`Tel: 571-272-7822
`
`
`
`Paper 7
`Entered: February 16, 2017
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`
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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 IPR2016-01520
`Patent 8,559,635 B1
`_______________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`APPLE EXHIBIT 1056
`APPLE v. PMC
`IPR2016-00755
`Page 1
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`IPR2016-01520
`Patent 8,559,635 B1
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`I.INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32 and 33 (“challenged
`claims”) of U.S. Patent No. 8,559,635 B1 (Ex. 1003, “the ’635 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Personalized Media
`Communications LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 5 (“Prelim. Resp.”). We have statutory authority under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” See also
`37 C.F.R § 42.4(a) (delegating authority to the Board).
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude Petitioner has
`established a reasonable likelihood it would prevail with respect to at least
`one of the challenged claims. Accordingly, for the reasons that follow, we
`institute an inter partes review.
`
`B. Additional Proceedings
`Petitioner informs us that the ’635 patent is the subject of a lawsuit:
`Personalized Media Communications, LLC v. Amazon.com, Inc., No. 2:15-
`cv-1366-JRG–RSP (E.D. Tex. filed July 30, 2015). Pet. 61. Petitioner and
`Patent Owner also list a number of related patents involved in district court
`cases and other related patents involved in inter partes reviews. Id. at 61–
`62; Paper 4, 1.
`
`
`2
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`C. The ’635 Patent
`The ’635 patent is titled “Signal Processing Apparatus and Methods”
`and generally relates to a unified system of programming communication.
`Ex. 1003, Abstr. The challenged claims relate to methods of controlling the
`decryption of programming at a subscriber station or receiver station. As
`noted above, Petitioner challenges claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32
`and 33, of which claims 13, 18, 20, 32, and 33 are independent. Dependent
`claim 4 and the independent claim from which it depends, claim 2 (not
`challenged in this proceeding), are reproduced below:
`2. A method for controlling the decryption of programming at a
`subscriber station, said method comprising the steps of:
`receiving programming, said programming having a first
`encrypted digital control signal portion and an encrypted digital
`information portion;
`detecting said first encrypted digital control signal portion of said
`programming;
`passing said first encrypted digital control signal portion of said
`programming to a first decryptor at said subscriber station;
`decrypting said first encrypted digital control signal portion of
`said programming using said first decryptor at said subscriber
`station;
`passing said encrypted digital information portion of said
`programming and the decrypted control signal portion to a
`second decryptor at said subscriber station;
`decrypting said encrypted digital information portion of said
`programming using said second decryptor at said subscriber
`station based on the decrypted control signal portion; and
`presenting said programming.
`4. The method of claim 2, wherein said programming further
`includes encrypted video.
`
`3
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`Id. at 286:7–28, 286:54–55. Also, independent claim 18, which is
`representative of the alleged invention, is reproduced below:
`18. A method of processing signals at a receiver station
`comprising the steps of:
`receiving at least one encrypted digital information transmission,
`wherein
`the at
`least one encrypted digital
`information
`transmission is unaccompanied by any non-digital information
`transmission;
`locating code;
`passing said code to a processor;
`controlling a decryptor that decrypts encrypted digital data to
`decrypt in a specific fashion on the basis of said code;
`decrypting a portion of said at least one information transmission
`in said specific fashion; and
`passing said decrypted portion of said at least one encrypted
`digital information transmission to one of said processor and an
`output device.
`Id. at 288:10–25.
