`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`______________
`
`Case: IPR2016-00755
`Patent No. 8,191,091
`______________
`
`
`
`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 .......................................... 10
`
`V. CLAIM CONSTRUCTION ............................................................................ 12
`
`“information particular to a subscriber at said receiver station” ................. 12
`A.
`VI. THE SUBSITUTE CLAIMS ARE PATENTABLE UNDER 35 U.S.C.
`§101.. ........................................................................................................................ 13
`
`A. The Substitute Claims Are Statutory ........................................................... 13
`VII. THE SUBSTITUTE CLAIMS ARE NOT ANTICIPATED BY THE
`PRIOR ART ........................................................................................................... 15
`
`VIII. THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS OVER THE
`PRIOR ART ........................................................................................................... 16
`
`A. The Prior Art Does Not Disclose “receiving an encrypted digital information
`transmission including encrypted digital information and unencrypted digital
`information, wherein said encrypted digital information transmission is
`unaccompanied by any scrambled analog encoded information” accompanied by
`at least one other element of the claims. ............................................................... 16
`B. The Prior Art Does Not Disclose “creating, based on at least a portion of said
`encrypted digital information transmission, a digital record including a unique
`digital code identifying said receiver station; automatically transmitting said
`digital record to a remote station, wherein said transmitting transmits digital
`information unaccompanied by any non-digital information transmission”
`accompanied by at least one other element of the claims..................................... 19
`C. The Prior Art Does Not Disclose “storing digital data comprising information
`particular to a subscriber at said receiver station and originated at said receiver
`station, wherein said receiver station comprises a central processing unit, said
`central processing unit interacting with random access memory, and
`reprogrammable nonvolatile memory storing said digital data, wherein said
`receiver station stores a unique digital code capable of identifying said receiver
`station” accompanied by at least one other element of the claims. ...................... 20
`
`
`
`

`

`D. The Prior Art Does Not Disclose “automatically tuning said receiver station
`to a channel designated by said instruct-to-enable signal; … outputting said
`digital programming based on said step of decrypting and based on user input at
`a local input of said receiver station” accompanied by at least one other element
`of the claims. ......................................................................................................... 22
`E. The Prior Art Does Not Disclose “decrypt[ing] a digital video portion” or
`“encrypted digital information includes digital television programming, wherein
`said digital television programming comprises digital video and digital audio”
`accompanied by at least one other element of the claims..................................... 23
`F.
`The Invention Would Not Have Been Obvious. ......................................... 24
`IX. PATENT OWNER IS NOT AWARE OF OTHER MATERIAL PRIOR
`ART. ........................................................................................................................ 25
`
`X. CONCLUSION ................................................................................................ 25
`
`
`
`
`
`

