UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-00755
`Patent No.: 8,191,091
`
`
`PETITIONER’S OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`The Substitute Claims Do Not Satisfy § 101. .............................................. 1
`
`The Substitute Claims Do Not Satisfy § 112. .............................................. 5
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1). .................................. 5
`B.
`The Substitute Claims Are Not Supported By The Specification
`Because It Does Not Disclose The “Receiving” Limitation. ................ 7
`Substitute Claims 32-36 Are Not Supported by the
`Specification. ......................................................................................... 8
`Substitute Claims 37-40 Are Not Supported by the
`Specification. ......................................................................................... 9
`Substitute Claims 41-43 Are Not Supported by the
`Specification. ....................................................................................... 10
`
`C.
`
`D.
`
`E.
`
`III. The Substitute Claims Would Have Been Obvious to a Person of
`Ordinary Skill In the Art. ........................................................................... 11
`A.
`PMC Failed to Show That Its Substitute Claims Are Patentable ........ 11
`B.
`Claim Construction ............................................................................. 11
`C.
`Substitute Claims 32-40 Are Unpatentable Over Gilhousen. ............. 11
`1.
`Substitute Claim 32 Is Obvious Over Gilhousen ...................... 11
`2.
`Substitute Claim 33 Is Obvious Over Gilhousen ...................... 14
`3.
`Substitute Claim 37 Is Obvious Over Gilhousen ...................... 14
`4.
`Substitute Claims 34 and 39 Are Obvious Over
`Gilhousen .................................................................................. 17
`Substitute Claims 35 and 38 Are Obvious Over
`Gilhousen .................................................................................. 17
`Substitute Claims 36 and 40 Are Obvious Over
`Gilhousen .................................................................................. 18
`Substitute Claims 32-43 Are Unpatentable Over Seth-Smith. ............ 18
`1.
`Substitute Claim 32 Is Obvious Over Seth-Smith .................... 18
`2.
`Substitute Claim 33 Is Obvious Over Seth-Smith .................... 21
`3.
`Substitute Claim 37 Is Obvious Over Seth-Smith .................... 21
`
`5.
`
`6.
`
`D.
`
`i
`
`

`

`
`
`4.
`
`5.
`6.
`
`7.
`
`Substitute Claims 34 and 39 Are Obvious Over Seth-
`Smith ......................................................................................... 23
`Substitute Claim 41 Is Obvious Over Seth-Smith .................... 23
`Substitute Claims 35, 38 and 42 Are Obvious Over Seth-
`Smith ......................................................................................... 25
`Substitute Claim 36, 40 And 43 Are Obvious Over Seth-
`Smith ......................................................................................... 25
`
`IV. PMC Has Not Met Its Burden. ................................................................... 25
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) .............................................................................. 4
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct 2347 (2014) .............................................................................................. 5
`
`B.E. Tech., L.L.C. v. Google, Inc.,
`No. 2015-1827, 2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) .............................. 6
`
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) .............................................................................. 4
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) ..........................................................................3, 5
`
`Facebook, Inc. v. EveryMD LLC,
`IPR2014-00242, 2015 WL 2268210 (P.T.A.B. May 12, 2015) .........................5, 6
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016) ..........................................................................3, 4
`
`MasterImage 3D, Inc. v. RealD Inc.,
`IPR2015-00040, 2015 WL 4383224 (P.T.A.B. July 15, 2015) ............................ 11
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, 2013 WL 8352845 (P.T.A.B. June 3, 2013) ...........................5, 7
`
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013) .............................................................................. 7
`
`Personalized Media Comm’ns, LLC v. Amazon.com, Inc.,
`161 F.Supp.3d 325 (D. Del. 2015),
`aff’d Case No. 2015-2008, 2016 WL 7118532 (Fed. Cir. Dec. 7, 2016) ...........1, 2
`
`Respironics, Inc. v. Zoll Med. Corp.,
`IPR2013-00322, 2014 WL 4715644 (P.T.A.B. Sept. 17, 2014) ........................6, 7
`
`iii
`
`

