Docket No.: PMC-003C180
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`John C. Harvey et al.
`
`Application No.: 08/485,507
`
`Confirmation No.: 5691
`
`Filed: May 24, 1995
`
`Art Unit: 2600
`
`For: SIGNAL PROCESSING APPARATUS AND
`METHODS
`
`Examiner: Groody, James J.
`
`SUPPLEMENTAL AMENDMENT
`
`MS Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This application had been suspended since 2005 and held in abeyance from examination
`
`by the Office pending final action in a corresponding so-called "A" application, U.S. Patent
`
`Application, Serial No. 08/474,145. This suspension was based on an agreement made between
`
`Applicants and the Office to consolidate or group the claims of Applicants' then pending
`
`applications which had been filed prior to June 8, 1995, into a smaller number of applications.
`
`This so-called consolidation agreement resulted from a series of interviews conducted from
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`November 1998 through June 1999 between Applicants' representatives and the Office. In those
`
`interviews, senior Office management suggested that further examination of this application and
`
`Applicants' other related applications could be expedited by reducing the number of pending
`
`applications. Accordingly, Applicants agreed to consolidate their claims into 56 subject matter
`
`groups and to reduce the number of pending applications accordingly. Applicants' agreement
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`APPLE EX. 1035
`Page 1
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`was based on the Office's view that it would be helpful to the Office to examine the claims of the
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`subject matter groups together.
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`For each subject matter group, the applications were separated based on whether priority
`
`was claimed to Applicants' initiall981 Application (U.S. Serial No. 06/317,510) or their initial
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`1987 Continuation-in-Part Application (U.S. Serial No. 07/096,096). The claims from all
`
`applications in a group having the same priority claim were added to a single application
`
`designated an "A" application. The remaining applications were abandoned with the exception
`
`of one so-called "B" application corresponding to each "A" application.
`
`Under this agreement, the PTO suspended prosecution in the "B" applications pending
`
`final action in the corresponding "A" applications. Further, the parties agreed to conduct
`
`interviews in the "A" applications so that the prosecution of those applications could be
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`efficiently advanced. Under the agreement, subject matter not found to be allowable during
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`prosecution of an "A" application may be further prosecuted in the "B" application while the
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`"A" application would be allowed to issue. In good faith reliance on this consolidation
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`agreement, Applicants abandoned 169 of their 329 pending applications and filed numerous
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`amendments adding to the designated "A" applications various claims that had been pending in
`
`the abandoned applications and the designated "B" applications. 1
`
`On May 9, 2000, Applicants amended the DECR 87 group "A" application, U.S. Patent
`
`Application Serial No. 08/474,145, in accordance with the aforementioned agreement. Claims
`
`from related DECR 87 applications were added to the DECR 87 group "A" application.
`
`1 As a result of the consolidation, Applicants paid excess claim fees for many of the claims that were added to the
`designated "A" applications, even though Applicants previously paid excess claim fees for those claims when
`they had been added to the abandoned applications and the designated "B" applications.
`
`2
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`APPLE EX. 1035
`Page 2
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`Applicants amended some of the "A" Claims on March 13, 2002 and January 31, 2003.
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`In late 2002 and early 2003, reexamination requests were filed and granted as to Applicants'
`
`seven previously issued patents. Subsequent to the initiation of these reexamination proceedings,
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`the Director of Technology Center 2600 decided to suspend prosecution of this application and
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`the related "A" application pending resolution of the reexamination proceedings for the issued
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`patent and the prosecution to appeal to the Board of Patent Appeals and Interferences ("Board")
`
`of two of Applicants' pending applications, (1) the INTE application (U.S. Patent Application,
`
`Serial No. 08/470,571) and (2) the MULT application (U.S. Patent Application, Serial No.
`
`08/487 ,526). As a result of this decision, the DECR 87 group "A" application (U.S. Patent
`
`Application, Serial No. 08/474,145) was suspended through a number of six month Suspension
`
`Notices until January 2009. Consequently, no formal response was made regarding the "A"
`
`Claims.