`

`Exh. No.
`2001.
`2002.
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`2011.
`2012.
`
`2013.
`
`2014.
`
`2015.
`
`2016.
`
`2017.
`
`PATENT OWNER’S UPDATED LIST OF EXHIBITS
`
`Description
`Declaration Of Alfred C. Weaver, Ph.D., In Support Of Patent
`Owner’s Preliminary Response
`Curriculum Vitae of Dr. Alfred C. Weaver
`Transcript of Depositions of Anthony Wechselberger, Amazon v.
`PMC, IPR2014-01532 (June 2-3 and August 25, 2014)
`PMC’s Appeal Brief in Reexam. of U.S. Pat. No. 4,965,825, Control
`No. 90/006,536 (January 29, 2007)
`PMC’s Reply Brief in Reexam. of U.S. Pat. No. 5,335,277, Control
`No. 90/006,536 & 90/006,698 (November 10, 2008)
`PMC’s Appeal Brief in Reexam. of U.S. Pat. No. 5,335,277, Control
`No. 90/006,536 & 90/006,698 (August 16, 2006)
`Board Decision in Reexam. of U.S. Pat. No. 5,335,277, Control No.
`90/006,536 (January 19, 2010)
`Order (Dkt. No. 715) in Pegasus Dev. Corp. et al. v. DirecTV, Inc. et
`al., C.A. No. 00-1020 (D. Del. May 15, 2013)
`Board Decision in Reexam. of U.S. Pat. No. 4,965,825, Control No.
`90/006,536 (December 19, 2008)
`Expert Declaration Of Anthony J. Wechselberger In Support Of
`Defendants’ Principal Opening Brief On Claim Construction (Dkt.
`No. 159) in Broadcast Innovation, LLC v. Echostar Communications
`Corp, Hughes Electronics Corp, DirecTV, Thomson Multimedia,
`Dotcast, Pegasus Satellite Television Inc., C.A. No. 01-WY-2201 (D.
`Col. Sept. 16, 2002)
`U.S. Pat. No. 4,893,248 to Pitts
`Excerpt from Joint Claim Construction Chart (Dkt. No. 170) in PMC
`v. Apple, C.A. 2:15-cv-01366, (E.D. Tex. June 14, 2016)
`Excerpts from 1981 New Collegiate Dictionary, definitions of
`“designate” and “locate”
`Decision, Institution of Inter Partes Review for IPR2013-00217,
`U.S. Patent No. 7,162,549 (September 10, 2013)
`Information Disclosure Statement in Application No. 08/485,507
`(September 5, 1995)
`Information Disclosure Statement in Application No. 08/485,507
`(December 22, 2011)
`Preliminary Amendment in Application No. 08/485,507 (June 7,
`1995)
`
`
`
`

`

`2020.
`
`2021.
`
`2025.
`
`2026.
`
`2027.
`
`2028.
`
`2029.
`
`2030.
`
`2031.
`
`2032.
`
`2033.
`
`2018.
`2019.
`
`Notice of Allowance in Application No. 08/460,793 (July 10, 2013)
`Notice of Allowance in Application No. 08/487,649 (October 8,
`2013)
`“Decision On Appeal” in Ex Parte Reexamination Control
`90/006,536 (of U.S. Patent 4,965,825) (December 19, 2008)
`“Decision On Appeal” in Ex Parte Reexamination Control Nos.
`90/006,563 & 90/006,698 (of U.S. Patent 5,335,277) (January 19,
`2010)
`Declaration Of Alfred C. Weaver, Ph.D., In Support Of Patent
`2022.
`Owner’s Response
`2023. Memorandum Opinion and Order (Dkt. 246) in PMC v. Apple, C.A.
`2:15-cv-01366, (E.D. Tex. June 14, 2016)
`2024.
`Declaration of Thomas J. Scott, Jr., Supporting Patentability
`Hisashi Kaneko and Tatsuo Ishiguro, Digital Television
`Transmission Using Bandwith Compression Techniques, IEEE
`Communications Magazine, July 1980, pp. 14-22
`John Free, High-Resolution TV – Here come wide-screen crystal-
`clear pictures, Popular Science, Nov. 1981, pp. 108-110
`Definition of “instruction” from Webster’s Ninth NewCollegiate
`Dictionary, 1988
`Definition of “instruction” from Computer Dictionary, Fourth
`Edition, 1985
`Definition of “execute” from Computer Dictionary and Handbook,
`Third Edition, 1980
`E.S. Busby, Principles of Digital Television Simplified, Journal of the
`SMPTE, July 1975, pp. 542-545
`David A. Howell, A Primer on Digital Television, Journal of the
`SMPTE, July 1975, pp. 538-540
`Gwyneth Davies Heynes, Digital Television – A Glossary and
`Bibliography, SMPTE Journal, January 1977, pp. 6-9
`Leonard S. Golding, Quality Assessment of Digital Television
`Signals, SMPTE Journal, March 1978, pp. 153-157
`Jonathan H. Stott, Design Technique for Multiplexing Asynchronous
`Digital Video and Audio Signals, IEEE Transactions on
`Communications, May 1978, pp. 601-610
`Toshio Koga, et al., Statistical Performance Analysis of an
`Interframe Encoder for Broadcast Television Signals, IEEE
`Transactions on Communications, Dec. 1981, pp. 1868-1876
`Farhard A. Kamangar and K.R. Rao, Interfield Hybrid Coding of
`
`2034.
`
`2035.
`
`2036.
`
`