`

`
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ............................................................................4, 5
`
`Statutes
`
`37 C.F.R. § 42.121(b)(1) ........................................................................................5, 6
`
`
`
`iv
`
`

`

`
`
`PMC’s Contingent Motion to Amend the claims of the ’091 patent does not
`
`come close to satisfying the legal requirements for such a motion. The Motion is
`
`filled with conclusory statements, unsupported by any citations to the evidence or
`
`expert testimony, and fails on any one of multiple independent grounds. First,
`
`PMC does not meet its burden to show that the Substitute Claims are directed to
`
`patent-eligible subject matter, despite the fact that the Federal Circuit has affirmed
`
`the invalidity of dozens of highly-related PMC claims on this basis. Second, PMC
`
`does not establish that the Substitute Claims, each of which add multiple
`
`limitations, find support in the specification to satisfy 35 U.S.C. § 112. Third, PMC
`
`does not analyze the prior art with any specificity, failing even to distinguish the
`
`references on which this IPR was instituted, let alone additional relevant prior art.
`
`For any one of these reasons, PMC’s Motion must be denied.
`
`I.
`
`THE SUBSTITUTE CLAIMS DO NOT SATISFY § 101.
`
`Not only must PMC establish the Substitute Claims claim patent-eligible
`
`subject matter under § 101, but it must do so against the backdrop of dozens of
`
`related and highly-similar PMC claims being found invalid on this basis by the
`
`Federal Circuit. A Delaware district court, in a decision affirmed by the Federal
`
`Circuit, found the claims of seven PMC patents invalid under § 101. PMC v.
`
`Amazon.com, Inc., 161 F.Supp.3d 325 (D. Del. 2015), aff’d Case No. 2015-2008,
`
`2016 WL 7118532 (Fed. Cir. Dec. 7, 2016). One of these patents in particular, U.S.
`
`
`
`

`

`
`
`Patent No. 7,801,304, contained very similar claims and limitations to those at
`
`issue here, and PMC does not and cannot explain how the Substitute Claims would
`
`merit a different result.
`
`The representative claim of the ’304 patent describes a method for
`
`controlling the decryption of programming, including steps of: (1) detecting an
`
`encrypted control signal in a received transmission, (2) passing the control signal
`
`to a decryptor and decrypting it, and (3) decrypting programming using the
`
`decrypted control signal. PMC, 161 F.Supp.3d at 332-33. This is comparable to
`
`the Substitute Claims, which describe detecting a control (instruct-to-enable) signal
`
`in a received transmission, passing the control signal to a processor to locate a
`
`decryption key, and decrypting the programming using the key. Mot. at A-1. The
`
`Delaware court held, and the Federal Circuit affirmed, that the ’304 patent “recites
`
`the abstract idea of decryption,” which, as a mathematical process used to
`
`manipulate information, is not patent eligible. PMC, 161 F.Supp.3d at 333. The
`
`Delaware court also found there was no inventive concept that would transform the
`
`abstract idea of encryption into patent-eligible subject matter. Id. at 333-34.
`
`The Substitute Claims are strikingly similar to the claims of the ’304 patent,
`
`and fail to satisfy § 101 for the same reasons. The Substitute Claims are directed to
`
`the same abstract idea as those invalidated in the ’304 patent—decrypting digital
`
`programming using a control signal. The first step of a § 101 analysis is to consider
`
`2
`
`