`The ’635 patent describes access control to transmitted content at a
`receiver station. Ex. 1003, Abstr. Figure 4 of the ’635 patent, reproduced
`below, illustrates a receiver station:
`
`4
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`As shown above in Figure 4, the ’635 patent discloses a receiver station
`having signal processor 200 to control tuners 214, 215, and 223, the
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`230. Id. at 148:30–35. In one example described in the Specification, the
`“Wall Street Week” program is transmitted to the receiver station by a cable
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`end “encrypts the digital audio information of said transmission, in a fashion
`well known in the art, using particular cipher algorithm C and cipher key Ca,
`then transmits the information of said program on cable channel 13.” Id. at
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`local-cable-enabling-message (#7), is transmitted with instructions that
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`the instructions causes controller 20 to receive the cable channel
`transmission, select the information of a cipher key Ca from among the
`
`5
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`information portion, and transfer the cipher key to decryptor 107. Id. at
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`decryptor 107 then decrypts “using said key information and selected
`decryption cipher algorithm C, and output[s] the decrypted information of
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`152:48–51.
`Subsequently, a second SPAM message that consists of an “01”
`header provides “1st-stage-enable-WSW-program” instructions as the
`information segment information. Id. at 153:38–43. Executing the “1st-
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`first stage of decrypting the video information of the “Wall Street Week”
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`received information using decryption cipher key Ba and decryption cipher
`algorithm B. Id. at 154:28–33.
`A third SPAM message provides “2nd-WSW-program enabling-
`message” instructions, causing the controller to affect a second stage of
`decrypting the digital video information of “Wall Street Week.” Id. at
`156:62–157:5. The second stage of decrypting the video information of the
`“Wall Street Week” program transmission is completed using the decryption
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`station to commence the transfer of the decrypted television information of
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`Id. at 159:55–59.
`
`6
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`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 3, 4, 7, 13, 18, 20, 21,
`28–30, 32 and 33 of the ’635 patent based on the following grounds:
`Reference(s)
`Basis
`Claim(s) Challenged
`Chandra1
`§ 102 13, 18, 20, and 32
`Chandra and Nachbar2
`§ 103 33
`Seth-Smith3
`§ 102 4, 7, 21, and 28–30
`Campbell4
`§ 103 3
`
`
`II. ANALYSIS
`
`A. Priority Date for the Challenged Claims of the ’635 Patent
`Patent Owner argues that all of the prior art references cited by the
`Petitioner were filed or published after November 3, 1981, the priority date
`which Patent Owner argues is applicable to claims of the ’635 Patent; thus,
`Patent Owner argues that the references do no constitute prior art and cannot
`render each of the challenged claims unpatentable. Prelim. Resp. 1. The
`prior art status of the prior art hinges on the effective priority date for the
`’635 patent with respect to support for the challenged claims. Petitioner
`contends that the earliest effective priority date for the challenged claims of
`the ’635 patent (through a series of continuation patents) is the filing date of
`U.S. Patent No. 4,965,825 (“’825 patent”) on September 11, 1987. See
`
`
`1 US Patent No. 4,817,140, filed Nov. 5, 1986 (Ex. 1041) (“Chandra”).
`2 Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-
`13, 1986 (Ex. 1042) (“Nachbar”).
`3 US Patent No. 4,886,770, filed Aug. 14, 1986 (Ex. 1043) (“Seth-Smith”).
`4 US Patent No. 4,536,791, PCT filed Mar. 31, 1981 (Ex. 1044)
`(“Campbell”).
`
`7
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`Pet. 5. The ’635 patent claims Continuation-in-Part (“CIP”) status from
`September 11, 1987 to a chain of continuing applications purportedly having
`a priority date of November 3, 1981––the filing date of the earliest-filed
`ancestor patent in the chain, U.S. Patent No. 4,694,490 (“’490 patent”). See
`Ex. 1003 [63]. Patent Owner contends that the effective priority date of the
`challenged claims of the ’635 patent is the filing date of the ’490 patent on
`November 3, 1981. Prelim. Resp. 7.
`1. “programming”
`Claims 3, 4, and 7 of the ’635 Patent recite the term “programming.”