`
`In 2009, as the reexamination proceedings for Applicants' issued patents had been
`
`substantially completed and decisions had been issued by the Board in the INTE and MULT
`
`applications, Applicants requested that the suspension of their various applications be
`
`terminated.
`
`This request was granted in the spring of 2009 and, as a result, applicants met with
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`Examiner Minh Dieu T. Nguyen for a number of personal interviews in January 2010. An
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`agreement was made to cancel or amend numerous of the "A" Claims so that the DECR 87
`
`group "A" application (U.S. Patent Application Serial No.08/474,145) could issue.
`
`In the instant application, DECR 87 group "B" (U.S. Patent Application Serial No.
`
`08/485,507), Applicants filed a Supplemental Amendment Under 37 C.P.R. § 1.115 on May 9,
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`3
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`APPLE EX. 1035
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`2000. Applicants canceled all claims except for claim 3, which they amended. The Examiner
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`then suspended the application according to the above mentioned consolidation agreement.
`
`Consistent with the consolidation agreement between the Applicants and the Office,
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`Applicants now wish to pursue the subject matter within the scope of the "A" claims of the
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`DECR 87 group "A" application (U.S. Patent Application Serial No. 08/474,145) by claiming
`
`such subject matter that was not patented in the "A" application in the instant "B" application.
`
`Claims 33-63 correspond to various claims of the "A" application with additional amendments
`
`that Applicants believe place the claims in condition for allowance. In order to aid the Examiner
`
`in understanding the amendments to the claim, Applicants have attached a marked up copy of the
`
`claims (Appendix A) indicating the differences between the "A" Claims and the amended form
`
`submitted herein as claims 33-63.
`
`Applicants believe that claims 33-63 overcome the prior art, and should place the above(cid:173)
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`identified patent application in condition for allowance. Applicants respectfully request
`
`favorable consideration of the above-identified patent application in view of the following
`
`remarks.
`
`Claim 3 which is currently pending in this application will be cancelled.
`
`Amendments to the claims begin on page 5.
`
`Remarks begin on page 10.
`
`4
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`APPLE EX. 1035
`Page 4
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`AMENDMENT TO THE CLAIMS
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`Applicants request entering the below amendments to the claims. New claims 33-63 are
`
`added. Claim 3 is cancelled. Claims 33-63 are the only pending claims.
`
`1 - 32. (Cancelled)
`
`33.
`
`(New) A method of inhibiting piracy of information or enabling a presentation of
`
`programming at a subscriber station, said method comprising the steps of:
`
`receiving an information transmission from a first remote station;
`
`detecting instruct-to-sample instructions in the information transmission;
`
`processing, under control of said instruct-to-sample instructions, a datum at said
`
`subscriber station;
`
`comparing, under control of said instruct-to-sample instructions, selected comparison
`
`information of said instruct-to-sample instructions to a selected sample of preprogrammed
`
`operating information at said subscriber station, said selected comparison information and said
`
`selected sample of preprogrammed operating information being selected based on said step of
`
`processing, whereby a successful match indicates that said subscriber station is properly
`
`programmed and a failed match suggests that said preprogrammed operating information at said
`
`subscriber station has been tampered with; and
`
`performing, under control of said instruct-to-sample instructions, at said subscriber
`
`station at least one of the steps of:
`
`(1) disabling the functionality of some portion of said subscriber station (i) when
`
`said step of comparing results in a determination that said subscriber station has been tampered
`
`with or (ii) when an instruction is executed based on said step of comparing and said subscriber
`
`station fails to respond in a predetermined fashion or within a predetermined period of time;
`
`(2) communicating appearance-of-tampering information to a second remote
`
`station when said step of comparing results in a determination that said subscriber station has
`
`been tampered with; and
`
`5
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`APPLE EX. 1035
`Page 5
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`(3) enabling at least some of a programming presentation when said step of
`
`comparing results in a determination that said subscriber station is properly programmed.