`

`
`
`the “character as a whole” of the claims to determine whether they are directed to
`
`an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
`
`Cir. 2016). Given the substantial overlap in the limitations of the Substitute Claims
`
`with those of the ’304 patent, it is apparent that the “character as a whole” of both
`
`sets of claims is directed to the same abstract idea of decrypting digital
`
`programming using a control signal.
`
`The specific limitations of the Substitute Claims not present (at least
`
`verbatim) in the ’304 patent do not change the analysis. For example, generically
`
`“determining a fashion” for locating and then “locating” the decryption key in
`
`some way, as in Claim 32, instead of just decrypting the control signal, as in the
`
`’304 patent, are both part of the abstract idea of decrypting in response to a control
`
`signal. Nor does using two decryption keys instead of one, as in Claim 37, change
`
`that the claims are directed to an abstract idea. Finally, the new limitation in the
`
`Substitute Claims about generically storing a unique digital code does not change
`
`the “character as a whole” of the Substitute Claims.
`
`The Substitute Claims are comparable to a claim at issue in Intellectual
`
`Ventures I LLC v. Symantec Corp. as well. In Symantec, the claim recited a post
`
`office that: (1) received an email (transmission); (2) processed the email to locate
`
`the business rule(s) to apply (decryption key); and (3) applied the business rule to
`
`the email. 838 F.3d 1307, 1316-17 (Fed. Cir. 2016). The Federal Circuit held that
`
`3
`
`

`

`
`
`the claim was a way of organizing human activity, an abstract idea. Id. at 1318.
`
`The Substitute Claims are also similar to the claims at issue in Digitech Image
`
`Techs., LLC v. Elecs. for Imaging, Inc., cited by the Delaware court in its § 101
`
`ruling on the ’304 patent, because they use the mathematical algorithm of
`
`encryption “to manipulate existing information to generate additional information.”
`
`758 F.3d 1344, 1351 (Fed. Cir. 2014) (claims directed to the abstract idea of taking
`
`two data sets and combining them into a single data set not patent-eligible).
`
`Like the claims of the ’304 patent, the Substitute Claims do not include an
`
`inventive concept that would transform the abstract idea to which they are directed
`
`into patent-eligible subject matter. To include an inventive concept, the Substitute
`
`Claims must do “significantly more than simply describe [the] abstract method”
`
`and include “additional features” that are more than “well-understood, routine,
`
`conventional activity.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
`
`1253, 1262 (Fed. Cir. 2016); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
`
`(Fed. Cir. 2014). The Substitute Claims do not meet either of these requirements.
`
`PMC does not even attempt to argue that its claims include anything more
`
`than conventional components, which is what the specification describes. E.g., Ex.
`
`1003 at 143:3-11, 146:62-148:4, 161:9-15. And PMC does not argue that any of
`
`the additional limitations of the Substitute Claims add an inventive concept. Mot.
`
`at 13-15. Nor could it. Limiting an abstract idea to a particular technological field,
`
`4
`
`

`

`
`
`as the Substitute Claims do in limiting the claims to a digital environment, does not
`
`render it patent-eligible. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct
`
`2347, 2358 (2014); Elec. Power, 830 F.3d at 1354; Ultramercial, 772 F.3d at 716.
`
`Similar to the affirmed Delaware court’s analysis finding no inventive concept, the
`
`Substitute Claims merely describe the abstract method of using a control signal to
`
`decrypt digital programming. The Substitute Claims are not directed to patent-
`
`eligible subject matter, and PMC has not met its burden to show otherwise.
`
`II. THE SUBSTITUTE CLAIMS DO NOT SATISFY § 112.
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1).
`A motion to amend must set forth “[t]he support in the original disclosure of
`
`the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1). A
`
`“mere citation in a table to various portions of the original disclosure, without any
`
`explanation why a person of ordinary skill in the art would have recognized that
`
`the inventor possessed the claimed subject matter as a whole, is inadequate to
`
`satisfy” this requirement. Facebook, Inc. v. EveryMD LLC, IPR2014-00242, 2015
`
`WL 2268210, at *7 (P.T.A.B. May 12, 2015); see also Nichia Corp. v. Emcore
`
`Corp., IPR2012-00005, 2013 WL 8352845, at *2 (P.T.A.B. June 3, 2013).
`
`The portion of PMC’s Motion purportedly addressed to “support for the
`
`substitute claims” offers nothing of the sort. Not once in the three pages of this
`
`section does PMC quote even a single limitation of the Substitute Claims. Mot. at
`
`5
`
`