`The ’490 patent discloses “provid[ing] techniques whereby, automatically,
`single channel, single medium transmissions, presentations, be they radio,
`or other electronic transmissions, [which] may be recorded, [and] co-
`ordinated in time with other programing previously transmitted and
`recorded.” Ex. 1004, 3:51–56 (emphasis added). On the other hand, the
`later-filed ’635 patent states that “[t]he term ‘programming’ refers to
`everything that is transmitted electronically to entertain, instruct or inform,
`including television, radio, broadcast print, and computer programming as
`well as combined medium programming.” Ex. 1003, 6:31–34 (emphasis
`added).
`Therefore, the broad disclosure in the ’635 patent potentially includes
`not only “combined medium programming” and “computer programming,”
`it also includes “everything . . . transmitted electronically” (subject to the
`quoted qualifiers) at the time of filing of the ’635 patent (i.e., assuming for
`the sake of argument written description exists for “everything” so
`transmitted), whereas the earlier disclosure, in context, only includes “other
`electronic transmissions”––i.e., in context, those “other” transmissions that
`
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`were similar to conventional “single channel, single medium,” “television”
`or “radio” transmissions at the time of filing of the ’490 patent. Compare
`Ex. 1003, 6:31–34, with Ex. 1004, 3:51–56, 10:48–49.
`Petitioner argues that the broader 1987 definition of “programming”
`expands the scope of the subject matter; thus, claims 3, 4, and 7 are not
`entitled to the 1981 priority date. Pet. 12. More particularly, Petitioner
`argues the Federal Circuit instructed in PowerOasis, Inc. v. T-Mobile USA,
`Inc., 522 F.3d 1299 (Fed. Cir. 2008) that where a claim term would receive a
`broader or more inclusive claim construction in view of the later
`specification, the claim is not entitled to the benefit of the earlier filing date.
`Pet. 12 (citing PowerOasis, 522 F.3d at 1310–11). Patent Owner responds
`that the argument in PowerOasis is inapplicable because the proper inquiry
`in determining priority is whether the earlier filed application alone provides
`written description support for the claim in question and that it is legally
`improper to compare two specifications. Prelim. Resp. 17 (citing
`Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1333–34 (Fed.
`Cir. 2008)). We are not persuaded by Patent Owner’s argument, as the
`Federal Circuit considered both the original application and a continuation-
`in-part application in PowerOasis, and ultimately determined that support
`did not exist in the original application for a variation of the customer
`interface later introduced in the continuation-in-part application.
`PowerOasis, 522 F.3d at 1310 (“Because none of this support was present in
`the Original Application and because the Original Application did not
`disclose a customer interface apart from the vending machine, the asserted
`claims are only entitled to the 2000 CIP Application filing date of June 15,
`2000.”)
`
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`Here, we determine that Patent Owner does not dispute in a clear and
`persuasive fashion that the 1987 ’635 patent Specification broadened the
`term “programming.” See Prelim. Resp. 16–17. On this record, we
`determine that whatever the term “programming” meant in 1987, it meant
`something different in 1987 than it did in 1981, because it grew to
`encompass many different types of known analog and digital programming
`not contemplated in 1981 according to the ’490 patent. As noted, the 1987
`’635 patent Specification broadened the meaning of programming to
`encompass “everything that is transmitted electronically to entertain, instruct
`or inform, including television, radio, broadcast print, and computer
`programming as well as combined medium programming.” Ex. 1003, 6:31–
`34 (emphasis added). Accordingly, notwithstanding Patent Owner’s
`characterization of the holding of PowerOasis, 522 F.3d at 1306, we
`determine Patent Owner impermissibly broadened the scope of the claim
`term “programming” in the ’635 patent, relative to the disclosure of the term
`in the ancestor 1981 ’490 patent. Therefore, based on this record and for
`purposes of this Decision, we determine that Patent Owner fails to
`sufficiently rebut Petitioner’s contention that the 1981 ’490 patent does not
`support at least claims 3, 4, and 7 of the’635 patent and that the earliest
`effective priority date for these claims is no earlier than that of the ’825
`patent on September 11, 1987.