`

`Component Color Television Signals, IEEE Transactions on
`Communications, Dec. 1981, pp. 1740-1753
`A.N. Netravali and J.D. Robbins, Motion-Compensated Television
`Coding: Part I, The Bell System Technical Journal, March 1979, pp.
`631-670
`A.N. Netravali and J.A. Stuller, Motion-Compensated Transform
`Coding, The Bell System Technical Journal, Sept. 1979, pp. 1703-
`1718
`John O. Limb, et al., Digital Coding of Color Video Signals – A
`Review, IEEE Transactions on Communications, Nov. 1977, pp.
`1349-1385
`Izumi Horikawa, et al., Design and Performances of a 200 Mbit/s 16
`QAM Digital Radio System, IEEE Transactions on Communications,
`Dec. 1979, pp. 1953-1958
`Philippe Dupuis, et al., 16 QAM Modulation for High Capacity
`Digital Radio System, IEEE Transactions on Communications, Dec.
`1979, pp. 1771-1782
`Shozo Komaki, et al., Characteristics of a High Capacity 16 QAM
`Digital Radio System in Multipath Fading, IEEE Transactions on
`Communications, Dec. 1979, pp. 1854-1861
`M. Nannicini, et al., Temperature Controlled Predistortion Circuits
`for 64 QAM Microwave Power Amplifiers, 1985 IEEE MTT-S
`Digest, pp. 99-102
`A. Giavarini and F. Marconi, Low Noise Microwave Integrated
`Receiver for 64 QAM Digital Radio, 1986 16th European Microwave
`Conference, pp. 168-173
`F.J. Witt, et al., 64-QAM Digitalization of an Analogue Microwave
`Radio Network, 1986 16th European Microwave Conference, pp. 53-
`58
`Kuang-Tsan Wu and Kamilo Feher, 256-QAM Modem Performance
`in Distorted Channels, IEEE Transactions on Communications, May
`1985, pp. 487-491
`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.
`
`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.
`
`2011
`Patent Application Ser. No. 08/485,507
`U.S. Patent 4,965,825
`U.S. Patent 4,233,628 (“Ciciora”)
`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
`
`
`
`
`
`
`

`

`2071.
`
`2072.
`2073.
`2074.
`2075.
`2076.
`2077.
`
`2078.
`
`2079.
`
`2080.
`
`2081.
`2082.
`2083.
`
`2084.
`
`2085.
`2086.
`2087.
`
`2088.
`
`2089.
`
`2090.
`2091.
`2092.
`2093.
`
`2094.
`
`Daniel Nachbar, When Network File Systems Aren’t Enough:
`Automatic Software Distribution Revisited, USENIX Association
`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)
`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 of Standards
`(Dec. 2, 1980) (“FIPS PUB 81”)
`
`
`
`
`
`
`

`

`2095.
`
`2096.
`2097.
`2098.
`2099.
`2100.
`
`2101.
`2102.
`2103.
`2104.
`2105.
`2106.
`2107.
`2108.
`2109.
`
`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”)
`2113. Waring, Cox’s INDAX System – Delivering Future Two-Way Cable
`Services Today, Videotex ’81 (“Waring”)
`2114.
`The Viewtron Handbook (1983) (“Viewtron Handbook”)
`Viewtron: A Service of the Future for American Homes (“Viewtron
`2115.
`Brochure”)
`2116.
`Viewtron Magazine & Guide (1983) (“Viewtron Magazine”)
`Varadharajan, Some Cryptographic Techniques for Secure Data
`2117.
`Communication, Plymouth Polytechnic, 1984 (“Varadharajan”)
`2118.
`Lewiston Daily Sun, March 27, 1984
`2119.
`The Micro Cookbook User’s Guide and Reference Booklet (1984)
`
`2110.
`
`2111.
`
`2112.
`
`
`
`
`
`
`

