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 REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`

`

`
`
`I.
`
`TABLE OF CONTENTS
`
`The Challenged Claims Are Not Entitled to Claim Priority to the
`1981 Specification. ......................................................................................... 1
`A.
`The 1987 Specification Broadened the Scope of
`“Programming.” .................................................................................... 1
`PMC Is Estopped from Claiming Priority to the 1981
`Specification. ......................................................................................... 3
`The 1981 Specification Does Not Support Claim 13. ........................... 5
`
`B.
`
`C.
`
`II. Claim Construction ....................................................................................... 6
`A.
`“an encrypted digital information transmission including
`encrypted information” ......................................................................... 6
`“decrypting”/“encrypted” ...................................................................... 9
`“locate”/“locating” .............................................................................. 13
`“designated” ........................................................................................ 13
`“processor” and “processor instructions” ............................................ 13
`
`B.
`C.
`D.
`E.
`
`2.
`
`3.
`
`III. The Challenged Claims Are Unpatentable. .............................................. 15
`A. Gilhousen Anticipates Claims 13-15, 18, 20, and 23-24. ................... 15
`1.
`Gilhousen discloses “receiving an encrypted digital
`information transmission.” ........................................................ 15
`Gilhousen discloses “determining a fashion in which said
`receiver station locates a first decryption key …” and
`“locating said first decryption key ….” .................................... 16
`Gilhousen discloses “decrypting said encrypted
`information …” and “decrypt a video portion of said
`programming.” .......................................................................... 17
`Gilhousen discloses “passing said instruct-to-enable
`signal to a processor.” ............................................................... 18
`Gilhousen discloses “a first[/second] instruct-to-enable
`signal including first[/second] processor instructions,”
`and related “executing” limitations. .......................................... 18
`B. Mason Anticipates Claims 13-15, 18, 20, and 23-24. ......................... 19
`
`4.
`
`5.
`
`i
`
`

`

`
`
`C.
`
`D.
`
`2.
`
`3.
`
`IV. CONCLUSION ............................................................................................ 26
`
`
`
`
`
`ii
`
`1. Mason discloses “receiving an encrypted digital
`information transmission.” ........................................................ 19
`2. Mason discloses “decrypting said encrypted information
`…” and “decrypt a video portion of said programming.” ........ 20
`3. Mason discloses “determining a fashion in which said
`receiver station locates a first decryption key …” and
`“locating said first decryption key ….” .................................... 20
`4. Mason discloses “passing said instruct-to-enable signal to
`a processor.” .............................................................................. 21
`5. Mason discloses “a first[/second] instruct-to-enable
`signal including first[/second] processor instructions,”
`and related “executing” limitations. .......................................... 21
`Frezza Anticipates Claims 26 and 30. ................................................. 22
`1.
`Frezza discloses “receiving an information transmission
`including encrypted information” and “decrypting said
`encrypted information ….” ....................................................... 22
`Frezza discloses “detecting the presence of an instruct-to-
`enable signal.” ........................................................................... 23
`Frezza discloses “automatically tuning said receiver
`station to a channel designated by said instruct-to-enable
`signal.” ...................................................................................... 23
`Claims 16, 21, and 27 Are Obvious. ................................................... 24
`1.
`Block discloses “storing information evidencing said step
`of decrypting.” .......................................................................... 24
`It would have been obvious to combine Block with
`Gilhousen, Mason, or Frezza. ................................................... 25
`PMC’s alleged secondary considerations of
`nonobviousness are meritless. ................................................... 25
`
`2.
`
`3.
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`Bd. of Regents of the Univ. of Tex. Sys. v. BenQ Am. Corp.,
`533 F.3d 1362 (Fed. Cir. 2008) .............................................................................. 7
`
`Bradford Co. v. Conteyor N. Am., Inc.
`603 F.3d 1262 (Fed. Cir. 2010) .............................................................................. 4
`
`Hakim v. Cannon Avent Grp., PLC,
`479 F.3d 1313 (Fed. Cir. 2007) .............................................................................. 4
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .............................................................................. 6
`
`Marine Polymer Techs., Inc. v. HemCon, Inc.,
`Case No. 06-cv-100, 2009 WL 2046041 (D.N.H. July 9, 2009) ............................ 8
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ..................................................................... 1, 3, 6
`
`Spring Willow Fashions LP v. Novo Indus., LP,
`323 F.3d 989 (Fed. Cir. 2003) ................................................................................ 4
`
`Technology Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) .............................................................................. 3
`
`Statutes
`
`35 U.S.C. § 112 .......................................................................................................... 6
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 5
`
`iii
`
`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-00755
`
`PMC makes an unfounded priority date claim, advances narrow claim
`
`constructions, and argues against the prior art primarily on the basis of those
`
`constructions. PMC’s arguments are not supported, but contradicted, by the record.
`
`The Board should reject them and find the Challenged Claims of the ’091 patent
`
`unpatentable.
`
`I.
`
`THE CHALLENGED CLAIMS ARE NOT ENTITLED TO CLAIM
`PRIORITY TO THE 1981 SPECIFICATION.
`
`PMC’s priority date argument fails for two reasons: the 1987 specification
`
`broadened the scope of the term “programming,” a term in all Challenged Claims,
`
`and PMC is bound by the patentee’s statements during prosecution about priority.
`
`PMC’s analysis of whether every limitation of claim 13 is supported by the 1981
`
`specification is therefore unnecessary as well as incorrect.
`
`A. The 1987 Specification Broadened the Scope of “Programming.”
`A patent may only rely on the filing date of an earlier application “if the
`
`disclosure of the earlier application provides support for the claims of the later
`
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA,
`
`Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). When a claim term would receive a
`
`broader construction in view of the later filing, the claim is not entitled to the
`
`benefit of the earlier filing. Id. at 1310-11.
`
`In the 1981 specification, “programming” was defined as “everything
`
`transmitted over television or radio … .” Ex. 1009 at Abstract. The 1987
`
`
`
`

