Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 1 of 24 PageID #: 7488
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:15-cv-1754-JRG-RSP
`
`§§§§§§§§§§§§
`
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC. & SAMSUNG ELECTRONICS CO.,
`LTD.,
`
`Defendants.
`
`REPORT AND RECOMMENDATION
`
`Plaintiff Personalized Media Communications, LLC (“PMC”) asserts that Defendants
`
`Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. (collectively, “Samsung”)
`
`infringe the claims in U.S. Patent No. 7,747,217 (the “’217 patent”), U.S. Patent No. 7,752,649
`
`(the “2’649 patent”), U.S. Patent No. 7,752,650 (the “’650 patent”), U.S. Patent No. 7,856,649
`
`(the “6’649 patent”), U.S. Patent No. 8,675,775 (the “’775 patent”), and U.S. Patent No.
`
`8,711,885 (the “’885 patent”). Samsung contends that this case should be dismissed because all
`
`of the claims in these asserted patents are patent-ineligible under § 101. Samsung states that all
`
`of the claims are directed to an abstract idea and fail to disclose an inventive concept. The Court
`
`finds that Samsung’s Rule 12(b)(6) Motion to Dismiss for Failure to State a Claim (Dkt. No. 23)
`
`should be DENIED.
`
`RULE 12(b)(6) STANDARD
`
`Rule 8(a) requires “a short and plain statement of the claims showing that the pleader is
`
`entitled to relief.” Fed. R. Civ. P. 8(a)(2). Rule 12(b)(6) permits a party to move to dismiss a
`
`claim if the pleader does not meet the conditions of Rule 8(a) and has “fail[ed] to state a claim
`
`1
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 1
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 2 of 24 PageID #: 7489
`
`upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). When considering a Rule 12(b)(6)
`
`motion a court must assume that all well-pled facts are true and view them in the light most
`
`favorable to the non-moving party. See Bowlby v. City of Aberdeen, 681 F.3d 215, 218 (5th Cir.
`
`2012). The Court must decide whether those facts state a claim for relief that is plausible on its
`
`face. See Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007). “A claim has facial plausibility
`
`when the pleaded factual content allows the court to draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” Bowlby, 681 F.3d at 217 (quoting Ashcroft v.
`
`Iqbal, 556 U.S. 662, 678 (2009)).
`
`ELIGIBILITY UNDER 35 U.S.C. § 101
`
`Section 101 of the Patent Act lists what is eligible for patent protection. The statute says:
`
`“Whoever invents or discovers any new and useful process, machine, manufacture, or
`
`composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
`
`subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
`
`The Supreme Court has held that under § 101 there are three classes of inventions that are
`
`patent ineligible. Those classes of inventions are directed to laws of nature, natural phenomena,
`
`and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010). In Mayo Collaborative Services
`
`v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–97 (2012), the Supreme Court set out a
`
`two-step test for distinguishing patents that claim patent-ineligible laws of nature, natural
`
`phenomena, or abstract ideas from patents that claim patent-eligible applications of those
`
`concepts.
`
`The first step of Mayo requires a court to determine if the claims are directed to a law of
`
`nature, natural phenomena, or abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
`
`2347, 2355 (2014). “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
`
`2
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 2
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 3 of 24 PageID #: 7490
`
`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In making this determination, the court looks at what
`
`the claims cover. See id. at 714 (“We first examine the claims because claims are the definition
`
`of what a patent is intended to cover.”). “[T]he ‘directed to’ inquiry applies a stage-one filter to
`
`claims, considered in light of the specification,” and asks “whether ‘their character as a whole is
`
`directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
`
`Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
`
`Cir. 2015)); see McRO, Inc. v. Bandai Namco Games Am., Case No. 2015-1080, 2016 WL
`
`4896481, at *7 (Fed. Cir. Sept. 13, 2016) (“Whether at step one or step two of the Alice test, in
`
`determining the patentability of a method, a court must look to the claims as an ordered
`
`combination, without ignoring the requirements of individual steps.”).