`2. “unaccompanied by any non-digital information
`transmission”
`Claim 18 of the ’635 Patent recites the “receiving at least one
`encrypted digital information transmission, wherein the at least one
`encrypted digital information transmission is unaccompanied by any non-
`digital information transmission” (claims 20, 32, and 33 provide similar
`
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`recitations). As discussed below, we have previously determined with
`respect to the ’635 Patent that the broadest reasonable construction of the
`limitation “at least one encrypted digital information transmission is
`unaccompanied by any non-digital information transmission” means “the at
`least one encrypted digital information transmission does not include non-
`digital information such as analog information.” Apple Inc., v. Personalized
`Media Communications LLC, Case No. IPR2016-00754 (“the ’754 IPR”),
`slip. op. at 10 (PTAB Sept. 21, 2016) (Paper 8) (“’754 Inst. Dec.”). We do
`not deviate from the construction for purposes of this decision, as described
`below. Petitioner argues that the negative limitation that transmissions are
`“unaccompanied by any non-digital information transmission” is never
`described in the 1981 ’490 patent. Pet. 6 (citing Ex. 1001 ¶¶ 83–87).
`Petitioner’s declarant, Mr. Wechselberger, states that the 1981
`’490 patent describes receiving a “recipe in encoded digital form,” but this
`recipe is received via a cable television channel. Ex. 1001 ¶ 84 (citing
`Ex. 1004, 20:28–37). Mr. Wechselberger states that the 1981 ’490 patent
`explains that these signals are embedded into programs and “lie outside the
`range of the television picture displayed on a normally tuned television set.”
`Id. (citing Ex. 1004, 4:5–6, 4:18–22). Mr. Wechselberger testifies that
`person of ordinary skill in the art would have understood, in view of this
`disclosure, that the transmission of the recipe is accompanied by
`conventional analog programming. Id. Accordingly, Petitioner argues that
`the 1981 ’490 patent fails to support the claim recitation that the
`transmissions are “unaccompanied by any non-digital information
`transmission.” Pet. 7.
`
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`Patent Owner argues that certain embodiments in the 1981 ’490 patent
`support the negative limitation. Prelim. Resp. 24–26. For example, Patent
`Owner cites to the illustration of Path C in Figure 2A, which is reproduced
`below.
`
`
`
`Ex. 1004, Fig. 2A. With respect to Figure 2A, the 1981 ’490 patent
`describes that a “television channel signal is [] transmitted to a standard
`amplitude demodulator, 32, which uses standard demodulator techniques
`well known in the art to define the television base band signal.” Ex. 1004,
`6:45–48. The 1981 ’490 patent describes that “[t]his base band signal is
`then transmitted through three separate paths to three separate detector
`devices.” Id. at 6:48–50. Patent Owner argues that the 1981 ’490 patent
`describes that the Path C transmission is “separately defined” and is “all-
`digital.” Prelim. Resp. 25 (citing Ex. 1004, 6:67–7:1) (emphasis added).
`Although the ’490 patent states that “Path C inputs the separately defined
`
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`transmission to a digital detector, 38,” Figure 2A of the ’490 patent fails to
`state that Path C is “all-digital.” In addition, Path C includes digital detector
`38, indicating the signals are not “all-digital,” else there would be no reason
`to detect them. Furthermore, the decoder of Figure 2A receives and
`processes an analog signal using filter 31 and amplitude demodulator 32.
`See Ex. 1004, 6:67–7:1, Fig. 2A. We determine that Patent Owner fails to
`describe sufficiently how the “One TV Channel” output from amplitude
`demodulator 32, shown above in Figure 2A, results in an “all-digital” Path
`C, and even if it does, how this sufficiently shows support for claims at issue
`here. In addition, as shown in Figure 2A above, the other two paths of the
`transmission of the base band signal, Paths A and B, also pass signals to
`digital detectors 34 and 37, but Patent Owner does not describe these paths
`as “all-digital.” Id. at Fig. 2A. Accordingly, Patent Owner does not
`establish sufficiently on this preliminary record that the decoder of Figure
`2A or Path C provides an example of the claimed transmissions that are
`“unaccompanied by any non-digital information transmission.”