`

`
`
`10-12. Instead, PMC offers broad generalizations regarding the allegedly relevant
`
`embodiments of the ’507 Application that issued as the ’091 Patent. This approach
`
`“amount[s] to little more than an invitation to [the Board] … to peruse the cited
`
`evidence and piece together a coherent argument for them.” B.E. Tech., L.L.C. v.
`
`Google, Inc., No. 2015-1827, 2016 WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016)
`
`(quoting Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, 2014 WL 4715644,
`
`at *13 (P.T.A.B. Sept. 17, 2014) (vacated and remanded on other grounds, No.
`
`2015–1485, 2016 WL 4056094, at *1 (Fed. Cir. July 29, 2016))).
`
`PMC directs the Board to the declaration of Timothy Dorney for “[t]he
`
`specific support of each of the amended claims.” Mot. at 11. Dr. Dorney is an
`
`employee of PMC who is not an expert in the field and was not a PHOSITA at the
`
`time of the invention. Ex. 1052 at 6:22-7:3, 118:6-121:6. His Declaration provides
`
`nothing more than a chart with quotes from the specification that allegedly support
`
`the Substitute Claims. Ex. 2130. This type of chart is properly included in an
`
`appendix, not an expert declaration. 37 C.F.R. § 42.121(b)(1). More importantly,
`
`the Declaration fails to explain how the application supports the Substitute Claims,
`
`how a PHOSITA would understand the quoted sections, or how he or she would
`
`recognize from those quotations that the inventor possessed the subject matter of
`
`the Substitute Claims. This is exactly the type of disclosure the Board has found
`
`insufficient to support a motion to amend. Facebook, 2015 WL 2268210, at *7;
`
`6
`
`

`

`
`
`Nichia, 2013 WL 8352845, at *2 (“merely indicating where each claim limitation
`
`individually described in the original disclosure may be insufficient to demonstrate
`
`support for the claimed subject matter as a whole”) (emphasis in original).
`
`The Board has also held that extensive modifications “require[] a more
`
`detailed showing of how each limitation of the proposed claim not only is
`
`disclosed in the original and benefit applications, but also is disclosed in
`
`combination with all of the other claim limitations.” Respironics, 2014 WL
`
`4715644, at *13 (citing Novozymes A/S v. DuPont Nutrition Biosciences APS, 723
`
`F.3d 1336, 1349 (Fed. Cir. 2013)). This requirement applies here, where the
`
`Substitute Claims contain extensive changes. Claim 13 went from 93 words to 161
`
`words in its replacement claim, a difference of 68 words. Similarly, Claim 36 has
`
`98 additional words and Claim 41 has 43 additional words. Mot. at A-1-A-6.
`
`B.
`
`The Substitute Claims Are Not Supported By The Specification
`Because It Does Not Disclose The “Receiving” Limitation.
`
`The Substitute Claims all require “receiving an encrypted digital information
`
`transmission including encrypted digital information and unencrypted digital
`
`information.” Mot. at A-1-A-6. PMC identifies “local-cable-enabling-message
`
`(#7)” as the unencrypted digital information and the “so-called ‘digital video’ and
`
`‘digital audio’” of the Wall Street Week Program as the encrypted digital
`
`information. Ex. 2130 at 12, 22-23, 34-35; Ex. 1052 at 46:7-47:12, 82:14-21,
`
`88:14-89:7. This disclosure does not satisfy § 112 for at least two reasons.
`
`7
`
`