`
`For example, in Bilski, the Supreme Court found patent-ineligible “[c]laims 1 and 4 in
`
`petitioners’ application” because the claims merely “explain[ed] the basic concept of hedging, or
`
`protecting against risk.” Bilski, 561 U.S. at 611. Similarly, in Ultramercial, the Federal Circuit
`
`held patent-ineligible a claim describing the abstract idea of “displaying an advertisement in
`
`exchange for access to copyrighted media.” Ultramercial, 772 F.3d at 714. Conversely, in
`
`Enfish, the Federal Circuit found patent-eligible, a claim that did not describe an abstract idea but
`
`described a “data structure designed to improve the way a computer stores and retrieves data in
`
`memory.” Enfish, 822 F.3d at 1339; see McRO, 2016 WL 4896481, at *8 (“As the specification
`
`confirms, the [] improvement is allowing computers to produce accurate and realistic lip
`
`synchronization and facial expressions in animated characters that previously could only be
`
`produced by human animators.” (quotation omitted)).
`
`A court applies the second step of Mayo only when it finds that the claims are directed to
`
`a law of nature, natural phenomena, or abstract idea in the first step. Alice, 134 S. Ct. at 2355.
`
`3
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 3
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 4 of 24 PageID #: 7491
`
`The second step requires the court to determine if the elements of the claim individually, or as an
`
`ordered combination, “transform the nature of the claim” into a patent-eligible application. Id. In
`
`determining if the claim is transformed, “[t]he cases most directly on point are Diehr and Flook,
`
`two cases in which the [Supreme] Court reached opposite conclusions about the patent eligibility
`
`of processes that embodied the equivalent of natural laws.” Mayo, 132 S. Ct. at 1298; see Alice,
`
`134 S. Ct. at 2355 (“We have described step two of this analysis as a search for an ‘inventive
`
`concept.’”).
`
`In Diehr, the Court “found [that an] overall process [was] patent eligible because of the
`
`way the additional steps of the process integrated [an] equation into the process as a whole.”
`
`Mayo, 132 S. Ct. at 1298 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1918)); see Mayo, 132 S.
`
`Ct. at 1299 (“It nowhere suggested that all these steps, or at least the combination of those steps,
`
`were in context obvious, already in use, or purely conventional.”). In Flook, the Court found that
`
`a process was patent-ineligible because the additional steps amounted to nothing more than
`
`“insignificant post-solution activity.” Diehr, 450 U.S. at 191–92 (citing Parker v. Flook, 437
`
`U.S. 584, 590 (1978)).
`
`In sum, a claim may be patent-eligible when the “claimed process include[s] not only a
`
`law of nature but also several unconventional steps . . . that confine[] the claims to a particular,
`
`useful application of the principle.” Mayo, 132 S. Ct. at 1300; see DDR Holdings, LLC v.
`
`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[T]he ’399 patent’s claims address the
`
`problem of retaining website visitors that, if adhering to the routine, conventional functioning of
`
`Internet hyperlink protocol, would be instantly transported away from a host’s website after
`
`‘clicking’ on an advertisement and activating a hyperlink.”); Bascom Glob. Internet Servs. v.
`
`AT&T Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *7 (Fed. Cir. Jun. 27, 2016)
`
`4
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 4
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 5 of 24 PageID #: 7492
`
`(“Filtering content on the Internet was already a known concept, and the patent describes how its
`
`particular arrangement of elements is a technical improvement over prior art ways of filtering
`
`such content.”). However, a claim remains patent-ineligible if the claim only describes “‘[p]ost-
`
`solution activity’ that is purely ‘conventional or obvious.’” Mayo, 132 S. Ct. at 1299.
`
`A.
`
`The ’217 patent
`
`ANALYSIS
`
`Samsung contends that claim 38 represents all of the claims in the ’217 patent. Samsung
`
`says that claim 38 is directed to the “abstract idea of creating a coordinated presentation of
`
`information from different media.” (Dkt. No. 23 at 8.) Samsung asserts that some elements of the
`
`claim are directed to “identifying information from two media.” The other elements, Samsung
`
`contends, are directed to “combining that information for display in a coordinated presentation.”
