Trials@uspto.gov
`571-272-7822
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` Paper 44
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` Entered: March 6, 2018
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`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 8,191,091 B1
`
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`
`I. INTRODUCTION
`
`Patent Owner filed a Request for Rehearing (Paper 43, “Reh’g Req.”
`
`or “Rehearing Request”) asserting that we applied “plainly erroneous claim
`
`constructions for two key terms” in the Final Written Decision (Paper 42,
`
`“FWD”). Reh’g Req. 1. Patent Owner “respectfully requests that the Board
`
`grant this request for rehearing.” Id. at 14.
`
`Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision
`
`should be modified lies with the party challenging the decision. The request
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`must specifically identify all matters the party believes the Board
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`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, opposition, or a reply.”
`
`For the reasons provided below, we deny Patent Owner’s request to
`
`alter the claim constructions applied in the Final Written Decision.
`
`II. ANALYSIS
`
`
`
`Patent Owner contends we misconstrued the various forms of
`
`“decrypt,” “encrypt,” “decrypting,” “encrypted,” which Patent Owner refers
`
`to as “collectively, ‘decrypt terms.’” Reh’g Req. 1, 3. Patent Owner also
`
`contends we misconstrued the related phrase “encrypted digital information
`
`transmission including encrypted information.” Id. at 1. Challenged
`
`independent claims 13 and 20 recite “receiving an encrypted digital
`
`information transmission including encrypted information,” whereas
`
`challenged independent claim 26 recites “receiving an information
`
`transmission including encrypted information.” Each of the challenged
`
`independent claims, claims 13, 20, and 26, recite “[a] method of decrypting
`
`programming,” “decrypting said encrypted information,” and “outputting
`
`said programming based on said step of decrypting.” See Ex. 1003, 285:61–
`
`2
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`286:9, 286:29–49, 286:63–287:8.
`
`
`
`
`
`
`
`Exemplary challenged claim 13 follows:
`
`information
`
`13. A method of decrypting programming at a receiver station,
`said method comprising the steps of:
`
`[a]
`receiving
`an
`encrypted digital
`transmission including encrypted information;
`
`[b] detecting in said encrypted digital information
`transmission the presence of an instruct-to-enable signal;
`
`[c] passing said instruct-to-enable signal to a processor;
`determining a fashion in which said receiver station locates a first
`decryption key by processing said instruct-to-enable signal;
`
`[d] locating said first decryption key based on said step of
`determining;
`
`[e] decrypting said encrypted information using said first
`decryption key; and
`
`[f] outputting said programming based on said step of
`decrypting.
`
`Ex. 1003, 285:61–286:9 ([a]–[f] nomenclature added).
`
`Patent Owner argues we improperly used “the meaning of the term
`
`‘programming’. . . . to bootstrap its preferred construction of ‘decrypt’” to
`
`show that the term “decrypt” includes descrambling of analog information.
`
`See Reh’g Req. 11 (citing FWD 24–25). Patent Owner explains
`
`“[p]rogramming is . . . defined as types of content” not “in terms of how it
`
`is formatted (e.g., analog or digital) or how it is transmitted (e.g.,
`
`modulation, frequency, type of transmitter.” Id. at 12. Patent Owner also
`
`argues “the issue is the meaning of ‘decrypt’, not ‘programming.’” Id. at 11.
`
`Our interpretation of programming played only part of the role in
`
`construing the decrypt terms, and served to show consistency with other
`
`findings including our interpretation of “encrypted information,” discussed
`
`further below. The Final Written Decision notes “Patent Owner contends
`
`‘[u]nder PMC’s construction of decrypting, decrypting programming is
`
`3
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`

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`IPR2016-00755
`Patent 8,191,091 B1
`
`necessarily limited to the decryption of digital programming.’” FWD 28
`
`(quoting PO Resp. 15 (emphasis added)). In other words, Patent Owner
`
`attempts in its Patent Owner Response to restrict the broad term
`
`“programming” by constraining decryption, instead of construing decryption
`
`by interpreting programming and other related terms. As indicated above,
`
`each of the challenged claims recite interdependent phrases, including “[a]
`
`method of decrypting programming,” “decrypting said encrypted
`
`information,” and “outputting said programming based on said step of
`
`decrypting.”
`
`As our reviewing court instructs, “[t]o begin with, the context in
`
`which a term is used in the asserted claim can be highly instructive.” See
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)
`
`(“This court’s cases provide numerous similar examples in which the use of
`
`a term within the claim provides a firm basis for construing the term.”)