`

`
`
`First, the transmission of “so-called ‘digital video’ and ‘digital audio’” over
`
`conventional cable television is not enabled by the specification. See Ex. 2050 at
`
`291 ll. 9-17; Ex. 1055 ¶14.
`
`Second, the encrypted and unencrypted digital information that PMC
`
`identifies in the specification are not sent in the same transmission, as required by
`
`the Substitute Claims. Ex. 1055 ¶15. The specification explains that “local-cable-
`
`enabling-message (#7)” is transmitted “[i]n the interval between said commence-
`
`enabling time and said 8:30 PM time … on the frequency of said master control
`
`channel.” Ex. 2050 at 296, ll. 9-20; see also Ex. 1052 at 56:14-19. By contrast, the
`
`“digital video and audio” of the Wall Street Week program are transmitted “on
`
`cable channel 13, commencing at a particular 8:30 PM time.” Ex. 2050 at 294 ll.
`
`12-21; see also Ex. 1052 at 47:13-19. The encrypted digital information and
`
`unencrypted digital information identified by PMC are actually transmitted on
`
`different channels and at different times, not in the same transmission.
`
`Substitute Claims 32-36 Are Not Supported by the Specification.
`
`C.
`PMC cites portions of the specification which describe “creat[ing] a meter
`
`record that documents the decryption of the cable audio transmission” and
`
`“transfer[ring] selected record information.” Ex. 2130 at 14-17 (citing 92:35-93:16,
`
`294:29-295:3, 297:3-19). But nothing in these citations indicates that the meter
`
`records “includ[e] a unique digital code identifying said receiver station” as
`
`8
`
`

`

`
`
`required by Claim 32. See id.; Ex. 1052 at 66:22-67:20; Ex. 1055 ¶16.
`
`In an attempt to overcome this deficiency, PMC cites entirely unrelated
`
`portions of
`
`the specification which describe steps
`
`to detect and report
`
`“unauthorized tampering.” Ex. 2130 at 14-17 (citing 292:31-293:4, 294:9-19). But
`
`the utilization of a “unique code” in detecting and reporting unauthorized
`
`tampering has no bearing on whether the “meter records” of audio decryption
`
`contain such a code. In fact, the detection of any such tampering “prevents the
`
`apparatus … from decrypting the encrypted information of said ‘Wall Street Week’
`
`program.” Ex. 2050 at 298 ll. 32-299 ll. 19; Ex. 1055 ¶17.
`
`D.
`Substitute claim 37 requires “detecting
`
`Substitute Claims 37-40 Are Not Supported by the Specification.
`in said encrypted digital
`
`information transmission the presence of a second instruct-to-enable signal.”
`
`PMC has identified “2nd-WSW-program-enabling-message (#7)” as supporting
`
`this “second instruct-to-enable signal.” Ex. 2130 at 25; Ex. 1052 at 85:13-16. But
`
`“2nd-WSW-program-enabling-message (#7)” is received as part of an analog
`
`television transmission, not the “encrypted digital information transmission” that
`
`contains the “so-called ‘digital video’ and ‘digital audio’” of the Wall Street Week
`
`Program. Ex. 1055 ¶21. As the specification explains:
`
`In due course, but still before said 8:30 PM time, said program
`originating
`studio commences
`transmitting analog
`television
`information on its transmission frequency and embeds and transmits
`
`9
`
`

`

`
`
`particular SPAM message information…. (Hereinafter, each of said
`SPAM messages is called a “2nd-WSW-program-enabling-message
`(#7).”) Then said program originating studio ceases transmitting
`analog television information.
`
`Ex. 2050 at 308 ll. 19-309 ll. 13.
`
`E.
`Substitute claim 41 requires “detecting
`
`Substitute Claims 41-43 Are Not Supported by the Specification.
`in said encrypted digital
`
`information transmission the presence of an instruct-to-enable signal” and
`
`“automatically tuning said receiver station to a channel designated by said instruct-
`
`to-enable signal.” Here PMC identifies “enable-CC13 instructions” as the
`
`“instruct-to-enable signal” and quotes “automatically, controller, 20, causes a
`
`selected tuner, 214, to tune to the frequency of cable channel 13” in support of the
`
`“automatically tuning” limitation. Ex. 2130 at 35-36; Ex. 1052 at 89:14-18.
`
`But the “enable-CC13 instructions” cannot possibly be detected “in said
`
`encrypted digital information transmission.” Ex. 1055 ¶24. They are received as
`
`part of “local-cable-enabling-message (#7)” which, as explained above, is received
`
`at an earlier time and on a different channel—the master control channel—than the
`
`“so-called ‘digital video’ and ‘digital audio’” of the Wall Street Week program.
`
`Section II.B supra; Ex. 2050 at 294 ll. 12-19, 296 ll. 9-20. To the extent PMC
`
`contends that the master control channel and cable channel 13 are one and the
`
`same, that would render the “automatically tuning” step meaningless.
`
`10
`
`