`
`34.
`
`(New) The method of claim 33, wherein said comparing step is performed under
`
`control of a selected subroutine of said instruct-to-sample instructions.
`
`35.
`
`(New) The method of claim 34, wherein said subscriber station selects said
`
`selected subroutine based on said step of processing.
`
`36.
`
`(New) The method of claim 35, wherein said datum comprises a station specific
`
`identifier.
`
`37.
`
`(New) The method of claim 36, wherein said subscriber station selects said
`
`station specific identifier.
`
`38.
`
`(New) The method of claim 33, wherein said step of performing includes said
`
`step of disabling and wherein said step of disabling includes erasing information from memory.
`
`39.
`
`(New) The method of claim 38, wherein a read only memory is disabled.
`
`40.
`
`(New) The method of claim 33, wherein said step of performing includes said
`
`step of disabling and wherein said step of disabling includes disabling a decryptor.
`
`41.
`
`(New) The method of claim 33, wherein said step of performing includes said
`
`step of communicating and wherein said step of communicating includes establishing telephone
`
`communications.
`
`42.
`
`(New) The method of claim 33, wherein said step of performing includes said
`
`step of communicating and wherein said step of communicating includes transmitting an
`
`identifier of said subscriber station to said second remote station.
`
`43.
`
`(New) The method of claim 33, wherein said step of comparing results in a
`
`determination that said subscriber station may have been tampered with and said subscriber
`
`station performs both of said steps of disabling and communicating.
`
`6
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`APPLE EX. 1035
`Page 6
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`44.
`
`(New) The method of claim 33, wherein said step of performing includes said
`
`step of enabling and wherein said step of enabling includes controlling a decryptor.
`
`45.
`
`(New) A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting presence of an instruct-to-enable signal;
`
`passing said instruct-to-enable signal to a processor;
`
`determining a fashion in which said receiver station locates a first decryption key by
`
`processing said instruct-to-enable signal;
`
`locating said first decryption key based on said step of determining;
`
`decrypting said encrypted information using said first decryption key; and
`
`outputting said programming based on said step of decrypting.
`
`46.
`
`(New) The method of claim 45, further comprising the step of computing a
`
`second decryption key, and wherein said step of decrypting comprises decrypting said encrypted
`
`information using said first and second decryption keys.
`
`47.
`
`(New) The method of claim 46, wherein said first and second decryption keys are
`
`used to decrypt a video portion of said programming.
`
`48.
`
`(New) The method of claim 45, further comprising the step of storing
`
`information evidencing said step of decrypting.
`
`49.
`
`(New) The method of claim 45, further comprising the step of determining if said
`
`receiver station is decrypting said encrypted information correctly, and if not, communicating
`
`appearance-of-tampering information to a remote station.
`
`50.
`
`(New) The method of claim 45, wherein said encrypted information includes
`
`television programming.
`
`7
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`APPLE EX. 1035
`Page 7
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`

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`51.
`
`(New) The method of claim 47, wherein a third decryption key is used to decrypt
`
`an audio portion of said programming, and said first decryption key is located based on
`
`decrypting said audio portion using said third decryption key.
`
`52.
`
`(New) A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting the presence of a first instruct-to-enable signal including first processor
`
`instructions;
`
`executing said first processor instructions of said first instruct-to-enable signal to provide
`
`a first decryption key;
`
`detecting the presence of a second instruct-to-enable signal including second processor
`
`instructions;
`
`executing said second processor instructions to provide a second decryption key;
`
`decrypting said encrypted information using said first and second decryption keys; and
`
`outputting said programming based on said step of decrypting.
`
`53.
`
`(New) The method as in claim 52, further comprising the step of storing
`
`information evidencing said step of decrypting.
`
`54.
`
`(New) The method as in claim 52, further comprising the step of determining if
`
`said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering information to a remote station.
`
`55.
`
`(New) The method of claim 52, wherein said first and second decryption keys are
`
`used to decrypt a video portion of said programming.