`
`(emphasis added). Because the challenged claims recite “decrypting
`
`programming” and “outputting said programming based on said step of
`
`decrypting,” the term “programming” and the “encrypted” phrase noted
`
`above and discussed further below inform the meaning of “decrypting.”
`
`Patent Owner implicitly recognizes a strong relationship between “various
`
`‘decrypt’ and ‘encrypt’ type terms” by referring to them “collectively” as the
`
`“decrypt terms.” Reh’g Req. 3. As indicated, Phillips and other precedents
`
`show this relationship matters in claim construction. See Phillips, 415 F.3d
`
`at 1314 (citing Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir.
`
`2004) for the following proposition: “claim term ‘ingredients’ construed in
`
`light of the use of the term ‘mixture’ in the same claim phrase”; and citing
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`Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356 (Fed. Cir.
`
`4
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`1999) for the following proposition: “claim term ‘discharge rate’ construed
`
`in light of the use of the same term in another limitation of the same claim”).
`
`Patent Owner’s argument that programming relates only to content
`
`also contradicts the record evidence showing “programming” relates to
`
`transmission types. According to the ’091 patent, “[t]he term
`
`‘programming’ refers to everything that is transmitted electronically to
`
`entertain, instruct or inform, including television, radio, broadcast print,
`
`and computer programming was well as combined medium programming.”
`
`Ex. 1003, 6:31–34 (emphasis added); FWD 53 (quoting same passage).
`
`Patent Owner argues this phrase refers to the “types of content that
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`‘entertain, instruct, or inform” and “is agnostic as to how the content is
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`delivered,” “[o]ther than [the content] being transmitted ‘electronically.’”
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`Reh’g Req. 12.
`
`Notwithstanding the arguments, the terms “television” and “radio”
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`implicitly relate to transmission types, for example, analog video, and analog
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`audio, whereas computer programming or broadcast print appears to refer to
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`embedded digital information in the analog programming. See, e.g., FWD 5
`
`(discussing Fig. 2A of the ’091 patent depicting a “standard amplitude
`
`demodulator,” quoting Ex. 1003, 18:42–62). We agree with Patent Owner
`
`that the phrase shows the content must be transmitted electronically. See
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`Reh’g Req. 12. At the least, wireless transmission requires some type of
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`modulation of a medium (e.g., carrier wave for amplitude modulation) to
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`facilitate the transmission, as the phrase from the ’091 Specification
`
`suggests. See, e.g., Ex. 1003, Fig. 1 (television tuner with antenna), Fig. 2
`
`(radio signal decoder, TV signal decoder, local oscillator, etc.), Fig. 2A
`
`5
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
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`(amplitude demodulator). Patent Owner does not contend the electronic
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`transmission of programming occurs without some type of modulation.
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`The programming content also constitutes part of a transmission that
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`the challenged claims decrypt, at least according to the preamble of those
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`claims (i.e., “[a] method of decrypting programming”). Furthermore, as the
`
`Final Written Decision notes, “the ’091 patent refers to ‘decrypting
`
`combined media programming.’” FWD 17 (quoting Ex. 1003, 5:38–39
`
`(emphasis added)). Similarly, “[t]he earlier-filed ’490 patent states ‘[a]
`
`decrypter does not necessarily decrypt the entire transmission. Encrypted
`
`transmissions may be only partially encrypted.’” Id. at 15 (quoting Ex.
`
`1009, 13:68–14:2 (emphasis added)). Referring to decrypting transmissions
`
`(described as including analog information, see, e.g., Ex. 1003, Figs. 1, Fig.
`
`2A, 2, FWD 4–5) and decrypting programming in the ’091 patent
`
`Specification implies a relationship between programming and transmission
`
`types.
`
`Moreover, Patent Owner’s remarks during the Oral Hearing show that
`
`Patent Owner understood that “programming” includes types of
`
`transmissions, including modulation types:
`
`JUDGE EASTHOM: So are you saying -- in 1987, you
`say “programming” is defined as transmitting -- everything that
`is transmitted electronically to entertain, instruct, computer
`programming, et cetera. Are you saying you don’t cover --
`you’re not covering the digital modulation techniques with that
`in 1987? You don’t -- that doesn’t cover those, the -- for
`example, PSK [phase shift keying], FSK [frequency shift keying],
`you don’t -- there is all these digital modulation techniques in
`1987. Does “programming” cover those types of techniques?