`

`(“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
`U.S. Patent No. 4,789,895 (“Mustafa”)
`U.S. Patent No. 4,215,369 (“Iijima”)
`U.S. Patent No. 4,302,775 (“Widergren”)
`U.S. Patent No. 4,388,643 (“Aminetzah”)
`Internet Protocol, Darpa Internet Program Protocol Specification
`(Sept. 1981)
`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
`
`2120.
`
`2121.
`
`2122.
`
`2123.
`2124.
`2125.
`2126.
`2127.
`
`2128.
`
`2129.
`2130.
`2131.
`2132.
`2133.
`2134.
`2135.
`
`2136.
`
`2137.
`
`2138.
`
`2139.
`
`
`
`
`
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`With respect to the challenged claims 13-16, 18, 20, 21, 23-24, 26-27 and 30
`
`of U.S. Patent No. 8,191,091 (“the ’091 Patent”), if any of those challenged claims
`
`are found unpatentable, Patent Owner moves (with the Board’s authorization (Ex.
`
`2139)) to cancel the claim found to be unpatentable and replace the unpatentable
`
`claim with a corresponding one of the proposed substitute claims 32-43. 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 Petition prior art and
`
`art known to PMC. Patentability is supported by the declaration of Dr. Timothy D.
`
`Dorney, Ph.D. (Ex. 2130.) Dr. Dorney is an electrical engineer with extensive
`
`experience in the field of electrical and computer engineering. Id. at ¶¶ 3-7.
`
`II.
`
`INTRODUCTION
`
`The ’091 Patent teaches an invention which combines mass medium
`
`programming with information both specific and customized to a particular user of
`
`the receiver station. The unique combination of known elements, coupled with new
`
`signaling and operations of those elements, provided the mechanism with which to
`
`offer “personal” information. As such, the inventors of the ’091 Patent drew from a
`
`variety of art areas. For example, mass medium programming came from
`
`broadcast means such as television and radio, and digital electronic communication
`
`using embedded digital information in the broadcast means.
`
`1
`
`

`

`Interestingly, digital information was also available at the receiver station
`
`using a telephone modem, subject matter within the purview of engineers in
`
`computer communications. The power of signal processors, controllers,
`
`decryptors, matrix switches, and the like, however, would have been the domain of
`
`circuit and system engineers. Still further, the introduction of a microcomputer
`
`into the above described operations required a skill set relevant to computer
`
`programmers, computer science, and/or computer engineering. No one person of
`
`skill at the time would typically have had the required expertise in all of these
`
`technical areas, nor would they have been inclined to readily borrow ideas so far
`
`removed from their area of technical expertise. The ’091 Patent offers a unique
`
`solution by first deciding on a desired result, then incorporating the elements,
`
`signaling, and programming necessary to achieve that result.
`
`While certain elements of the claims may have been known, the combination
`
`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
`
`(hereinafter, “the amended claims” or “the substitute claims”) are true to the
`
`embodiments provided in the ’091 Patent and supported by its Specification.
`
`However, to “identify known combinations with other elements in the claim”
`
`(Corning Optical Communications v. PPC Broadband, Inc., IPR2014-00441,
`
`Paper 19 at 4 (P.T.A.B. Oct. 30, 2014)) is a daunting task because the ’091 Patent
`
`
`
`
`2
`
`