`

`
`
`III. THE SUBSTITUTE CLAIMS WOULD HAVE BEEN OBVIOUS TO A
`PERSON OF ORDINARY SKILL IN THE ART.
`A.
`PMC’s attempt to show that the Substitute Claims are patentable over the
`
`PMC Failed to Show That Its Substitute Claims Are Patentable
`
`massive amount of cited prior art is woefully insufficient. PMC’s prior art analysis
`
`is filled with conclusory statements, unsupported by any citations to the evidence
`
`or expert testimony. It does not analyze the prior art with any specificity, not even
`
`distinguishing the references on which this IPR was instituted. It is PMC’s—not
`
`Apple’s—burden to show that the Substitute Claims are patentable over the prior
`
`art, and PMC has completely failed to do so. MasterImage 3D, Inc. v. RealD Inc.,
`
`IPR2015-00040, 2015 WL 4383224 (P.T.A.B. July 15, 2015) (precedential).
`
`B. Claim Construction
`The term “information particular to a subscriber at said receiver station”
`
`need not be construed in relation to PMC’s Motion, as it has no recognizable
`
`impact on the prior art analysis, and the term should be given its plain and ordinary
`
`meaning. Apple disputes that PMC’s construction is the BRI, however, because
`
`PMC’s construction states that the information must correspond to a subscriber’s
`
`“personal activity and circumstances,” which is vague and neither supported by the
`
`claim language nor required by the specification.
`
`C.
`
`Substitute Claims 32-40 Are Unpatentable Over Gilhousen.
`1.
`
`Substitute Claim 32 Is Obvious Over Gilhousen
`
`11
`
`

`

`
`
`Gilhousen discloses “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.” Gilhousen describes receiving an IV
`
`frame count signal, subscriber key generation number, encrypted channel key, and
`
`encrypted category key. Ex. 1004 at 12:17-28. These are all digital signals, some of
`
`which are encrypted. Id. at 4:43-49, 4:60-62, 5:36-56. Gilhousen also describes
`
`receiving “encrypted digital information” in the form of scrambled digital audio
`
`and video signals. Gilhousen explains that video is converted into a “digital video
`
`information signal” before it is scrambled to form “digital scrambled video
`
`information” (id. at Fig. 3, 6:46-7:6, 16:26-64) and that “[t]he audio signal … is
`
`digitized and scrambled” (id. 8:46-50). Ex. 1054 at 84:12-20. All of the scrambled
`
`information sent and received in Gilhousen is digital, not analog. Ex. 1055 ¶27.
`
`To the extent this limitation is not expressly disclosed in Gilhousen, it would
`
`have been obvious, by PMC’s own expert’s admission. Dr. Weaver devotes nine
`
`pages to his opinion that “digital television … was well known to people of
`
`ordinary skill in the art by the 1980s.” Ex. 2022, ¶¶127-41; see also Resp. at 35-36.
`
`According to Dr. Weaver, “digital television and digital video were nothing new to
`
`people of ordinary skill in the art” and that “enabling technologies for digital
`
`television and digital video were already developed and tested.” Id., ¶128 (citing
`
`12
`
`