`MR. KLINE: If they’re transmitted electronically to
`entertain, instruct, or inform -- right -- then yes, they would.
`
`Paper 41 (Oral Hearing Transcript, “Tr.”), 22:16–24 (emphasis added).
`
`6
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`
`Other arguments by Patent Owner show a similar relationship
`
`between programming and transmission types. For example, the Final
`
`Decision notes “Patent Owner also obscures the construction and scope of
`
`the claims by arguing ‘whether the Board construes digital television
`
`programming to be analog video containing embedded digital content (as
`
`Petitioner proposes) or entirely digital TV content, the ’490 Patent provides
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`written support for both cases.’” FWD 19 (quoting PO Resp. 33) (emphasis
`
`added); see also note 4 infra (discussing programming and transmission).
`
`Accordingly, Patent Owner fails to show that the Final Written Decision
`
`overlooks or misapprehends how the term programming helps to define what
`
`decryption (and the other decrypt terms) means.
`
`Patent Owner also argues “[t]he Board’s construction that ‘encrypted
`
`digital information transmission including encrypted information’ must
`
`encompass scrambled analog information is erroneous.” Reh’g Req. 14
`
`(citing FWD 19, 21). According to Patent Owner, “[t]he Board’s conclusion
`
`rests on its assertion that ‘encrypted information’ would otherwise be
`
`superfluous.” Id. Patent Owner contends “[t]he term is not superfluous.”
`
`Id. Patent Owner explains “‘encrypted information’ must be digital.” Id.
`
`Contrary to these arguments, as we explained in the Final Written
`
`Decision, “if ‘an encrypted digital information transmission, including
`
`encrypted information,’ only includes encrypted digital information, then it
`
`renders superfluous ‘including encrypted information.’” FWD 10. We also
`
`determined that the Patent Owner Response concedes the term would be
`
`superfluous under Patent Owner’s construction, and Patent Owner agreed it
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`7
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`“may be” “a superfluous term” (Tr. 41:12–13) during the Oral Hearing. Id.
`
`at 10 (citing Paper 20 (“PO Resp.”) 8; Tr. 41:13).1
`
`To support its argument that the term is not superfluous, Patent Owner
`
`contends “[t]he ‘encrypted information’ term simply establishes an
`
`antecedent basis for the subsequent step of ‘decrypting said encrypted
`
`information.’” Reh’g Req. 14.2 This argument verifies that “decrypting”
`
`must encompass descrambling of “said encrypted information” (as analog
`
`information) unless the phrase includes superfluous terms. In other words,
`
`the subject limitation of claims 13 and 20, namely “receiving an encrypted
`
`digital information transmission including encrypted information,” shows
`
`that the “encrypted information” included in the transmission necessarily
`
`must be broader than the “encrypted digital information” in the transmission.
`
`See claims 13 and 20 (emphasis added). Patent Owner’s argument that
`
`“encrypted digital information” and “encrypted information” mean the same
`
`thing verifies that either of the terms “digital” and the term “encrypted
`
`information” is superfluous. See id. (Patent Owner arguing “‘encrypted
`
`information’ must be digital”).
`
`Patent Owner also contends that “[t]he Board’s discourses on the
`
`original patent, U.S. Pat. No. 4,965,490 (Ex. 1009, ‘’490 [p]atent’) for claim
`
`
`
`1 The Final Written Decision incorrectly cites “Tr. 43:8–45:7, 41:13”
`(emphasis added), but the citation should be “Tr. 39:8–45:7, 41:13.” See
`FWD 10.
`2 This argument exemplifies why the related and interdependent claim terms
`must be construed in context of each other and the remainder of the
`challenged claim in which they appear, contrary to Patent Owner’s
`arguments that we improperly “bootstrapped” the claim construction by
`looking to other terms in the claim. See id. at 11.