`Even if Path C somehow is all-digital, Patent Owner’s arguments
`appear to rest on an unpersuasive construction of claim 18 that includes a
`receiver receiving a transmission from itself. Claim 18 recites “a method of
`processing signals at a receiver station comprising the steps of . . . receiving
`at least one encrypted digital information transmission, wherein the at least
`one encrypted digital information transmission is unaccompanied by any
`non-digital information transmission.” By focusing on an alleged “all-
`digital” signal within an internal receiver station Path C, Patent Owner
`implies that the claimed receiver station broadly may receive a transmission
`from itself. On this preliminary record, the claim language does not support
`
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`that implied construction. See Rambus Inc. v. Rea, 527 Fed. Appx. 902, 907
`(Fed. Circ. 2013) (Board erred by reading the claim limitation “[p]roviding a
`signal to the memory device” as including “providing the signal from one
`part of the memory device to another part of it”) (non-precedential––“not
`selected for publication”).
`Patent Owner also argues that Figure 6E of the ’490 patent provides
`an example of the claimed limitation. Figure 6E is reproduced below.
`
`
`Ex. 1004, Fig. 6E. Figure 6E, shown above, illustrates a “decryption
`technique which could serve to facilitate the electronic distribution of
`copyrighted materials such as books and movies by tending to discourage
`piracy and the unauthorized retransmission of copies.” Ex. 1004, 21:3–7.
`Patent Owner argues that “Fig. 6E of the ’490 patent shows a direct
`connection between the output of laser videodisc system 232 and both the
`signal processor (Fig. 1) 200 and decrypter 224 to print out a book” and that
`“[p]rintable text was readily known to be stored in digital form.” Prelim.
`Resp. 26 (citing Ex. 1004, 21:1–22:4; Ex. 2001 ¶ 112). Claim 18 requires a
`
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`“method of processing signals at a receiver station” including “receiving at
`least one encrypted digital information transmission, wherein the at least one
`encrypted digital information transmission is unaccompanied by any non-
`digital information transmission” (similar recitations are set forth in claims
`20, 32, and 33).
`Based on this record, we determine that Patent Owner fails to describe
`sufficiently what constitutes the “at least one encrypted digital information
`transmission” in the Figure 6E embodiment, where the 1981 ’490 patent
`expressly or inherently indicates that any non-digital information is
`prohibited from this transmission, and where Patent Owner appears to be
`relying somehow on a known printing technique without an adequate
`explanation as to how this known technique impacts support for the
`challenged claims. See Prelim. Resp. 26 (“[p]rintable text was readily
`known to be stored in digital form”). Accordingly, we determine that based
`on this record Patent Owner fails to describe sufficiently how this
`embodiment in the 1981 ’490 patent provides support for the limitations in
`claim 18, and similar recited limitations in claims 20, 32, and 33. Therefore,
`based on this record and for purposes of this Decision, we determine that
`Patent Owner fails to rebut sufficiently Petitioner’s contention that the 1981
`’490 patent does not support at least claims 18, 20, 32, and 33 of the’635
`patent, and that the earliest effective priority date for these claims is no
`earlier than that of the ’825 patent on September 11, 1987.
`3. “executable instructions”
`Claim 13 of the ’635 Patent recites: “said decrypted second of said
`plurality of signals is embedded with executable instructions.” Petitioner
`argues that the ’490 patent describes the general notion of passing “operating
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`instructions to equipment” but does not provide sufficient disclosure to
`support Patent Owner’s proposed construction for the term “executable
`instructions” set forth in claim 13. Pet. 5 (citing Ex. 1004, 12:11–12;
`Ex. 1039, 18).