`

`covers technical fields involving broadcast, computers, computer networks,
`
`circuits, and signals to control the interoperation of all of these elements. Patent
`
`Owner, however, asserts that the contingent amended claims are patentable over
`
`prior art in these various technical areas. In the following, the analysis investigates
`
`not only the instant prior art in this case, but also the relevant art cited in IPR2016-
`
`00751, IPR2016-00753, IPR2016-00754, and IPR2016-01520 (“the Apple IPRs”)
`
`and IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01531, IPR2014-
`
`01532, IPR2014-01533, and IPR2014-01534 (“the Amazon IPRs”), to which this
`
`Board has already been exposed. By considering these wide swaths of art
`
`previously applied to the same specification, which encompasses numerous
`
`different technical areas, Patent Owner believes it is fairly representing all prior art
`
`known to be relevant to the amended claims.
`
`In offering patentable amended claims, the Patent Owner, for the purposes of
`
`this motion only, adopts and uses the preliminary claim constructions set forth by
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`the Board in its Institution Decision. Paper 14 at 6-30. Furthermore, support of the
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`amended claims is based solely on U.S. Ser. Appl. No. 08/485,507 , and centrally
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`focused on “Example #7” starting on page 288. (Ex. 2050.)
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`The claim amendments overcome the instant prior art in this case. In
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`particular, all amended claims require receiving the “encrypted digital information
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`transmission is unaccompanied by any scrambled analog encoded information.”
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`This limitation cannot be found in the prior art references cited by the Petitioner.
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`Exhibits 1004-1005 require scrambled analog television to support the digitally
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`encrypted embedded data. Exhibit 1006 is a one-way CATV system that is silent
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`as to digital encryption. Exhibit 1007 is silent as to digital encryption, and any
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`forced tuning does not result in outputting based on a user input. Exhibit 1008
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`requires a “scrambled” mode of operation to support digital data. (Id. at 5:23-36;
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`8:41-65.)
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`Exhibit 1020 only discusses the embedding of digital data in a television
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`signal, but is silent as to an application or encryption. Exhibit 1021 is a review of
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`the Videotex service, and is silent as to digital encryption because Videotex
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`already used point-to-point communication (i.e., telephone connection), and the
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`communication was initialized with a password (id. at 65). Exhibit 1022 only
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`discusses one-way services, and is silent as to digital encryption, tuning, and a
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`CPU. Exhibit 1023 requires scrambled analog television as support for the
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`embedded digital signals, and is silent as to digital encryption. Exhibit 1024 is
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`silent as to digital encryption, digital audio, and teaches away from using telephone
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`communications for digital data distribution. Exhibits 1025-1026 are silent as to
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`digital encryption, tuning, and a CPU. Exhibit 1027 is a one-way CATV system
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`that is silent as to specific internal operation and components of the receiver
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`station. Exhibits 1028-1029 are one-way broadcast TV systems requiring
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`scrambled analog television to support the embedded digital data.
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`More broadly, all Teletext prior art and the like (e.g., Teletex, Ceefax,
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`Teledata, Telidon, Didon, Oracle, etc.) inherently cover a one-way digital data
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`broadcast transmission. Amended claims 32-36 require two-way communications.
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`Amended claims 37-40 require both “storing digital data comprising information
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`particular to a subscriber at said receiver station,” “said receiver station comprises
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`a central processing unit, said central processing unit interacting with random
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`access memory, and reprogrammable nonvolatile memory storing said digital
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`data[,]” and “a unique digital code capable of identifying said receiver station.”
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`Station identification codes do not typically exist in one-way systems, and even if
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`they did exist for a particular reference, none of these one-way systems discuss
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`“information particular to a subscriber at said receiver station” (“subscriber
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`information”). Subscriber information is not subscriber station information such as
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`a receiver station identification code, currently tuned channel, or allowed tier
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`programming level. Subscriber station information may be common to thousands
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`of subscriber stations and have no information particular to a subscriber using the
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`receiver station. As taught in ’091 Patent (Ex. 2050) and shown in Ex. 2130 at
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`Page 27, subscriber information comprises information on the portfolio of financial
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`instruments owned by the subscriber, and/or the size of the family of the subscriber
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`of the receiver station. The subscriber information is tied to the personal activity
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`and circumstances of the subscriber and NOT information representative of the
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`subscriber station circuitry or access codes. Subscriber information may be
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`duplicative of a limited number of other subscriber information at other subscriber
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`stations, because, for example, some subscribers may have the same size family
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`and/or have purchased the same type and quantity of stock. However, subscriber
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`information is unique to the subscriber and their activities. Furthermore, the claims