`
`56.
`
`(New) The method of claim 52, wherein said encrypted information includes
`
`television programming.
`
`8
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`APPLE EX. 1035
`Page 8
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`

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`57.
`
`(New) The method of claim 55, wherein a third decryption key is used to decrypt
`
`an audio portion of said programming, and said first decryption key is provided based on
`
`decrypting said audio portion using said third decryption key.
`
`58.
`
`(New) A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting the presence of an instruct-to-enable signal;
`
`passing said instruct-to-enable signal to a processor;
`
`automatically tuning said receiver station to a channel designated by said instruct-to(cid:173)
`
`enable signal;
`
`receiving enabling information based on said step of tuning;
`
`decrypting said encrypted information by processing said enabling information; and
`
`outputting said programming based on said step of decrypting.
`
`59.
`
`(New) The method of claim 58, further comprising the step of storing
`
`information evidencing said step of decrypting.
`
`60.
`
`(New) The method of claim 58, further comprising the step of determining if said
`
`receiver station is decrypting said encrypted information correctly, and if not, communicating
`
`appearance-of-tampering to a remote station.
`
`61.
`
`(New) The method of claim 58, wherein said enabling information is received in
`
`an audio portion of said programming.
`
`62.
`
`(New) The method of claim 58, wherein said encrypted information includes
`
`television programming.
`
`63.
`
`(New) The method of claim 61, wherein said step of decrypting comprises
`
`decrypting a video portion of said programming.
`
`9
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`APPLE EX. 1035
`Page 9
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`

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`REMARKS
`
`I.
`
`Status of claims
`
`New claims 33-63 have been added. They correspond to claims 2, 5-15,22-28, 38-41,
`
`43-48, and 50-51 of the DECR 87 group "A" application (U.S. Patent Application Serial No.
`
`08/474,145.) The newly presented claims are fully supported by the specification and do not
`
`introduce new matter.
`
`Each of the claims is patentable in light of the prior art. Prior patents Lee (U.S. Patent
`
`No. 4,484,027), Gilhousen (U.S. Patent No. 4,613,901 and U.S. Patent No. 4,712,238), Moerder
`
`(U.S. Patent No. 4,634,808), and Mason (U.S. Patent No. 4,736,422) were cited as having
`
`subject matter similar to some of the claims now introduced in claims 33-63. All four patents
`
`disclose the use of encoded control signals or other data to control the unscrambling of an analog
`
`video signal.
`
`The claims of this amendment, however, claim material relating to the encryption and
`
`decryption of signals. Claim 45 is "[a] method of decrypting programming" and contains a step
`
`of "decrypting said encrypted information using said first decryption key." Claim 52 is "[a]
`
`method of decrypting programming" and contains a step of "decrypting said encrypted
`
`information using said first and second decryption keys." Claim 58 is "[a] method of decrypting
`
`programming" and contains a step of "decrypting said encrypted information."
`
`The Board of Patent Appeals and Interferences decided in Ex parte Personalized Media
`
`Communications, LLC (Appeal 2008-4228, Ex parte Reexamination Control 90/006,536) at
`
`pages 53-54, that encryption requires a digital signal. Each of the claims of this amendment
`
`involves the use of digital signals through reference to "decryption" and "encryption."
`
`"Encryption and decryption," the Board goes on to say, "are not broad enough to read on
`
`10
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`APPLE EX. 1035
`Page 10
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`scrambling and unscrambling." Therefore, because Lee, Gilhousen, Moerder, and Mason are
`
`directed to unscrambling of analog signals, none teach or suggest a method of controlling the
`
`decryption of digital information as is presented in the claims of this amendment.
`
`Upon entry of this paper, claims 33-63 will be pending and under consideration.
`
`Reconsideration is respectfully requested based on the above amendments.
`
`II.