`
`8
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
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`construction are irrelevant.” Reh’g. Req. 12 (footnote omitted). Contrary to
`
`this argument, as we noted in several instances, the parties cited both the
`
`’490 patent (Ex. 1009) and the ’091 patent (Ex. 1003) to support their claim
`
`construction of the decrypt terms and the related encrypted phrase. See, e.g.,
`
`FWD 12 (“To support their respective positions, both parties cite to the ’091
`
`patent (which contains 288 columns, Ex. 1003 [and which]) . . . is a CIP of
`
`the earlier filed ancestor ’490 patent (which contains only 24 columns”));
`
`FWD 75 (“Patent Owner itself provides dual citations to the two patents and
`
`to the plain meaning of terms in various places to support its claim
`
`construction (as outlined above). This implies that the plain meaning and
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`overlapping subject matter in the two patents inform a common
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`understanding of the construction of some of the interrelated claim
`
`phrases.”); PO Resp. 5 (arguing “the inventors explicitly expanded the scope
`
`of ‘encrypted’” (emphasis added) and “the specification specifically notes:
`
`‘Encrypted transmissions may be only partially encrypted’” and citing “Ex.
`
`1009, 13:68–14:2”), 10 (arguing “decryptors convert the received
`
`information . . . to other digital information” and citing “Ex. 1009, 4:61–
`
`5:2”).
`
`Precedent shows related patents often include relevant claim
`
`interpretations. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
`
`1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that
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`the same claim term in the same patent or related patents carries the same
`
`construed meaning.”). Yet, Patent Owner argues that we rely on a
`
`“fallacious premise that encryption and scrambling are the only ways to
`
`protect information” as disclosed in the related ’490 patent. See Reh’g Req.
`
`12–13 n.2 (citing FWD 15). Patent Owner contends this premise led us to
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`9
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`overstate the meaning of the following statement Patent Owner agreed to
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`during the Oral Hearing: “The thrust of the whole [’490] patent [is] to
`
`protect all manner of transmission.” See id. (quoting FWD 15); ’754 Tr.
`
`39:8–14.3 According to Patent Owner’s argument in its Rehearing Request,
`
`Patent Owner’s agreement (during the related ’754 Oral Hearing (see note
`
`3)) to that statement only meant that Patent Owner agreed that the ’490
`
`patent describes analog protection techniques other than scrambling,
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`including, inter alia, interrupt means and special signal words. See Reh’g
`
`Req. 12–13 n.2 (citing Ex. 1009, Fig. 4, 4:47–54).
`
`First, we noted previously the different forms of analog protection
`
`disclosed in the ’490 patent. See, e.g., FWD 18 (quoting Ex. 1009, 4:31–34,
`
`13:17–20, 27–32 discussing the disclosure of “decrypter/interrupter 101”
`
`and “how to decrypt or interrupt the programming”). Second, Patent
`
`Owner’s arguments in its Rehearing Request do not account for the context
`
`surrounding the statement Patent Owner agreed to during the Oral Hearing.
`
`See Reh’g Req. 12–13 n.2. Specifically, during the Oral Hearing, we
`
`explored Patent Owner’s contention that the ’490 patent does not discuss
`
`scrambling or descrambling and the related argument that decrypting (i.e.,
`
`not interrupting) does not include descrambling. See ’754 Tr. 37:20–39:18.
`
`During that discussion, we asked Patent Owner if the ’490 patent only
`
`protects digital transmissions or also protects analog transmissions, and then
`
`
`
`3 The Oral Hearing in related IPR2016-00754 transpired on the same day
`with the Oral Hearing in the instant case, and both cases involve the ’490
`patent as an ancestor patent to the challenged patents. In the Final Written
`Decision, we cite the Oral Hearing Transcript in IPR2016-00754, referring
`to it as the “’754 Tr.” See FWD 3 & n.1, 15.
`
`10
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`

`

`IPR2016-00755
`Patent 8,191,091 B1
`
`pointed out (after Patent Owner demurred to the question) that as the ’490
`
`patent discloses protection of analog transmissions, decrypting must have
`
`included or meant descrambling. See id. at 38:7–39:19.4 The Oral Hearing
`
`discussion did not include the other protection methods, which Patent Owner
`
`now attempts to insert as a caveat via its Rehearing Request into otherwise
`
`candid concessions made by Patent Owner’s counsel during the Oral
`
`Hearing.
`
`Patent Owner also argues that during prosecution of the ’091 patent,
`
`Patent Owner “made three instances of disclaimer that limit ‘decrypt’ to
`
`operations on digital data and exclude operations on analog information.”