`
`(Dkt. No. 23 at 9.)
`
`Furthermore, Samsung states that the elements of claim 38, when viewed together, do not
`
`transform the nature of the claims into a patent-eligible invention. (Dkt. No. 23 at 9.) Samsung
`
`asserts that claim 38 “effects the display of a ‘coordinated presentation’ using nothing more than
`
`‘well-understood, routine, and conventional activities commonly used in the industry.’” (Dkt.
`
`No. 23 at 10.) Samsung notes that claim 38 only has elements covering “intangible information,”
`
`“generic computer operations,” and “physical components” that are functional or generic. (Dkt.
`
`No. 23 at 10.)
`
`Claim 38 states as follows:
`
`38. A multimedia presentation apparatus comprising:
`a receiver that receives a subset of a plurality of signals
`from an external source, each signal of said subset of
`said plurality of signals including an identifier, wherein
`said plurality of signals including includes a first
`medium and a second medium of a multimedia presentation
`
`5
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 5
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 6 of 24 PageID #: 7493
`
`and said subset of said plurality of signal comprises
`a plurality of said plurality of signals;
`a microcomputer that identifies content of said first
`medium by processing each identifier of said subset of
`said plurality of signals and comparing each processed
`identifier to a predetermined identifier, wherein said pre-
`determined identifier is determined at a time prior to
`receiving said plurality of signals and identifies content
`of said first medium, that processes only a signal of said
`subset of said plurality of signals that includes an identifier
`that matches said predetermined identifier, that
`receives said second medium in a digital data channel
`transmitted from a source external to said multimedia
`presentation apparatus, wherein said second medium is
`not included in said subset of said plurality of signals,
`that identifies content of said second medium, that gen-
`erates information based on said second medium based
`on said identifying content of said second medium and
`that executes processor instructions that coordinate presentation
`of said first medium and said information
`based on said second medium such that content of said
`first medium has a predetermined relationship to said
`information based on said second medium and said content
`of said first medium explains a significance of said
`information based on said second medium; and
`an output device that outputs and displays said coordinated
`presentation of said first medium and information from
`said second medium.
`
`(’217 patent col. 291, ll. 34–67.)
`
`The Court finds claim 38 of the ’217 patent is directed to an apparatus that uses a specific
`
`way of identifying a “first medium” so that the “first medium” can be coordinated with a “second
`
`medium.” Claim 38 recites three principal parts. First, claim 38 describes the environment in
`
`which the claimed invention operates. The claim states that the invention operates when there is
`
`a “subset of plurality of signals from an external source” where “each signal of [the] subset . . .
`
`include[s] an identifier.” In plainer English, that phrase says the invention operates when there is
`
`a plurality of a first “set” of signals that can be divided into a second “set” of signals. The second
`
`6
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 6
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 7 of 24 PageID #: 7494
`
`“set” of signals has at least two signals and each of the signals in the second “set” must have an
`
`“identifier.” (’217 patent col. 291, ll. 34–67.)
`
`Second, claim 38 describes how the second “set” of signals is used to “identify” the
`
`“content of the first medium.” The claim states “each” signal in the second “set” of signals
`
`contains an “identifier.” A microcomputer compares the “identifier” to a predetermined code and
`
`processes a signal when its “identifier” matches the code. The signals that are processed contain
`
`the “content of the first medium.”
`
`Finally, claim 38 states the microcomputer combines the “first medium” and the “second
`
`medium.” It combines the “first medium” and “second medium” by “identif[ying] content of [a]
`
`second medium” and “generat[ing] information based on [the] second medium” using the
`
`“identifie[d] content.” The microcomputer combines “presentation of [the] first medium” and
`
`“[the] information based on [the] second medium” in a way that results in the “content of [the]
`
`first medium explain[ing] [the] significance of [the] information . . . [in the] second medium.”
`
`(’217 patent col. 291, ll. 34–67.) Unpacked, the phrase says that the microcomputer generates
`
`information from the “second medium” and coordinates the information with the “content of the
`
`first medium.”