`
`Conclusion
`
`Applicants respectfully submit that all claims are in condition for examination and
`
`prompt examination on the merits is earnestly requested. In the event Applicants have
`
`overlooked the need for an extension of time, payment of fee, or additional payment of fee,
`
`Applicants hereby petition therefore and authorize that any charges be made to Deposit Account
`
`No. 50-4494.
`
`Should the Examiner have any questions regarding any of the above, the Examiner is
`
`respectfully requested to telephone the undersigned at 202-346-4000.
`
`Dated: Aprilll, 2011
`
`Respectfully submitted,
`
`By /Thomas J. Scott, Jr/
`Thomas J. Scott, Jr.
`Registration No.: 27,836
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorney for Applicants
`
`11
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`APPLE EX. 1035
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`Appendix A
`
`Marked up Copy of Claims 33-63 Indicating the Differences Between Them and Claims 2,
`
`5-15, 22-28, 38-41, 43-48, and 50-51 of the DECR 87 Group "A" Application
`
`(U.S. Patent Application Serial No. 08/474,145)
`
`33.
`
`A method of inhibiting piracy of information or enabling a presentation of
`
`programming at a subscriber station, said method comprising the steps of:
`
`receiving an information transmission from a first remote station;
`
`detecting instruct-to-sample instructions in the information transmission;
`
`processing, under control of said instruct-to-sample instructions, a datum at said
`
`subscriber station;
`
`comparing, under control of said instruct-to-sample instructions, selected comparison
`
`information of said instruct-to-sample instructions to a selected sample of preprogrammed
`
`operating information at said subscriber station, said selected comparison information and said
`
`selected sample of preprogrammed operating information being selected based on said step of
`
`processing, whereby a successful match indicates that said subscriber station is properly
`
`programmed and a failed match suggests that said preprogrammed operating information at said
`
`subscriber station has been tampered with; and
`
`performing, under control of said instruct-to-sample instructions, at said subscriber
`
`station at least one of the steps of:
`
`(1) disabling the functionality of some portion of said subscriber station (i) when
`
`said step of comparing results in a determination that said subscriber station has been tampered
`
`12
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`APPLE EX. 1035
`Page 12
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`with or (ii) when an instruction is executed based on said step of comparing and said subscriber
`
`station fails to respond in a predetermined fashion or within a predetermined period of time;
`
`(2) communicating appearance-of-tampering information to a second remote
`
`station when said step of comparing results in a determination that said subscriber station has
`
`been tampered with; and
`
`(3) enabling at least some of a programming presentation when said step of
`
`comparing results in a determination that said subscriber station is properly programmed.
`
`34.
`
`The method of claim :2, 33, wherein said comparing step is performed under
`
`control of a selected subroutine of said instruct-to-sample instructions.
`
`35.
`
`The method of claim§. 34, wherein said subscriber station selects said selected
`
`subroutine based on said step of processing.
`
`36.
`
`The method of claim 6 35, wherein said datum comprises a station specific
`
`identifier.
`
`37.
`
`The method of claim':/- 36, wherein said subscriber station selects said station
`
`specific identifier.
`
`38.
`
`The method of claim :2, 33, wherein said step of performing includes said step of
`
`disabling and wherein said step of disabling includes erasing information from memory.
`
`39.
`
`The method of claim 9 38, wherein a read only memory is disabled.
`
`40.
`
`The method of claim :2, 33, wherein said step of performing includes said step of
`
`disabling and wherein said step of disabling includes disabling a decryptor.
`
`41.
`
`The method of claim :2, 33, wherein said step of performing includes said step of
`
`communicating and wherein said step of communicating includes establishing telephone
`
`communications.
`
`13
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`APPLE EX. 1035
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`42.
`
`The method of claim :2, 33, wherein said step of performing includes said step of
`
`communicating and wherein said step of communicating includes transmitting an identifier of
`
`said subscriber station to said second remote station.
`
`43.
`
`The method of claim :2, 33, wherein said step of EletermiHiHg comparing results in
`
`a determination that said subscriber station may have been tampered with and said subscriber
`
`station performs both of said steps of disabling and communicating.
