IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`
`
`U.S. Patent No. 8,191,091
`
`Filed: June 7, 1995
`
`Issued: May 29, 2012
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`Inventor(s): John Christopher Harvey, James
`William Cuddihy
`
`Assignee: Personalized Media Communications
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`
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`
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`
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`
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`Title: Signal Processing Apparatus and Methods Panel: To Be Assigned
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,191,091
`UNDER 35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`
`
`
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`
`
`U.S. Patent No. 8,191,091
`
`Filed: June 7, 1995
`
`Issued: May 29, 2012
`
`Inventor(s): John Christopher Harvey, James
`William Cuddihy
`
`Assignee: Personalized Media Communications
`
`
`
`
`
`
`
`
`
`
`
`Title: Signal Processing Apparatus and Methods Panel: To Be Assigned
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,191,091
`UNDER 35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`IDENTIFICATION OF CHALLENGE – 37 C.F.R. § 42.104(b) ................... 2
`
`A.
`
`B.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested ............... 2
`
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based ............................................ 2
`
`C.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction ......................................... 3
`
`(1)
`
`(2)
`
`(3)
`
`“decrypting” (all Challenged Claims) ......................................... 3
`
`“an encrypted digital information transmission including
`encrypted information” (claims 13-16, 18, 20-21, 23-24) .......... 5
`
`“processor” (claims 13-16, 18, 26-27, and 30) and
`“processor instructions” (claims 20-21 and 23-24) .................... 7
`
`D.
`
`E.
`
`37 C.F.R. § 42.104(b)(4): How the Claims are Unpatentable .................. 8
`
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge ...................... 8
`
`II.
`
`THERE IS A REASONABLE LIKELIHOOD THAT THE CLAIMS
`OF THE ’091 PATENT ARE UNPATENTABLE ......................................... 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`Summary of the Prosecution History of the ’091 Patent ........................... 9
`
`Description of the Alleged Invention of the ’091 Patent ........................ 12
`
`Summary of Grounds of Unpatentability ................................................ 13
`
`Claim-By-Claim Explanation of Grounds of Unpatentability ................ 16
`
`Ground 1: Gilhousen Anticipates Claims 13-15, 18, 20, 23, and 24 ........ 16
`
`(1) Claim 13 Is Anticipated By Gilhousen ..................................... 16
`
`(2) Claims 14-15 and 18 Are Anticipated By Gilhousen ............... 22
`
`(3) Claim 20 Is Anticipated By Gilhousen ..................................... 24
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`(4) Claims 23 and 24 Are Anticipated By Gilhousen .................... 29
`
`
`
`i
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`
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`Ground 2: Gilhousen In View Of Block Renders Claims 16 and 21
`Obvious ................................................................................... 29
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`Ground 3: Mason Anticipates Claims 13-15, 18, 20, 23, and 24 ............. 31
`
`(1) Claim 13 Is Anticipated By Mason ........................................... 31
`
`(2) Claims 14-15 and 18 Are Anticipated By Mason ..................... 37
`
`(3) Claim 20 Is Anticipated By Mason ........................................... 40
`
`(4) Claims 23 and 24 Are Anticipated By Mason .......................... 43
`
`Ground 4: Mason In View Of Block Renders Claims 16 and 21 Obvious44
`
`Ground 5: Frezza Anticipates Claims 26 and 30 ...................................... 45
`
`(1) Claim 26 Is Anticipated by Frezza ........................................... 45
`
`(2) Claim 30 Is Anticipated by Frezza ........................................... 49
`
`Ground 6: Frezza In View Of Block Renders Claim 27 Obvious ............ 49
`
`Ground 7: Kelly Renders Claims 26 and 30 Obvious .............................. 51
`
`(1) Claim 26 Is Rendered Obvious By Kelly ................................. 51
`
`(2) Claim 30 Is Rendered Obvious By Kelly ................................. 56
`
`Ground 8: Kelly In View Of Block Renders Claim 27 Obvious .............. 57
`
`III. MANDATORY NOTICES – 37 C.F.R. § 42.8(A)(1) AND (B) .................. 58
`
`A.
`
`B.
`
`C.