`

`
`
`specification, however, defines “programming” as “everything that is transmitted
`
`electronically … including television, radio, broadcast print, and computer
`
`programming as well as combined medium programming.” Ex. 1003 at 6:31-34.
`
`As the Board has found on multiple occasions, “everything that is transmitted
`
`electronically” is undeniably broader than “everything transmitted over television
`
`or radio.” Institution Decision at 22-25; Ex. 1048 at 32-34; Ex. 3001 at 14-21; Ex.
`
`1056 at 8-10. Because the 1987 specification defines “programming” more broadly
`
`than the 1981 specification does, the Challenged Claims are not entitled to the
`
`earlier priority date. PowerOasis, 522 F.3d at 1310-11.
`
`PMC’s arguments that “programming” in the 1981 specification includes
`
`“everything that is transmitted electronically” are meritless. The Board has already
`
`rejected PMC’s argument that “other electronic transmissions” in the 1981
`
`specification is as broad as the 1987 specification, because that disclosure is
`
`limited to single channel, single medium presentations, whereas “everything that is
`
`transmitted electronically” in the 1987 specification encompasses combined
`
`medium and computer programming. Institution Decision at 23-24 (emphasis in
`
`original). PMC’s other citations to the 1981 specification are similarly unavailing.
`
`Response at 30-31.
`
`2
`
`

`

`
`
`PMC also argues that the 1981 specification discloses digital television
`
`programming. Response at 33-36. Whether it does is irrelevant. Digital television
`
`programming does not equate to “everything that is transmitted electronically.”
`
`The case PMC cites is inapposite. In Technology Licensing Corp. v.
`
`Videotek, Inc., a later-filed application added matter, and the Federal Circuit found
`
`the claims were not entitled to the priority date of the earlier-filed application. 545
`
`F.3d 1316, 1333-34 (Fed. Cir. 2008). The only difference between Videotek and
`
`PowerOasis is that in Videotek, the disputed term was an entirely new limitation
`
`not discussed at all in the earlier application, while in PowerOasis, the new matter
`
`expanded the scope of an “interface.” Id.; PowerOasis, 522 F.3d at 1310-11.
`
`PowerOasis is applicable to the facts here, and under PowerOasis, the Challenged
`
`Claims are not entitled to the 1981 priority date.
`
`B.
`
`PMC Is Estopped from Claiming Priority to the 1981
`Specification.
`
`During prosecution, PMC repeatedly identified the 1987 specification as the
`
`’091 patent’s priority date. Ex. 1042 at 1-2; Ex. 1043 at 11, 33; Ex. 1044 at 1; Ex.
`
`1045 at 1; Ex. 1046 at 1. PMC also successfully argued against a double patenting
`
`rejection based on patents having the 1981 specification by stating “the present
`
`application does not claim the benefit of those applications under 35 U.S.C.
`
`§ 120” and “there could never have been a basis for claiming the present subject
`
`3
`
`