`
`44.
`
`The method of claim :2, 33, wherein said step of performing includes said step of
`
`enabling and wherein said step of enabling includes controlling a decryptor.
`
`45.
`
`A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting presence of an instruct-to-enable signal;
`
`passing said instruct-to-enable signal to a processor;
`
`determining a fashion in which said receiver station locates a first decryption key by
`
`processing said instruct-to-enable signal;
`
`locating said first decryption key based on said step of determining;
`
`decrypting said encrypted information using said first decryption key; and
`
`outputting said programming based on said step of decrypting.
`
`46.
`
`The method of claim~ 45, further comprising the step of computing a second
`
`decryption key, and wherein said step of decrypting comprises decrypting said encrypted
`
`information using said first and second decryption keys.
`
`4 7.
`
`The method of claim ~ 46, wherein said first and second decryption keys are
`
`used to decrypt a video portion of said programming.
`
`14
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`APPLE EX. 1035
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`48.
`
`The method of claim~ 45, further comprising the step of storing information
`
`evidencing said step of decrypting.
`
`49.
`
`The method of claim~ 45, further comprising the step of determining if said
`
`receiver station is decrypting said encrypted information correctly, and if not, communicating
`
`appearance-of-tampering information to a remote station.
`
`50.
`
`The method of claim~ 45, wherein said encrypted information includes
`
`television programming.
`
`51.
`
`The method of claim :24 4 7, wherein a third decryption key is used to decrypt an
`
`audio portion of said programming, and said first decryption key is located based on decrypting
`
`said audio portion using said third decryption key.
`
`52.
`
`A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting the presence of a first instruct-to-enable signal including first processor
`
`instructions;
`
`executing said first processor instructions of said first instruct-to-enable signal to provide
`
`a first decryption key;
`
`detecting the presence of a second instruct-to-enable signal including second processor
`
`instructions;
`
`executing said second processor instructions to provide a second decryption key;
`
`decrypting said encrypted information using said first and second decryption keys; and
`
`outputting said programming based on said step of decrypting.
`
`53.
`
`The method as in claim~ 52, further comprising the step of storing information
`
`evidencing said step of decrypting.
`
`15
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`APPLE EX. 1035
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`54.
`
`The method as in claim -3-& 52, further comprising the step of determining if said
`
`receiver station is decrypting said encrypted information correctly, and if not, communicating
`
`appearance-of-tampering information to a remote station.
`
`55.
`
`The method of claim -3-& 52, wherein said first and second decryption keys are
`
`used to decrypt a video portion of said programming.
`
`56.
`
`The method of claim -3-& 52, wherein said encrypted information includes
`
`television programming.
`
`57.
`
`The method of claim 4-l- 55, wherein a third decryption key is used to decrypt an
`
`audio portion of said programming, and said first decryption key is provided based on decrypting
`
`said audio portion using said third decryption key
`
`58.
`
`A method of decrypting programming at a receiver station, said method
`
`comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting the presence of an instruct-to-enable signal;
`
`passing said instruct-to-enable signal to a processor;
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`automatically tuning said receiver station to a channel designated by said instruct-to(cid:173)
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`enable signal;
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`receiving enabling information based on said step of tuning;
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`decrypting said encrypted information by processing said enabling information; and
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`outputting said programming based on said step of decrypting.
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`59.
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`The method of claim 4§. 58, further comprising the step of storing information
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`evidencing said step of decrypting.
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`60.
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`The method of claim 4§. 58, further comprising the step of determining if said
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`receiver station is decrypting said encrypted information correctly, and if not, communicating
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`appearance-of-tampering to a remote station.
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`61.
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`The method of claim 4§. 58, wherein said enabling information is received in an
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`audio portion of said programming.
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`62.
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`The method of claim 4§. 58, wherein said encrypted information includes
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`television programming.
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`63.
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`The method of claim 4& 61, wherein said step of decrypting comprises decrypting
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`a video portion of said programming.
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`Page 17