`In response, Patent Owner argues that the 1981 ’490 patent describes
`passing “operating instructions.” Prelim. Resp. 22 (citing Ex. 1004, 4:5–6,
`12:11–12). The portion of the ’490 patent relied upon by Patent Owner
`discloses the following: “[w]ere this head end facility equip[p]ed with
`automatic operating equipment well known in television studios,
`controller/computer, 73, could pass appropriate operating instructions to
`such equipment.” Ex. 1004, 12:8–12 (emphasis added). Patent Owner fails
`to describe sufficiently how this general disclosure of the potential capability
`of the head end facility to pass operating instructions to equipment provides
`support for the claim 13 recitation of “said decrypted second of said plurality
`of signals is embedded with executable instructions.” Patent Owner cites
`additional similar disclosures in the 1981 ’490 patent regarding transmitted
`instructions (Prelim. Resp. 22–23 (citing Ex. 1004, 8:56–65, 19:42–20:7)),
`but similarly fails to describe sufficiently how these instructions provide
`sufficient support for the claim 13 recitation of “said decrypted second of
`said plurality of signals is embedded with executable instructions.”
`Therefore, based on this record and for purposes of this Decision, we
`determine that Patent Owner fails to rebut sufficiently Petitioner’s
`contention that the 1981 ’490 patent does not support at least claim 13 of
`the’635 patent and that the earliest effective priority date for this claim is no
`earlier than that of the ’825 patent on September 11, 1987.
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`4. “second processor control”
`Claim 21 of the ’635 Patent recites both “decrypting under first
`processor control a first portion of said encrypted materials in said
`transmission” and “decrypting under second processor control a second
`portion of said encrypted materials based on said step of decrypting said first
`portion of said encrypted materials.” Claims 28, 29, and 30 depend either
`directly or indirectly from claim 21. Petitioner argues that the 1981
`’490 patent discloses that decryption is carried out under the control of a
`single processor rather than a first processor and a second processor required
`by claim 21. Pet. 10 (citing Ex. 1004, 14:28–32, 21:20–67).
`As discussed below, we construe to the term “processor” to mean “a
`device that operates on data.” Patent Owner counters Petitioner’s contention
`by arguing that Figure 4D of the 1981 ’490 patent “shows components that
`perform the double decryption process under a first and second processor
`control.” Prelim. Resp. 28 (citing Ex. 1004, 20:16–50). Figure 4D of the
`1981 ’490 patent is reproduced below.
`
`
`Ex. 1004, Fig. 4D. As shown above, Figure 4D illustrates signal processor
`109 in communication with decryptor/interruptor 110 and
`
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`APPLE EXHIBIT 1056
`APPLE v. PMC
`IPR2016-00755
`Page 17
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`IPR2016-01520
`Patent 8,559,635 B1
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`decryptor/interruptor 111. Ex. 1004, 14:29–32; Fig. 4D. The 1981
`’490 patent states that “FIG. 4D shows that a multi-stage
`decryption/interruption process may be used in which transmissions must be
`processed by one or more additional decryptor/interruptors, 111, that follow
`decryptor/interruptor, 110.” Ex. 1004, 14:29–32. As a separate example,
`Patent Owner also argues that the embodiment illustrated in Figure 6E of the
`1981 ’490 patent implements a similar architecture with components that
`perform the double decryption process under a first processor control and a
`second processor control. Prelim. Resp. 28–29 (citing Ex. 1004, 21:1–22:4).