`
`Reh’g Req. 8, 8–11 (asserting “First Disclaimer” (April 2011) “Second
`
`Disclaimer” (October 2011) and “Third Disclaimer” (December 2011))
`
`(emphasis omitted).5 Patent Owner characterizes this panel’s response to
`
`
`
`4 For example, Judge Easthom asks “are you saying that the ’490 patent only
`deals with protecting digital transmissions? In other words, you were not
`trying to protect analog transmission -- analog programming. Is that your
`position?” Id. at 38:7–10. Patent Owner initially states, inter alia, “I would
`have to think about that longer, Your Honor.” Id. at 38:11–12. Later, during
`the same discussion, Judge Easthom states “the [’490] patent is dealing with
`protecting analog transmissions, and if you say you don’t have anything
`about descrambling in there, then you must be talking about protecting them
`with decrypting, which is the same thing as descrambling because they’re
`analog”; and then Judge Easthom asks, “[s]o my question is, wasn’t the
`thrust of the whole patent to protect all manner of transmissions?” Id. at
`38:15–39:9. Patent Owner’s counsel answers, inter alia, “it [the ’490
`patent] certainly describes a wide variety of transmissions and a wide variety
`of programming” and “the ’490 specification certainly describes a variety of
`programming as a subject of its disclosure, absolutely.” Id. at 39:13–18.
`5 Note, Patent Owner’s Third Disclaimer of “October 2011” occurred before
`its Second Disclaimer” of “December 2011,” but the First Disclaimer of
`“April 2011” corresponds to a linear time sequence (i.e., first in time). See
`
`11
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`

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`IPR2016-00755
`Patent 8,191,091 B1
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`these three alleged disclaimers as an erroneous “reliance on claim
`
`differentiation,” because we relied upon “e.g., the difference between
`
`‘encrypted information’ and ‘encrypted digital information.’” Id. at 11
`
`(citing FWD 38–39; Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361,
`
`1369 (Fed. Cir. 2005)).
`
`Contrary to Patent Owner’s arguments, analyzing “the difference
`
`between ‘encrypted information’ and ‘encrypted digital information’” does
`
`not constitute a claim differentiation analysis. Rather, the terms “encrypted
`
`information” and “encrypted digital information” both appear in the same
`
`claim––i.e., in claim 13, and also in claim 20. See FWD 38–39. The claim
`
`differentiation doctrine applies to different claims. See Seachange, 413 F.3d
`
`at 1368 (“The doctrine of claim differentiation stems from ‘the common
`
`sense notion that different words or phrases used in separate claims are
`
`presumed to indicate that the claims have different meanings and scope.’”
`
`(quoting Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72
`
`(Fed. Cir. 1999) (emphasis added)). Patent Owner cites Seachange, but
`
`Seachange does not support Patent Owner’s position, and Patent Owner does
`
`not attempt to explain how it supports Patent Owner’s position. See Reh’g
`
`Req. 11.6
`
`As discussed above, Phillips makes clear “the context in which a term
`
`is used in the asserted claim can be highly instructive.” See Phillips, 415
`
`F.3d at 1314 (“This court’s cases provide numerous similar examples in
`
`
`
`Reh’g Req. 9–10.
`6 The analysis of claim 26 does not turn on claim differentiation either,
`because “encrypted information” recited in claim 26 takes the same meaning
`of “encrypted information” recited claims 13 and 20.
`
`12
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`IPR2016-00755
`Patent 8,191,091 B1
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`which the use of a term within the claim provides a firm basis for construing
`
`the term.”). Patent Owner’s arguments appear to conflate our use of
`
`resolving terms within the same claim with our claim differentiation analysis
`
`involving claim 18 of a related patent––the latter employed as an additional
`
`tool of claim construction. Compare FWD 37–42 (analyzing challenged
`
`claims 13, 20, and 26 with respect to prosecution history), with FWD 8–9
`
`(analyzing claim 18 of a related patent under a claim differentiation
`
`analysis). Claim differentiation, of course, constitutes “a useful guide,” but
`
`this panel only employed it as an additional tool, as noted. See Phillips, 415
`
`F.3d at 1314–15 (“Differences among claims can also be a useful guide in
`
`understanding the meaning of particular claim terms. For example, the
`
`presence of a dependent claim that adds a particular limitation gives rise to a
`
`presumption that the limitation in question is not present in the independent
`
`claim.”) (internal citations omitted).
`
`In any event, notwithstanding Patent Owner’s characterization, we
`
`addressed Patent Owner’s prosecution history arguments. See Reh’g Req.