`
`The Court finds that whether claim 38 is directed to an abstract idea should be assessed
`
`after the claims have been construed. For example, claim 38 could recite a technological way of
`
`separating two “sets” of signals. If, however, it claims any way of separating two “sets” of
`
`signals, then claim 38 could be directed to an abstract idea. Cf. Enfish, 822 F.3d at 1339 (“[W]e
`
`are not faced with a situation where general-purpose computer components are added post-hoc to
`
`a fundamental economic practice or mathematical equation.”).
`
`7
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 7
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 8 of 24 PageID #: 7495
`
`Because claim 38 remains patent-eligible if it is not directed to an abstract idea, the Court
`
`finds that Samsung’s Motion to Dismiss should be denied as to the ’217 patent. Samsung has not
`
`shown how the Court can find, without claim construction or a factual record, that claim 38 of
`
`the ’217 patent is not directed to a technological way of identifying a “set” of signals for
`
`coordinated presentation. (See Dkt. No. 35 at 5 (“Analysis of patentable subject matter under §
`
`101, ‘while ultimately a legal determination, is rife with underlying factual issues.’” (quoting
`
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) vacated on other grounds
`
`134 S. Ct. 2870 (2014)).)
`
`But even if claim 38 were directed to an abstract idea, the Court finds that Samsung has
`
`not shown how the arrangement of the elements is conventional or generic. See Alice, 134 S. Ct.
`
`at 2355. Samsung points out that the operations and parts recited in the claim are generic or
`
`known in the art. Samsung, however, has not shown that these operations and parts when used in
`
`combination fail to disclose an inventive concept. Indeed, the Federal Circuit has held, “an
`
`inventive concept can be found in the non-conventional and non-generic arrangement of known,
`
`conventional pieces.” Bascom Glob. Internet Servs. v. AT&T Mobility LLC, Case No. 2015-1763,
`
`2016 WL 3514158, at *6 (Fed. Cir. Jun. 27, 2016).
`
`B.
`
`The 6’649 patent
`
`Samsung contends that claim 9 represents all of the claims in the 6’649 patent. Samsung
`
`asserts claim 9 is directed to the “abstract idea of converting information from one format to
`
`another.” (Dkt. No. 23 at 11.) Samsung further asserts the additional elements of the claim do not
`
`add meaning because the elements “are standard processing steps to support the conversion” of
`
`information. (Dkt. No. 23 at 12.)
`
`8
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 8
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 9 of 24 PageID #: 7496
`
`Furthermore, Samsung states that reading the elements of claim 9 in combination does
`
`not transform the nature of the claims into a patent-eligible invention. (Dkt. No. 23 at 13.)
`
`Samsung says that “the patent only recites generic elements.” (Dkt. No. 23 at 13.) “For example,
`
`representative claim 9 requires elements such as ‘programmable receiver station,’ ‘tuner,’ ‘tuner
`
`controller,’ ‘detector,’ ‘processor,’ ‘computer,’ and ‘television monitor’” all of which existed
`
`before the priority date of the invention. (See Dkt. No. 23 at 13.)
`
`Claim 9 states as follows:
`
`9. A method for receiving and outputting television programming
`at a programmable receiver station, said receiver
`station having a television receiver, a tuner, a tuner controller,
`a detector, a processor or computer, and a television monitor,
`said tuner controller receiving instructions from said processor
`or computer to control said tuner to frequency select
`television signals, said detector for detecting digital signals,
`said method comprising the step of:
`programming said programmable receiver station with
`multiple signal processing schemes to process television
`programming signals encoded in variable formats in
`accordance with said multiple signal processing schemes,
`said variable formats including at least two of varying
`locations, varying timing lengths and varying encryption
`schemes;
`receiving one or more instruct signals;
`inputting logic into said processor or computer to enable
`said receiver station to receive and identify said variable
`formats in accordance with said one or more instruct
`signals;
`receiving a plurality of discrete signals identified according
`to a particular format of said variable formats, said
`plurality of discrete signals delivering at least a portion
`of television programming;
`processing said plurality of discrete signals according to
`one of said multiple signal processing schemes imple-
`mented by said one or more instruct signals to identify
`said particular format of said variable formats and
`demodulate or demultiplex said at least a portion of said
`television programming; and
`outputting said at least a portion of said television program-
`ming.