`

`
`
`matter in those applications.”1 Ex. 1043 at 21. PMC is estopped from claiming
`
`priority to the 1981 specification based on these statements.
`
`PMC sets up a strawman by saying “[t]here is no such thing as ‘priority date
`
`disclaimer.’” Response at 29. What it is called is not important—multiple cases
`
`support finding that PMC is estopped from claiming priority to the 1981
`
`specification. For instance, the Federal Circuit ruled in Bradford Co. v. Conteyor
`
`N. Am., Inc. that the patentee was estopped from claiming priority to an earlier
`
`application based on prosecution disclaimer because “arguments made to persuade
`
`an examiner to allow an application trump an ambiguous disclosure that otherwise
`
`might have sufficed to obtain an earlier priority date.” 603 F.3d 1262, 1269 (Fed.
`
`Cir. 2010). The Board addressed PMC’s attempts to distinguish Bradford and other
`
`cases cited by Apple and found them unavailing. Institution Decision at 26.
`
`“The public notice function of a patent and its prosecution history requires
`
`that a patentee be held to what he declares during the prosecution of his patent.”
`
`Spring Willow Fashions LP v. Novo Indus., LP, 323 F.3d 989, 995 (Fed. Cir.
`
`2003). PMC’s attempt to distance itself from its disclaimer now, by arguing
`
`(incorrectly) that the issued claims are significantly different than those pending at
`
`the time the disclaimer was made, is not sufficient. See Hakim v. Cannon Avent
`
`
`1 Emphasis added and internal quotations omitted unless noted otherwise.
`
`4
`
`

`

`
`
`Grp., PLC, 479 F.3d 1313, 1318 (Fed. Cir. 2007). The public notice function of the
`
`’091 prosecution history binds PMC to the numerous statements therein that the
`
`’091 patent only claims priority to the 1987 specification.
`
`C. The 1981 Specification Does Not Support Claim 13.
`Because the ’091 patent is not entitled to the 1981 priority date for the above
`
`reasons, it does not matter whether the 1981 specification provides sufficient
`
`disclosure to support all of the limitations of the Challenged Claims. But PMC
`
`does not even attempt to argue in its Response that any claim other than claim 13
`
`is supported by the 1981 specification. Response at 25-29; Ex. 2022 ¶112; 37
`
`C.F.R. § 42.6(a)(3) (no incorporation by reference).
`
`For claim 13, PMC’s attempt to demonstrate support fails. There is no
`
`support in the 1981 specification for at least the limitation “determining a fashion”
`
`for locating a first decryption key by processing a signal received in an encrypted
`
`digital information transmission. Ex. 1003 at claim 13. The 1981 specification
`
`describes “preinformed” receivers, where “the pattern of the composition, timing,
`
`and location of the signals may vary in such ways that only receiving apparatus
`
`that are preinformed regarding the patterns” can correctly process the signals. Ex.
`
`1009 at 4:31-40. None of the disparate disclosures in the 1981 specification PMC
`
`cites describe a signal that is processed to determine the fashion in which a
`
`decryption key is located, or that the signal is detected in the transmission.
`
`5
`
`

`

`
`
`Response at 39. Section 112 “requires that the written description actually or
`
`inherently disclose the claim element,” and the 1981 specification does not satisfy
`
`this requirement for the “determining” limitation. PowerOasis, 522 F.3d at 1306-
`
`07; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir.
`
`1997).
`
`II. CLAIM CONSTRUCTION
`None of PMC’s proposed constructions represent the broadest reasonable
`
`interpretation in light of the specification (“BRI”). 37 C.F.R. § 42.100(b).
`
`A.
`
`“an encrypted digital information transmission including
`encrypted information”
`
`The Board’s construction of this term to mean a transmission that “includes
`
`at least some encrypted digital information, and does not preclude, with that
`
`transmission, non-encrypted information or scrambled analog information” is
`
`correct. Institution Decision at 12.
`
`PMC’s argues that data must be either digital or analog, and thus an
`
`encrypted digital information transmission must be entirely digital. Response at 4-
`
`5. While accurate that data must be either digital or analog, the conclusion PMC
`
`draws is not.2 The Board’s construction does not suggest that a single piece of data
`
`
`2 PMC’s attempt to explain why the transmission must be all-digital but need not
`
`be all-encrypted relies upon this incorrect conclusion as well as an incorrect
`
`6
`
`