`

`
`
`Exs. 2034-38). As one example, Dr. Weaver describes an article which, he claims,
`
`teaches “the transmission of digital TV signal including digital video.” Id., ¶130
`
`(citing IPR2016-00753, Ex. 1026). If the transmission of digital television
`
`including digital video was well known in the art as Dr. Weaver attests, it would
`
`have been obvious to modify Gilhousen to transmit digital television. The
`
`motivation to encrypt such digital television would be the same as the motivation
`
`to encrypt or scramble analog television. See Ex. 1001 ¶¶52-56.
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`Gilhousen discloses “a method of decrypting digital programming,”
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`“decrypting said encrypted digital information using said first decryption key,” and
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`“outputting said digital programming.” Gilhousen describes that “[t]he descrambler
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`signal processor 150 descrambles the scrambled television signal on line 152 in
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`accordance with the unique keystream … to provide a descrambled video signal on
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`line 160 and a descrambled audio signal on line 161.” Ex. 1004 at 12:36-40. Lines
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`160 and 161 are outputs of the descrambler signal processor. Ex. 1004 at Fig. 5. As
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`explained above, the video signal is digital when it is descrambled.
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`While Gilhousen does not disclose the limitations regarding “creating … a
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`digital record” and “automatically transmitting said digital record,” it would have
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`been obvious to modify the teachings of Gilhousen to incorporate those of U.S.
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`Patent No. 4,739,510 to Jeffers et al. (“Jeffers”). Ex. 1055 ¶¶28-29. Jeffers
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`describes that “[f]or each program viewed on an impulse pay-per-view basis, the
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`decoder will store the program tag number” and that “[t]his information is passed
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`to the impulse pay-per-view data communications processor at the billing center …
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`by the telephone modem … on the day of the month set as the billing period.” Ex.
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`1066 at 14:58-68; see also id. at 15:22-25, 15:34-40. It would also have been
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`obvious to “includ[e] a unique digital code identifying said receiver station” in
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`those records so that the billing center could identify the subscriber to which the
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`impulse purchases related. Ex. 1055 ¶¶28-29. Jeffers describes that “[e]mbedded
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`within the decoder permanent memory 70 there is a factory loaded individual
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`identity code.” Ex. 1066 at 14:37-41. Similarly, Gilhousen describes “a memory
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`164 storing a subscriber address that is unique to the descrambler.” Ex. 1004 at
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`12:41-54; see also id. at 12:59-62.
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`2.
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`Substitute Claim 33 Is Obvious Over Gilhousen
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`The only change in substitute claim 33 is the addition of the word “digital”
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`in the limitation “decrypting encrypted digital information using said first and
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`second decryption keys.” As explained above, the video in Gilhousen is digital
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`when it is descrambled, and it would have been obvious for the encrypted
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`information to be digital if encrypted digital video was as well-known as PMC and
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`its expert contend. Section III.C.1, supra.
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`3.
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`Substitute Claim 37 Is Obvious Over Gilhousen
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`As explained above in Section III.C.1, Gilhousen discloses “decrypting
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`digital programming,” “receiving an encrypted digital information transmission
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`including encrypted digital information and unencrypted digital information,
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`wherein said encrypted digital information transmission is unaccompanied by any
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`scrambled analog encoded
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`information,” and “outputting
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`said digital
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`programming.”1 Gilhousen also discloses “decrypting said encrypted digital
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`information using said first and second decryption keys.” Section III.C.2 supra.
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`As explained above, it would have been obvious to modify the teachings of
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`Gilhousen to incorporate those of Jeffers. Section III.C.1 supra; Ex. 1055 ¶¶41-42.
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`Jeffers discloses “storing digital data comprising information particular to a
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`subscriber at said receiver station and originated at said receiver station” and
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`“outputting … information dependent on said digital data.” Jeffers describes that
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`“[t]he subscriber has the option of recording a unique pass code which will then be
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`required to authorize the viewing of an impulse pay-per-view program,” that [t]he
