryption’ are not broad enough to read on ‘scrambling’ and
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`‘unscrambling.’”); Ex. 2010 at 2, n.1 (“the court agrees with the plaintiffs that the
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`patentee’s statements [about their ‘digital only’ construction of the term
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`‘decrypting’] before the Board … represent an unambiguous disavowal of claim
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`scope … the patentee explicitly disavowed the decryption of analog signals”)
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`(emphasis added). Most recently, the district court rejected Apple’s overly