`
`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest ........................................ 58
`
`37 C.F.R. § 42.8(b)(2): Related Matters ................................................. 58
`
`37 C.F.R. § 42.8(b)(3) and (4): Lead and Back-Up Counsel and
`Service Information ................................................................................. 59
`
`D.
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`37 C.F.R. § 42.8(b)(4): Service Information ........................................... 60
`
`IV. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 60
`
`V. GROUNDS FOR STANDING – 37 C.F.R. § 42.104(a) .............................. 60
`
`
`
`ii
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`Apple Inc. (“Apple”) requests inter partes review (“IPR”) of Claims 13-16,
`
`18, 20-21, 23-24, 26-27, and 30 (“the Challenged Claims”) of U.S. Patent
`
`No. 8,191,091 (“the ’091 patent”) (Ex. 1003).
`
`In 1981, the named inventors of the ’091 patent filed U.S. Patent Appl.
`
`No. 06/317,510, which issued as U.S. Patent No. 4,694,490 (“the ’490 patent”) to
`
`Personalized Media Communications, LLC (“PMC”). Ex. 1009 at 1. In 1987,
`
`PMC filed a continuation-in-part of that application, U.S. Patent Appl. No.
`
`07/096,096, which discarded the original 22-column specification filed in 1981 and
`
`substituted a new specification that spanned over 300 columns. Ex. 1003 at 1. In
`
`the months leading up to June 8, 1995, PMC filed 328 virtually identical
`
`continuations from that 1987 application, with an estimated 10,000 to 20,000
`
`claims. Ex. 1010; Ex. 1033 at 2 (stating applicants had “hundred[s] of
`
`applications, containing over ten thousand claims”). The ’091 patent is just one of
`
`the patents that issued from that flurry of activity.
`
`During prosecution of the ’091 patent, PMC deluged the Examiner with
`
`references. Ex. 1031 at 11; Ex. 1003 at 1-33. While the Examiner may have
`
`performed to his “best ability,” he recognized that his review was limited “[i]n
`
`view of the unusually large number of references” and “the time and resources
`
`available.” Ex. 1031 at 11.
`
`1
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`I.
`
`IDENTIFICATION OF CHALLENGE – 37 C.F.R. § 42.104(B)
`
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested
`
`Apple requests IPR of the Challenged Claims of the ’091 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Ground(s)
`on Which the Challenge Is Based
`IPR of the Challenged Claims is requested in view of the prior art listed
`
`below. In the district court, PMC has asserted the Challenged Claims are entitled
`
`to a September 11, 1987 priority date. Ex. 1019 at 6. For purposes of this IPR
`
`only, Apple assumes the September 11, 1987 priority date.
`
`• U.S. Patent No. 4,613,901 to Klein Gilhousen et al. (“Gilhousen”) (Ex. 1004),
`filed May 27, 1983 and issued September 23, 1986. Gilhousen is prior art
`under 35 U.S.C. § 102(a).1
`• U.S. Patent No. 4,736,422 to Arthur Mason (“Mason”) (Ex. 1005), filed July 2,
`1984 and issued April 5, 1988. Mason is prior art under 35 U.S.C. § 102(e).
`• U.S. Patent No. 4,712,239 to William Frezza et al. (“Frezza”) (Ex. 1006), filed
`June 16, 1986 and issued December 8, 1987. Frezza is prior art under 35
`U.S.C. § 102(e).
`• U.S. Patent No. 4,503,462 to Gordon Kelly et al. (“Kelly”) (Ex. 1007), filed
`October 16, 1981 and issued March 5, 1985. Kelly is prior art under 35 U.S.C.
`§ 102(b).
`• U.S. Patent No. 4,484,217 to Robert Block et al. (“Block”) (Ex. 1008), filed
`May 11, 1982 and issued November 20, 1984. Block is prior art under 35
`U.S.C. § 102(b).
`
`
`1 Cites to 35 U.S.C. §§ 102 and 103 are to the pre-AIA version applicable here.
`
`2
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`Apple requests IPR of the Challenged Claims on the following grounds:
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`
`
`C.
`
`Proposed Statutory Rejections for the ’091 Patent
`Gilhousen anticipates Claims 13, 14, 15, 18, 20, 23 and 24 under
`35 U.S.C. § 102.
`Gilhousen, in view of Block, renders obvious Claims 16 and 21 under
`35 U.S.C. § 103.