`
`10–11; FWD 37–42.7 We quoted Phillips for guidance:
`
`Like the specification, the prosecution history provides evidence
`of how the PTO and the inventor understood the patent. . . . Yet
`because
`the prosecution history
`represents an ongoing
`negotiation between the PTO and the applicant, rather than the
`final product of that negotiation, it often lacks the clarity of the
`
`
`
`7 A related part of the analysis involved comparing statements made by
`Patent Owner in other proceedings, including prior Board reexamination
`proceedings of related patents and district court proceedings, some of which
`Patent Owner incorporated into its arguments to the Examiner during
`prosecution of the ’091 patent. See FWD 33–37, 39–40 (noting arguments
`by Patent Owner basing a claim distinction on use of a decryption key).
`
`13
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`

`IPR2016-00755
`Patent 8,191,091 B1
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`specification and thus is less useful for claim construction
`purposes.
`
`FWD 41 (quoting Phillips, 415 F.3d at 1317).
`
`The cited prosecution history and record shows that the Examiner did
`
`not allow the application claims until Patent Owner filed its December 2011
`
`amendments culminating in the issued claims, and then the Examiner
`
`specifically relied on reasons advanced by Patent Owner other than those
`
`related to the scope of decryption or encryption. See FWD 40–41 (citing Ex.
`
`1040, 7–8). Specifically, in Exhibit 1040 (Notices of Allowance and
`
`Allowability), addressing application claim 45 (issued claim 13), the
`
`Examiner stated he “agrees with Applicant” per “Applicant’s arguments
`
`filed 12/21/11” that Mason does not teach the “combination” of elements
`
`recited in “amended claim 45.” Ex. 1040, 7–8 (citing “detecting in said
`
`encrypted digital information transmission the presence of an instruct-to-
`
`enable signal” and “‘processing said instruct-to-enable signal’ in
`
`combination with the other limitations of claim 45”). Similar remarks apply
`
`to application claim 52 (issued claim 20). See id. at 8 (citing the
`
`“combination” as a reason for allowance in “amended claim 52”). With
`
`respect to application claim 58 (issued claim 26), the Examiner allowed it
`
`because a reference to Pitts et al. “fails to teach or suggest ‘automatically
`
`tuning said receiver station to a channel designated by said instruct-to-enable
`
`signal’ and ‘receiving enabling information from a remote source based on
`
`said step of tuning’ in combination with the other limitations of claim 58.”8
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`
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`8 Subtracting 32 from the application claim number yields the issued claim
`number; i.e., amended claims 45, 52, and 58 respectively correspond to
`issued claims 13, 20, and 26.
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`14
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`Id.; see also Ex. 1036, 14–17 (Examiner finally rejecting “method of
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`decrypting” claims based on Mason, which discloses encrypted keys
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`embedded in television programming); 9 Ex. 1038, 3 (Advisory Action
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`responding to Patent Owner’s arguments and previous amendments filed
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`October 3, 2011 (Ex. 1037), finding that the claims then presented prior to
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`their final form as issued were not “in condition for allowance because,”
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`inter alia, “Mason utilizes encryption keys” in transmissions, and the system
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`“would be used to encrypt/decrypt digital signals.”).
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`Alleging a third disclaimer (of October 2011) in its Rehearing
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`Request, Patent Owner contends the following: “The October 2011 office
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`action response stated yet again that ‘decrypt’ excludes analog signals. Ex.
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`1037 at 11 (‘decryption requires a digital signal’ and ‘encryption and
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`decryption are not broad enough to read on scrambling and
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`unscrambling.’).” Reh’g Req. 10 (emphasis added). Contrary to this
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`contention in its Rehearing Request, the cited page of Exhibit 1037 shows
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`Patent Owner did not state that that “‘decrypt’ excludes analog signals.” Ex.
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`1037, 11. Rather, the October 2011 response by Patent Owner containing
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`the alleged third disclaimer (Ex. 1037) ambiguously quotes statements from
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`a reexamination Board decision for a related patent without adopting those
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`statements as its own. See Ex. 1037, 10–11 (arguing “the Board . . . decided
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`. . . that encryption requires a digital signal. . . . The Board also said that
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`‘encryption and decryption are not broad enough to read on scrambling and
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`
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`9 The Examiner cites Mason at Figure 1 and column 3, lines 16–22 as
`disclosing a decryption method, where Mason discloses “decrypting the
`information signal A” (Ex. 1005, 3:22) using decrypting keys. Ex. 1005,
`3:17–22; Ex. 1036, 15–16.