`Additionally, Patent Owner argues that Figure 1 of the 1981 ’490 patent
`illustrates a signal processor 12 and controller 20 that can provide processor
`control to perform as recited in claim 21. Id. at 29 (citing Ex. 2001 ¶¶ 129–
`30). We are persuaded that these cited disclosures in the 1981 ’490 patent
`provide example embodiments of the claimed processor control recited in
`claim 21. In light of these disclosures in the 1981 ’490 patent cited by
`Patent Owner, we determine for purposes of this Decision that Patent Owner
`sufficiently rebuts Petitioner’s assertion that claims 21, 28, 29, and 30 of
`’635 patent are not entitled to the filing date of the ’490 patent.
`Accordingly, we are persuaded, for purposes of this Decision, that claims 21,
`28, 29, and 30 of ’635 patent are entitled to an effective priority date of the
`’490 patent, filed on November 3, 1981.
`5. Conclusions Regarding Priority Date of Challenged Claims
`In view of the above, we determine that for purposes of this decision,
`Chandra, Nachbar, Seth-Smith and Campbell qualify as prior art against
`challenged claims 3, 4, 7, 13, 18, 20, 32 and 33 of the ’635 Patent.
`Additionally, given our determination that claims 21 and 28–30 of the
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`’635 patent are entitled to a priority date of November 3, 1981, we determine
`that for purposes of this decision, the Seth-Smith reference does not
`constitute prior art against claims 21 and 28–30 because on its face, Sam-
`Smith’s priority date can be no earlier than July 8, 1986.5
`
`B. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,6 the Board will interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the
`Specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Petitioner and Patent Owner
`dispute several claim terms that require construction.
`1. “decrypt”
`Patent Owner argues that the term “decrypt” should be construed to
`exclude descrambling of an analog television transmission. Prelim. Resp. 30
`(citing Ex. 2001 ¶ 48). Petitioner argues to the contrary that a person of
`ordinary skill in the art would have understood “decrypt” and “descramble”
`as interchangeable terms that would apply to both analog and digital data.
`Pet. 22 (citing Ex. 1001 ¶¶ 62–65). Petitioner notes that in the previous and
`related inter partes review proceedings, the Board rejected Patent Owner’s
`similar proposals to construe “decrypting” to exclude descrambling. Id.
`at 20–21 (citing. Ex. 1045, 8–10; Ex. 1011, IPR2014-01533, Decision on
`
`
`5 Seth-Smith was filed on August 14, 1986 and claims priority as a
`continuation-in-part of an application filed on July 8, 1986.
`6 Pub. L. No. 112-29,125 Stat. 284 (2011).
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`IPR2016-00755
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`Institution, Paper 7, 7–11; Ex. 1013, IPR2014-01532, Decision on
`Institution, Paper 8, 25–26). Additionally, Petitioner notes that the District
`Court for the Eastern District of Texas rejected Patent Owner’s argument
`that decrypting excludes descrambling. Pet. 21–22 (citing Ex. 1017,
`Personalized Media Communication, LLC v. Motorola, Inc., No. 2:08-cv-70,
`2011 WL 4591898 (E.D. Tex. Sept. 30, 2011), 29).
`The parties have proffered these same arguments in several previous
`proceedings before the Board, and we have determined consistently that the
`term “decryptor” includes a descrambler. See e.g., Amazon.com, Inc. v.
`Personalized Media Communication, LLC, Case No. IPR2014-01532 (“the
`’1532 IPR”), slip op. at 7–10 (PTAB March 29, 2016) (Paper 57) (“’1532
`Final Decision”). We see no reason to depart from that conclusion in this
`case. Our analysis primarily rests upon the passage from the specification of
`the ’635 patent reproduced below:
`For example, the decryption cipher key information and/or
`algorithm instructions and/or the location or locations of said
`key information and/or instructions may be computed in other,
`more complex or less complex, fashions. And for example, the
`transmitted programming may be processed through fewer than
`three steps of decryption or more than three. And for example,
`the “Wall Street Week” transmission may be of conventional
`analog television, and the decryptors, 107, 224, and 231, may
`be conventional descramblers, well[] known in the art, that
`descramble analog television transmissions and are actuated by
`receiving digit