`
`9
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 9
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 10 of 24 PageID #: 7497
`
`(6’649 patent col. 288, l. 57–col. 289, l. 16.)
`
`The Court finds that claim 9 is directed to a method of enabling a receiver station to
`
`identify “discrete signals” encoded in “variable formats” using “instruct signals” in order to
`
`“deliver[] . . . television programming.” (6’649 patent col. 288, l. 57–col. 289, l. 16.) First, Claim
`
`9 describes the technological environment in which the method of the invention should be used.
`
`It states that the method should be used (1) with a receiver station programmed with “multiple
`
`signal processing schemes to process television programming signals encoded in variable
`
`formats” and (2) with signals encoded in “variable formats including at least two of varying
`
`locations, varying timing lengths and varying encryption schemes.”
`
`Second, the claim states that the receiving device receives “one or more instruct signals”
`
`that allows the processor of the “receiving station” to “identify [the] variable formats in
`
`accordance with [the] one or more instruct signals.” Finally, claim 9 says that the “receiving
`
`device” should receive a “plurality of discrete signals” identified according to their format and
`
`process the “signals according to one of [the] multiple signal processing schemes implemented
`
`by [the] . . . instruct signal . . . [to] demodulate or demultiplex at least a portion of said television
`
`programming.” In plainer English, claim 9 says that the “instruct signal” should provide the
`
`receiving station with the ability to identify “discrete signals” encoded in “variable formats.” The
`
`receiving station can then use the identification to demodulate or demultiplex the signals for
`
`display to a viewer.
`
`The Court finds that claim 9 is not directed to an abstract idea because a method of
`
`enabling a receiver station to identify “discrete signals” encoded in “variable formats” using
`
`“instruct signals” is directed to an improvement over the prior art. The specification states that in
`
`the prior art, no system “ha[d] any capacity to cause subscriber station computers to process
`
`10
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 10
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 11 of 24 PageID #: 7498
`
`received data, let alone in ways that are not imputed by the subscribers.” (6’649 patent col. 3, ll.
`
`10–12.) The 6’649 patent addresses this problem using “instruct signals.” For example, an
`
`“instruct signal” can include an “execution segment [which] contains information that specifies
`
`the apparatus [] [the] command addresses and [] a particular function or functions that [the]
`
`command causes [the] apparatus to perform.” (6’649 patent col. 23, ll. 38–42.) An “execution
`
`segment” can control a “receiving station” from a distance by including data that can be
`
`compared to a predetermined value stored in the “receiving station.” The “receiving station”
`
`executes an operation if the comparison yields a match. (See 6’649 patent col. 25, ll. 1–6 (“For
`
`any [] command, the execution segment information of [the] command invokes, at each relevant
`
`subscriber station apparatus, the preprogrammed operating instructions uniquely associated with
`
`its particular binary value in particular comparing and matching fashions that are described more
`
`fully below.”).) Using the method of claim 9 is just one way for a user to control a “receiving
`
`station” from a distance.
`
`Furthermore, the method of claim 9 must be performed in a technological environment
`
`where the “television programming signals [are] encoded in variable formats” and “the variable
`
`formats include at least two of varying locations, varying timing lengths[,] and varying
`
`encryption schemes.” Samsung has not shown that “television programming signals encoded in
`
`variable formats” can even be demodulated or demultiplexed without using “instruct signals.”
`
`(See Dkt. No. 35 at 15.) Thus, for the reasons above, the Court finds the claim is directed to an
`
`improvement over the existing technology where the improvement is a method that uses “instruct
`
`signals” to enable a receiver station to identify “discrete signals” encoded in “variable formats”
`
`in order to “deliver[] . . . television programming.” See, e.g., McRO, 2016 WL 4896481, at *8
`
`11
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 11
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 12 of 24 PageID #: 7499
`
`(“The rules are limiting in that they define morph weight sets as a function of the timing of
`
`phoneme sub-sequences.”).