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`15
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`unscrambling’” (emphasis added) (citing BPAI Reexamination App. No.
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`2008-4228, Rexam. Control. No. 90/006,536, Ex. 2009)).10 Patent Owner
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`also did not tie those Board statements to any specific claim language in the
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`issued claims (the claims were not yet in their issued form until December
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`2011). See Ex. 1037, 10–11.
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`
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`After noting what “the Board decided,” and “said,” in the same
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`October 2011 response, Patent Owner argued as follows:
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`Claims 45–50 and 52–56 claim methods of decrypting
`programming at a receiver station. . . . Mason characterizes the
`invention as a Direct Broadcast Satellite (“DBS”) system. . . .
`DBS systems were originally designed only to accommodate
`analog transmissions. Mason does not contemplate digital
`transmissions, therefore it does not address encryption. Its
`scope is limited to scrambling and unscrambling. Mason does
`not anticipate claims 45–50 and 52–56.
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`Reh’g Req. 10 (quoting Ex. 1037, 11 (emphasis in Rehearing Request)).
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`
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`This prosecution statement incorrectly describes Mason, as the
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`Examiner’s findings set forth in the subsequent Advisory Action (November
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`2011) verify. See Ex. 1038, 3 (dismissing Patent Owner’s October 2011
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`arguments and finding inter alia, “Mason utilizes encryption keys” in
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`transmissions and the system “would be used to encrypt/decrypt digital
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`signals”). Patent Owner’s prosecution statement, as quoted above, also
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`focuses on the prior art, Mason, but does not focus specifically on how the
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`claimed invention differs from Mason, and ends with the conclusory
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`
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`10 We discussed Rexam. Control. No. 90/006,536 in the Final Written
`Decision and discussed other decisions. See FWD 35, 33–36 & n.9 (noting
`generally that the prior decisions did not discuss the term “decrypting
`programming” or “the related distinction between ‘encrypting digital
`information’ versus ‘encrypting information’”).
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`16
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`statement that “Mason does not anticipate claims 45–50 and 52–56.” See N.
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`Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1294 (Fed. Cir. 2000).
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`(“We find the passage does not support Samsung's argument. In the main,
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`paragraphs 1 and 2 above are descriptions of the asserted references, as
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`opposed to a description of the ‘plasma etching’ process of claim 1. By
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`contrast, it is paragraph 3 which describes the invention, and the specific
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`way that the claimed process differs from the asserted references.”); In re
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`Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“In all cases the appellants
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`first describe their invention followed by a general description of the prior
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`art reference. They then conclude with a conclusory statement . . . . Never
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`do the appellants particularly distinguish their claimed invention . . . from
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`the prior art. We interpret this as a veiled attempt to avoid the potential
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`future effects of prosecution history estoppel. Such evasiveness we cannot
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`condone, particularly when the public must rely on the written record to
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`define the resulting property right.”).
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`Patent Owner’s quotation of its April 2011 (first disclaimer) response
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`omits that the alleged disclaimer similarly relied upon what the Board said in
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`the same case discussed above (BPAI Reexamination Appeal No. 2008-
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`4228), and in any event, the Examiner finally rejected the claims after that
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`alleged disclaimer. See Ex. 1035, 10–11 (“‘Encryption and decryption,’ the
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`Board goes on to say, ‘are not broad enough to read on scrambling and
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`unscrambling.’”); Ex. 1036, 20–21 (final rejection, finding Mason teaches
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`encryption and decryption); Reh’g Req. 8–9 (quoting portions of Ex. 1035,
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`9–10). Neither the first nor the third alleged disclaimer applies to the issued
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`claims. As discussed further below, none of the three alleged disclaimers
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`addresses with requisite specificity the claim limitations at issue in this
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`proceeding.
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`Moreover, similar to its December 2011 (second disclaimer) response,
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`Patent Owner advanced additional arguments in its October 2011 (third
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`disclaimer) response, noting “Mason uses the terms ‘encrypting’ and
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`‘scrambling’ interchangeably.” See Ex. 1037, 11 (“Even assuming,
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`arguendo, that Mason teaches the encryption and decryption of digital
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`signals, claims 45–50 and 52–56 are not anticipated by Mason for at least
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`the following [more detailed] reasons . . . .”).
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`With respect to the final response, the December 2011 (second
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`disclaimer) response and amendments that culminated with the issued
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`claims, we determined the prosecution history “arguments do not