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`password is entered into the receiver keyboard and is transferred to and stored in
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`the decoder in a non-volatile RAM,” and that “[t]hereafter, the pass code must be
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`entered into the receiver to view a scrambled event.” Ex. 1066 at 11:11-18.
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`1 Claim 37’s amendment that the second processor instructions are “of said second
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`instruct-to-enable signal” is immaterial because that requirement is already present
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`in the claim. The limitation is disclosed by Gilhousen. Pet. at 28.
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`In the alternative, it would have been obvious to modify the teachings of
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`Gilhousen to incorporate those of U.S. Patent No. 4,536,791 to Campbell et al.
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`(“Campbell”). Ex. 1055 ¶¶38-40. Campbell describes that an “eligibility threshold
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`code 238” may be set by the subscriber to prevent the decoding of “certain
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`television programs which require limited access because of the subject matter.”
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`Ex. 1067 at 14:9-22. A content rating threshold constitutes information particular
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`to a subscriber. Ex. 1055 ¶39. Campbell also describes determining whether
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`programming will be output on the basis of whether the program’s content rating
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`exceeds the chosen content rating threshold. Ex. 1067 at 14:9-22, 15:54-16:14.
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`Gilhousen discloses “wherein said receiver station comprises a central
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`processing unit, said central processing unit interacting with random access
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`memory, and reprogrammable nonvolatile memory storing said digital data.”
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`Gilhousen discloses that the subscriber’s receiver station comprises a central
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`processing unit. Gilhousen discloses that the subscriber’s receiver station
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`comprises control processor 202. Ex. 1004 at 14:36-44, Fig. 7. A PHOSITA would
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`have understood the control processor to be a central processing unit because it
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`controls the receiver’s operation. Ex. 1055 ¶36. A PHOSITA would have also
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`understood that the control processor would interact with RAM (for temporary
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`storage) and reprogrammable nonvolatile memory (for permanent storage, e.g.,
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`firmware storage). Id. Additionally, it would have been obvious to modify the
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`teachings of Gilhousen to incorporate those Jeffers which describes the use of
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`“ROM,” “EAROM,” “BRAM,” and “non-volatile RAM (Random Access
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`Memory).” Ex. 1066 at Fig. 2B, 11:14-16.
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`Gilhousen also discloses “wherein said receiver station stores a unique
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`digital code capable of identifying said receiver station.” Specifically, Gilhousen
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`describes “a memory 164 storing a subscriber address that is unique to the
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`descrambler.” Ex. 1004 at 12:41-54; see also id. at 12:59-62.
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`4.
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`Substitute Claims 34 and 39 Are Obvious Over Gilhousen
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`Gilhousen discloses “said first and second decryption keys are used to
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`decrypt a digital video portion of said digital programming, wherein said digital
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`video portion is unaccompanied by any analog encoded video.” As explained
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`above in Section III.C.1, the video and audio signals received and decrypted in
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`Gilhousen’s system are scrambled and descrambled in the digital domain.
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`Additionally, to the extent that the transmission of digital television including
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`digital video was, indeed, well known in the art, it would have been obvious to
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`transmit encrypted digital video. Id.
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`5.
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`Substitute Claims 35 and 38 Are Obvious Over Gilhousen
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`Substitute claims 35 and 38 are identical to the claims they replace except
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`for their dependency. As explained in Apple’s Petition, it would have been obvious
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`to modify the teachings of Gilhousen to incorporate those of U.S. Patent No.
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`4,484,217 to Block et al. (“Block”), which discloses this limitation. Pet. at 29-31;
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`Ex. 1008 at 3:29-52; Ex. 1001 ¶¶163, 166-68.
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`6.
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`Substitute Claims 36 and 40 Are Obvious Over Gilhousen
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`Gilhousen discloses that “said encrypted digital information includes digital
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`television programming, wherein said digital