`
`Even if claim 9 were directed to an abstract idea, the Court finds that Samsung has not
`
`shown how the arrangement of the elements is conventional or generic. See Alice, 134 S. Ct. at
`
`2355. Samsung points out the steps of the method describe computer operations and components
`
`that are known in the art. Samsung, however, has not shown why these computer operations must
`
`be performed in the manner recited in claim 9. Samsung also has not shown why these
`
`operations must be performed on the components described in the claim. See Bascom, 2016 WL
`
`3514158, at *6.
`
`C.
`
`The ’775 patent
`
`Samsung contends that claim 2 represents all of the claims in the ’775 patent. Samsung
`
`asserts that claim 2 is directed to the “abstract idea of converting information from one format to
`
`another.” (Dkt. No. 23 at 14.) This abstract idea, Samsung contends, “fall[s] squarely within the
`
`rubric of Alice and its predecessor cases. As set forth above, the Supreme Court has long held
`
`that algorithms for performing simply data conversion (like decoding) are abstract.” (Dkt. No. 23
`
`at 15 (citation omitted).)
`
`Furthermore, Samsung states that “claim 2 of the ’775 [p]atent claim a number of garden
`
`variety steps in addition to the decoding step such as ‘receiving’ information and a control signal,
`
`‘detecting data,’ ‘passing said data,’ ‘generating’ video images, ‘communicating’ the video
`
`images, and ‘controlling the decoder.’” (Dkt. No. 23 at 16.) Each of these steps, Samsung asserts
`
`represent “well-understood, routine, conventional activity” that can be performed on generic
`
`electronic components. (See Dkt. No. 23 at 16.)
`
`Claim 2 recites:
`
`12
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 12
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 13 of 24 PageID #: 7500
`
`2. A method of processing signals at a receiver station
`having a decoder, detector, a processor, and a video monitor to
`deliver at least some of each of a series of video images at the
`video monitor, said method comprising the steps of:
`(a) receiving an information transmission containing a
`code portion;
`(b) receiving a control signal;
`(c) decoding the code portion of said information
`transmission and transferring it to the detector;
`(d) detecting data in said decoded and transferred code
`portion and passing said data to said processor;
`(e) generating said at least some of each of a series of video
`images by processing said detected and passed data;
`(f) communicating said at least some of each of a series of
`video images to said video monitor; and
`(g) controlling the decoder,
`whereby the decoder is capable of decoding and
`transferring, based the control signal, an expanded and a
`contracted code portion information transmissions in
`order to generate and deliver video at said video monitor.
`
`(’775 patent col. 286, ll. 20–39.)
`
`The Court finds that claim 2 is directed to decoding “based on the control signal, an
`
`expanded and a contracted code portion” of an “information transmission.” The first, second, and
`
`seventh steps recite the principal elements of the claimed method. The first step recites an
`
`“information transmission” containing a “code portion.” The second step states a “receiver
`
`station” receives a “control signal.” The seventh step says a “decoder” in the “receiver station”
`
`must be “capable of decoding and transferring” “an expanded and a contracted code portion”
`
`“based [on] the control signal.” Read together these steps show that the method is directed to
`
`decoding “based on the control signal, an expanded and a contracted code portion” of an
`
`“information transmission.”
`
`The remaining four steps of the claim are not really principal steps because they facilitate
`
`the execution of the first, second, and seventh steps of the method. For example, the seventh step
`
`modifies the third step. The third step says to “decod[e] the code portion of said information
`
`13
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 13
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 14 of 24 PageID #: 7501
`
`transmission and transfer[] it to the detector.” The seventh step elaborates on this and states that
`
`the “decoder” must be “controlled,” the “decoder” must be capable of “decoding and transferring
`
`based on the control signal,” and the “decoder” must be capable of “decoding and transferring
`
`. . . an expanded and a contracted code portion.” The fourth, fifth, and sixth steps recite the
`
`technological environment for the decoding steps and state that the method is for the purpose of
`
`decoding the data for presentation on a video monitor.