`

`
`
`can be both digital and analog, but rather recognizes that a signal or transmission
`
`may contain both digital and analog data. Institution Decision at 7-12. At least
`
`some of that data must be encrypted digital information, but there is no language of
`
`exclusion that says all of the data included in that transmission must be digital. Ex.
`
`1003 at claims 13, 20.
`
`By the plain language of the claims, the transmission is not necessarily all
`
`digital, because the transmission also “includ[es] encrypted information.” See Bd.
`
`of Regents of the Univ. of Tex. Sys. v. BenQ Am. Corp., 533 F.3d 1362, 1371 (Fed.
`
`Cir. 2008) (“Different claim terms are presumed to have different meanings.”).
`
`Because “digital” is the difference between the two phrases of the claim, the
`
`logical conclusion is that the “encrypted digital information transmission including
`
`encrypted information” includes information that is encrypted and digital, and also
`
`includes information that is encrypted, but not necessarily digital. PMC’s argument
`
`against this logical conclusion is entirely circular. Response at 8.
`
`PMC’s argument that the term is limited to an all-digital transmission to
`
`distinguish it from the “information transmission” of claim 26 fails for a similar
`
`reason. Response at 6-7. The plain language of the term is that the “encrypted
`
`
`assumption that the specification broadens the plain meaning of the term.
`
`Response at 5-6; Institution Decision at 7-10.
`
`7
`
`

`

`
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`digital information transmission” must include some encrypted digital information.
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`By contrast, the “information transmission” of claim 26 need not include any
`
`encrypted digital
`
`information,
`
`just encrypted
`
`information. This difference
`
`sufficiently distinguishes the claims; it does not mandate that the “encrypted digital
`
`information transmission” include only digital information.
`
`Claims of the related ’635 patent also illustrate that if PMC meant to limit a
`
`transmission to all-digital, it knew how to do so. Ex. 1030 at claim 18, 20, 32, 33.
`
`It is not appropriate to read the limitation “unaccompanied by any non-digital
`
`information transmission” in the ’635 patent into the Challenged Claims. Marine
`
`Polymer Techs., Inc. v. HemCon, Inc., Case No. 06-cv-100, 2009 WL 2046041, at
`
`*8-9 (D.N.H. July 9, 2009) (citing cases). PMC’s attempt to distinguish the
`
`“unaccompanied by” limitation in the ’635 patent is disingenuous given PMC’s
`
`proposed constructions of the term. Compare Response at 7 with Ex. 1056 at 21-
`
`22, Ex. 1061 at 13, and Ex. 1062 at 9-10.
`
`The specification describes numerous transmissions that include both analog
`
`and digital data. Institution Decision at 10-11. PMC argues that these embodiments
`
`should not be used to expand the scope of “encrypted digital information
`
`transmission” to include transmissions that only include some encrypted digital
`
`information. Response at 8-9. This is circular, as PMC’s argument that these
`
`embodiments broaden the scope of the claim presumes that the plain meaning of
`
`8
`
`