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`require outputting information dependent on “information particular to a subscriber
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`at said receiver station.” The ’091 Patent discusses a graphic overlay based on a
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`particular subscriber’s portfolio with reference to Fig. 1C. Furthermore, in one-way
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`digital data broadcast transmission, automatic tuning is unlikely as many receiver
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`stations would likely be affected, and is counterintuitive because the claim requires
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`the transmission to be involved in the automatic tuning, but the outputting
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`dependent on a local user input which may run afoul of the transmitted signal.
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`All Videotex prior art and the like (e.g., Prestel, Vewdata, Antiope, etc.)
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`inherently covers a two-way digital data communication. At a basic level, no
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`Videotex system prior art has discussed digital encryption or a subscriber station
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`identification code. Two-way systems used a point-to-point communication (i.e.,
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`telephone connection), and the communication was initialized with a password.
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`Once billing information was established through a password, the computer
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`network always knew the destination because the telephone system is point-to-
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`point, and the telephone number is unique to the connection. Also, subscribers
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`could use any terminal because the terminals were not uniquely identified by
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`anything other than their telephone number during use.
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`The final area for broad review is computers connected through computer
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`networks. These systems may have used completely digital communications with
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`unique names and/or numbers to identify each computer as a node on the network.
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`However, computers in 1987 operated using unitary file(s), whether those file(s)
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`were instructions, data, or a combination. In obtaining a file transferred over the
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`computer network, if a packet and/or frame was dropped or damaged, IPv4 offered
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`no retransmission capabilities (Ex. 2135), while Ethernet offered a source detected
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`retransmission mechanism only. (Ex. 2128 at 400). Only once the complete file
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`was available at the receiving computer, the file could be executed or used.
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`Execution of a file is based on an ordered sequence of instructions and may have
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`involved a standard file format where the contents of a file are constrained by the
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`standard.
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`Amended claims 37-40 require “creating, based on at least a portion of said
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`encrypted digital information transmission, a digital record including a unique
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`digital code identifying said receiver station”, and “automatically transmitting said
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`digital record to a remote station.” Neither IPv4 nor Ethernet used receiver based
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`acknowledgements.
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`DES, an encryption/decryption technique available in 1987 (Exs. 2094-
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`2095), defines a specific methodology to encrypt/decrypt a file using a symmetric
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`key, but is silent as to how that key is delivered. The key may or may not be
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`transmitted with the content. If the key is transmitted with the content, an
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`executable program would typically be told exactly where the key is located within
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`the file, in stark contrast to the “determining a fashion in which said receiver
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`station locates a first decryption key by processing said instruct-to-enable signal”
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`claim requirement.
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`Execution of a decryption algorithm typically decrypted the file(s) at the
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`local computer. Computers and computer networks were not generally
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`programmed to confirm successful operation. Operation was based on either error
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`detection to make a correction, or the presumption of success without notification.
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`Accordingly, any creation of a record with “a unique digital code identifying said
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`receiver station” would NOT be automatically transmitted to a remote station.
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`Given these three 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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`(Fed. Cir. 2013))). As discussed below, Patent Owner has exhaustively examined
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`alternative combinations of art in very different technical areas, particularly with
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`an eye toward the prior art cited by the Petitioners in both the Amazon and Apple
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`IPRs. Based on that review, the Patent Owner believes that the proposed
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`contingent amended claims 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. 37 C.F.R. §42.221 (a)(2)(ii). The amendments
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`simply clarify the meaning of the claims and only add features to the claims in a
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`manner that is consistent with the description of the inventions in the specification.
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`The amendments are responsive to a ground of unpatentability involved in the trial
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`and do not remove any limitations. 35 U.S.C. § 316(d)(3); 37 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
`The substitute claims find support in the disclosure of the ’091 Patent.1 Ex.
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`1003. Specifically, the claims are supported and cited to the patent application that
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