`
`The Court finds that a method for decoding “based on the control signal, an expanded and
`
`a contracted code portion” of an “information transmission” is not directed to an abstract idea.
`
`Instead, the Court finds the method describes a technological way of controlling the “decoder.”
`
`(See Dkt. No. 35 at 20 (“Another important aspect of the claimed invention—that the ‘decoder’
`
`is controlled by a ‘control signal’ . . . .).) For example, the specification, as a whole, teaches that
`
`a “control signal” can prompt a “control processor” to run a preprogrammed routine. The routine
`
`allows a “receiving device” to decode “an expanded and a contracted code portion” of an
`
`“information transmission.” (See, e.g., ’775 patent col. 82, ll. 20–23 (“Control processor, 39J,
`
`has capacity for computing information and processing all control information necessary for
`
`controlling all apparatus of decoder, 203 . . . .”).) This describes just one technological way of
`
`“controlling” a decoder because the method uses either known, or new, elements to describe a
`
`way of prompting a “control processor” to run a correct, predetermined, decoding routine.
`
`Even if claim 2 is directed at an abstract idea, the Court finds that Samsung has not
`
`shown that the claim, read as a whole, fails to disclose an inventive concept. Samsung has
`
`pointed out that all of the elements of claim 2 are directed to either existing computer operations
`
`or existing computer components. (See Dkt. No. 23 at 16.) But, as the Court found with the
`
`6’649 patent, Samsung has not shown that the computer operations must be performed in the
`
`14
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 14
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 15 of 24 PageID #: 7502
`
`claimed order or using the claimed components. See Bascom Glob. Internet Servs. v. AT&T
`
`Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *6 (Fed. Cir. Jun. 27, 2016).
`
`D.
`
`The 2’649 patent
`
`Samsung asserts that claim 1 of the 2’649 patent is representative of all of the claims in
`
`the 2’649 patent. Samsung states that claim 1 is directed to “a generic way of communicating
`
`information to determine which television program to display.” (Dkt. No. 23 at 18.) Samsung
`
`contends the elements of the claim “essentially capture[] the idea of using control information in
`
`selecting a television program to process and display, which might manifest simply as a human
`
`television viewer choosing a particular channel of interest.” (Dkt. No. 23 at 17.)
`
`Samsung further contends the 2’649 patent “[c]laims only generic computing elements
`
`that fail to transform the claims into a patent eligible invention.” Samsung walks through the
`
`steps of the method at a high-level and notes each of the elements covers “‘well-understood,
`
`routine, conventional activity’ performed by generic computers that do not provide an inventive
`
`concept.” (Dkt. No. 23 at 19.)
`
`Claim 1 covers:
`
`1. A method of processing signals at a receiver station, said
`receiver station having a plurality of processors, said method
`comprising the steps of:
`receiving an information transmission including a digital
`television signal and a message stream;
`detecting said message stream in said information
`transmission;
`selecting at least one message of said detected message
`stream;
`inputting at least a first portion of said selected at least one
`message to a control processor;
`selecting control information in said inputted first portion
`of said selected at least one message;
`selecting and outputting under the control of said control
`processor, other portions of said message stream to said
`plurality of processors, based on said control information;
`
`15
`
`PMC Exhibit 2133
`Apple v. PMC
`IPR2016-00754
`Page 15
`
`

`
`Case 2:15-cv-01754-JRG-RSP Document 93 Filed 09/21/16 Page 16 of 24 PageID #: 7503
`
`processing said selected other portions of said message
`stream simultaneously at said plurality of processors;
`controlling the timing of communicating television
`programming in accordance with said message stream;
`and
`storing information evidencing the availability, use or
`usage of said television programming or said message
`stream.
`
`(2’649 patent col. 287, l. 4–col. 287, l. 27.)
`
`The Court finds that claim 1 is directed to two concepts: (1) using “control information”
`
`from a “message stream” to direct parts of the “mess