`

`
`
`the term is that the transmission is of all-digital information. To the contrary, the
`
`plain
`
`language
`
`is
`
`that
`
`the
`
`transmission
`
`includes some encrypted digital
`
`information, and thus these mixed-signal transmissions of both analog and digital
`
`data are within the scope of the claims. It is PMC that is trying to narrow the scope
`
`of the term, by reading in a requirement that it be all-digital, without offering
`
`support from the specification.
`
`“decrypting”/“encrypted”
`
`B.
`PMC re-argues that “decrypt” and “encrypt” are limited to operations that
`
`use a digital key on digital data. But PMC’s arguments are just as unavailing as
`
`before. The Board’s construction should stand. Institution Decision at 18.
`
`PMC criticizes Apple and
`
`the Board for relying on a so-called
`
`“controversial” sentence in the specification. Response at 11-14. That statement,
`
`considered in its full context, continues to support Apple’s position (and the
`
`Board’s determinations3) that descrambling of analog television transmissions is
`
`within the scope of “decrypting.” Ex. 1003 at 159:46-61. By stating that
`
`
`3 The Board has found on multiple occasions that “decrypt” is not limited to
`
`digital data and encompasses descrambling in related PMC patents. Ex. 1011 at
`
`11; Ex. 1012 at 3-5; Ex. 1014 at 2-4; Ex. 1057 at 10; Ex. 1062 at 7-8; Ex. 1056
`
`at 19-21.
`
`9
`
`

`

`
`
`“decryptors, 107, 224, and 231, may be conventional descramblers, well[] known
`
`in the art, that descramble analog television transmissions and are actuated by
`
`receiving digital key information,” the ’091 specification shows that merely
`
`labeling something a “decryptor” does not exclude the function of descrambling.
`
`Ex. 1003 at 159:57-61. Rather, it explicitly states that the use of the term
`
`“decryptor” may include decrypting either digital or analog data.
`
`Preceding this sentence, the specification says it is “obvious” to a PHOSITA
`
`“that the invention is not to be unduly restricted” by the given example because
`
`modifications can be made “without functionally departing from the spirit of the
`
`invention.” Id. at 159:46-51. The specification lists changes that could be made to
`
`the example that would still fall within the spirit of the invention—such as
`
`descrambling where a device is labeled “decryptor.” Id. at 159:46-160:27.
`
`PMC’s argument that the “controversial” sentence reflects an alternative
`
`embodiment is inconsistent with the text and presumes that an information
`
`transmission must include solely digital information. Response at 12-13. As
`
`described above, that presumption is incorrect. The embodiments of the ’091
`
`patent, including those cited favorably by PMC, are mixed signal embodiments,
`
`10
`
`

`

`
`
`combining both analog and digital transmissions.4 The “controversial” sentence is
`
`consistent with this, as it states that the decryptors may be conventional
`
`descramblers “that descramble analog television transmissions and are actuated by
`
`receiving digital key information.” Ex. 1003 at 159:57-61.
`
`The Board properly rejected PMC’s reliance on alleged disclaimers in the
`
`prosecution history and other BPAI and judicial decisions. Institution Decision at
`
`16-18. PMC cites one additional judicial decision, but does not address the Board’s
`
`findings about the record in this case as compared to those cases or the
`
`inconsistency in PMC’s positions. Response at 15-17. One example cited by PMC
`
`highlights that Apple and the Board are reading the “controversial” sentence
`
`properly. In the reexamination of a related patent with the same specification, PMC
`
`stated that it was acting as a lexicographer and that the invention includes
`
`“something beyond the conventional scrambling/ descrambling … such as the use
`
`
`4 PMC’s argument that these mixed signal embodiments cannot be used to
`
`enlarge the scope of “programming” is nonsensical. The disputed term is
`
`“decrypt,” not “programming,” and PMC’s argument that mixed signal
`
`examples in the specification expand the scope of “programming” assumes that
`
`the decryption of programming is limited to digital programming. Response at
`
`14-15.
`
`11
`
`

`

`
`
`of a decryption key.” Ex. 2005 at 41. This is exactly what the “controversial”
`
`sentence states—the decryptors “may be conventional descramblers … that
`
`descramble analog television transmissions and are actuated by receiving digital
`
`key information.” Ex. 1003 at 159:57-61. This demonstrates that the Board’s
`
`construction is correct. “Decrypting” uses “a key, algorithm, or some type of
`
`digital information,” but the “process to decipher, decode, or descramble
`
`information that is either ciphered, encoded, or scrambled” may be performed on
`
`either digital or analog data. Institution Decision at 18.
`
`PMC also argues that documents authored by Apple’s expert contradict the
`
`Board’s construction and his testimony in this proceeding. Response at 17-20.
`
`Mr. Wechselberger explained that the purpose of the article he wrote in 1983 was
`
`not to illustrate how the terms “encryption/decryption” and “scrambling/
`
`descrambling” were used by a PHOSITA, but rather to clarify that they should be
`
`given distinct meanings, instead of being used interchangeably as they were at the
`
`time. Ex. 1001 ¶¶62-65; Ex. 1027. Nor does his declaration from another litigation
`
`about another patent contradict his testimony here.5 Considered in context, Mr.
`
`
`5 The
`declaration PMC
`
`cites
`
`refers
`
`to
`
`alleged
`
`confusion
`
`about
`
`“scrambling/descrambling,” not “decryption/encryption.” Ex. 2010.
`
`12
`
`

`

`
`
`Wechselberger’s opinions are consistent with the Board’s construction, which
`
`should stand.
`
`“locate”/“locating”
`
`C.
`The Board did not construe this term at institution because the plain meaning
`
`of “locate” is not in controversy. As the dictionary PMC cites states, “locate”
`
`means “to determine or indicate the place, site, or limits of.” Ex. 2013 at 4.
`
`Whether the object “located” is stored, created, or recreated at that place does not
`
`matter—that place is where the object can be found.
`
`PMC, however, proposes to limit “locate” to determining the place of
`
`“something already in existence.” Response at 20-21. PMC does not provide any
`
`evidence, intrinsic or extrinsic, in support of narrowing the term this way. It is not
`
`the BRI.
`
`“designated”
`
`D.
`Apple does not dispute that “designated” means “specified,” but disputes
`
`PMC’s application of this construction in the context of claim 26.
`
`“processor” and “processor instructions”
`
`E.
`The Board correctly construed “processor” to be “a device that operates on
`
`data,” and “processor instructions” to be “instructions, including control or
`
`informational signals, to a device that operates on data.” Institution Decision at 18-
`
`19. These are the BRIs, as confirmed by numerous other claim construction
`
`13
`
`

`

`
`
`decisions from both the Board and district courts. Ex. 1018 at 7-8; Ex. 1056 at 21;
`
`Ex. 1057 at 11-12; Ex. 1062 at 8-9; Ex. 1063 at 10-12; Ex. 2023 at 59-61.
`
`PMC’s attempt to limit “processor” to “a device that performs operations
`
`according to instructions” is improperly narrow. The plain meaning of “processor,”
`
`as reflected in contemporaneous dictionary definitions, is “the part of a computer
`
`system that operates on data.” Ex. 1057 at 11 (citing Exs. 1058, 1059); Ex. 2023 at
`
`59-61. All of the “processors” described in the specification identified by Apple,
`
`PMC, or the Board are devices that operate on data. That some of those processors
`
`may also operate in response to instructions is not sufficient for importing this
`
`narrowing limitation into a broad claim term.
`
`Additionally, “instructions” does not have as limited a meaning as PMC
`
`suggests. The Board’s construction of “processor instructions” expressly states that
`
`instructions include control or informational signals. Institution Decision at 19; see
`
`also Ex. 1063 at 10-12 (“processor instructions” “include a command or an
`
`instruction used or executed by a processor”). For example, the specification
`
`discloses that an “interrupt signal” informs a control processor and causes the
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`control processor to act in a “predetermined fashion.” Ex. 1003 at 110:44-54; see
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`also Institution Decision at 19. PMC does not even attempt to rebut the Board’s
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`construction of “instructions” as including control or informational signals, or the
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`14
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`findings underlying the Board’s construction. Response at 24-25. The Board’s
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`construction of “processor” and “processor instructions” is correct.
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`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A. Gilhousen Anticipates Claims 13-15, 18, 20, and 23-24.
`1.
`Gilhousen discloses “receiving an encrypted digital information
`transmission.”
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`PMC’s argument that Gilhousen does not teach this limitation assumes that
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`PMC’s narrow construction of “encrypted digital information transmission,” which
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`requires the transmission carry only digital content, is correct. PMC does not
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`dispute that Gilhousen discloses a transmission that includes encrypted digital
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`information as that term was construed by the Board. Response at 44-46; Petition
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`at 17-19.
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`PMC is also wrong when it says Gilhousen is not an all-digital transmission.
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`Response at 45; Ex. 2022 ¶156. PMC’s own expert admits that Gilhousen performs
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`scrambling/descrambling on video in a digital format. Ex. 1054 at 85:12-20.
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`Gilhousen repeatedly discloses that a television signal is converted “into a digital
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`video information signal.” Ex. 1004 at 6:46-50, 16:26-29; Ex. 1001 ¶¶114-15.
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`PMC’s argument that this express disclosure does not mean that the transmission
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`in Gilhousen includes transmission of digital video appears to be premised on the
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`fact that the digital video information signal passes through a digital-to-analog
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`converter before it is transmitted. Response at 45-46; Ex. 2022 ¶¶154-58. The
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`15
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`digital-to-analog converter, however, performs a modulation that allows digital
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`information to be carried on an analog signal for transmission. Ex. 1001 ¶¶118-19;
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`Ex. 1004 at 8:2-4, 11:52-12:2, 14:45-50, 15:50-59.
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`Gilhousen meets this limitation because it discloses receiving scrambled
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`television signal 152, including digital control signals, encrypted digital control
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`signals, and encrypted digital video and audio information signals. Petition at 16-
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`19; Ex. 1001 ¶¶112-20; Ex. 1004 at 5:36-56, 6:46-50, 8:46-50, 12:13-35.
`
`2.
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`Gilhousen discloses “determining a fashion in which said
`receiver station locates a first decryption key …” and “locating
`said first decryption key ….”
`
`PMC’s argument that Gilhousen’s process for reproducing the keystream at
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`the receiver does not satisfy the “determining” and “locating” limitations is
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`premised on PMC’s improperly narrow construction of “locate.” Response at 47-
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`50.
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`PMC is also wrong to say there is no evidence the keystream previously
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`existed, as keystream 44 exists in the scrambler signal processor that generates the
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`transmission to the subscriber station. Ex. 1004 at Abstract, 6:25-27, Fig. 3. PMC
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`complains that Gilhousen does not supply the keystream to the subscriber station,
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`but that is not required by claim 13. Response at 47. A plurality of signals are
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`transmitted to and processed by the receiver to determine the fashion in which the
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`keystream will be located at the receiver, and the keystream is located at
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`16
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`Keystream Generator. Ex. 1004 at Abstract, 14:14-35, Fig. 6; Petition at 20-21; Ex.
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`1001 ¶125-28.
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`There is no requirement that Gilhousen’s Working Key Generator “alter”
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`Keystream Generator to satisfy the step of “determining,” as PMC suggests.
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`Response at 49-50. Moreover, Apple does not argue that Working Key Generator
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`performs the step of “determining.” Petition at 20-21. Working Key Generator
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`processes the instruct-to-enable signal to generate Working Key Signal. It is
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`Working Key Signal that determines the fashion in which the keystream will be
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`located, because a truncated version of that signal is used as an input to Keystream
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`Generator to reproduce the keystream. Id.; Ex. 1001 ¶¶125-26.
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`3.
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`Gilhousen discloses “decrypting said encrypted information …”
`and “decrypt a video portion of said programming.”
`
`PMC’s argument that Gilhousen fails to disclose the “decrypting” limitations
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`relies upon its improperly narrow construction of “decrypt” as being limited to
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`digital data. Encrypted data may or may not be digital. Institution Decision at 12-
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`18. Gilhousen’s explanation that “[t]he descrambler signal processor 150
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`descrambles the scrambled television signal on line 152 in accordance with the
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`unique keystream received on line 159” clearly discloses these limitations as
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`properly construed. Ex. 1004 at 12:36-40; Ex. 1001 ¶¶129, 138.
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`Even if “decrypting” were limited to deciphering digital data, Gilhousen
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`would still disclose these limitations. In Gilhousen, received television signals are
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`17
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`passed to an analog-to-digital converter which “converts the scrambled television
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`signal … into a digital video information signal.” Ex. 1004 at 16:26-29. It is this
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`“digital scrambled video information” which is “descrambled.” Id. at 16:33-64.
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`The video information deciphered in Gilhousen is digital data.
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`4.
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`Gilhousen discloses “passing said instruct-to-enable signal to a
`processor.”
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`PMC’s argument that Gilhousen fails to disclose this limitation is premised
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`on its improperly narrow construction of “processor.” The instruct-to-enable
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`signal, IV frame count signal, is passed on line 191 to Working Key Generator, a
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`device that operates on data. Petition at 20; Ex. 1004 at 14:14-