`Mason anticipates Claims 13, 14, 15, 18, 20, 23 and 24 under
`35 U.S.C. § 102.
`Mason, in view of Block, renders obvious Claims 16 and 21 under
`35 U.S.C. § 103.
`Frezza anticipates Claims 26 and 30 under 35 U.S.C. § 102.
`
`Frezza, in view of Block, renders obvious Claim 27 under
`35 U.S.C. § 103.
`
`Kelly renders obvious Claims 26 and 30 under 35 U.S.C. § 103.
`
`Kelly, in view of Block, renders obvious Claim 27 under
`35 U.S.C. § 103.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`A claim in an IPR is given its broadest reasonable interpretation (“BRI”) in
`
`light of the specification. 37 C.F.R. § 42.100(b).
`
`“decrypting” (all Challenged Claims)
`
`(1)
`Each Challenged Claim recites a method of decrypting programming
`
`including a step of decrypting encrypted information. Apple submits, for purposes
`
`3
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`of this IPR only, that limiting “decrypting” to digital data only and excluding
`
`“descrambling” from its scope (as PMC has previously argued) is not the “broadest
`
`reasonable interpretation” of the term in light of the ’091 patent specification.
`
`In IPR proceedings addressing related PMC patents with overlapping claim
`
`terms, the Board properly rejected PMC’s attempts to limit “decrypting” to digital
`
`data and to exclude descrambling. Ex. 1011 at 7-11 (“[W]e find the broadest
`
`reasonable construction of ‘decryption,’ for purposes of this decision, to
`
`encompass analog descrambling.”); Ex. 1013 at 25-26 (“We fail to find a
`
`significant
`
`distinction
`
`between
`
`encryption/decryption
`
`and
`
`scrambling/unscrambling.”); see also Ex. 1012 at 2-5 (denying rehearing on
`
`“decrypting” construction); Ex. 1014 at 2-4 (same). As the Board recognized, the
`
`express statement in the specification of those patents (shared by the ’091 patent)
`
`that “decryptors … may be conventional descramblers, well, known in the art, that
`
`descramble analog television transmissions” undermines PMC’s argument by
`
`equating decryption and descrambling. Ex. 1013 at 25-26; Ex. 1003 at 159:46-61.
`
`PMC based part of its argument in those IPR proceedings on an alleged
`
`prosecution history disclaimer, which it argued had been relied upon by other
`
`panels to limit “decrypting.” Ex. 1012 at 2; Ex. 1014 at 2. The Board also rejected
`
`that argument, finding that “the prior decisions of other panels of the Board appear
`
`to have relied upon characterizations of the invention and the specification,” not
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`prosecution history disclaimer. Ex. 1012 at 3; Ex. 1014 at 3. The Board also noted
`
`that those other panels did not rely on the disclosure in the specification that
`
`specifically states that “decryptors … may be conventional descramblers,” citing to
`
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Ex. 1014
`
`at 3; Ex. 1003 at 159:46-61; see also Ex. 1012 at 2-4.
`
`The same district court in which PMC has sued Apple also previously
`
`rejected PMC’s argument that decrypting excludes descrambling. Ex. 1017 at 29
`
`(“The court rejects PMC’s attempt to limit the encrypt/decrypt terms to digital
`
`data.”). And a person having ordinary skill in the art (“PHOSITA”) would have
`
`understood “decrypt” and “descramble” as interchangeable terms that would apply
`
`to both analog and digital data. Ex. 1001 ¶¶ 62-65.
`
`(2)
`
`“an encrypted digital information transmission including
`encrypted information” (claims 13-16, 18, 20-21, 23-24)
`
`Apple submits, for purposes of this IPR only, that the BRI of “an encrypted
`
`digital
`
`information
`
`transmission
`
`including encrypted
`
`information”
`
`is “an
`
`information transmission that is partially or entirely digital, at least a portion of
`
`which is encrypted.” This construction is consistent with the plain meaning of the
`
`phrase, in the context of the ’091 patent, and is supported by the evidence.
`
`The plain language of the phrase “encrypted digital information transmission
`
`including encrypted information” is not exclusionary or limiting. While the
`
`transmission must include at least some information that is digital and some
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`information that is encrypted in order to be an “encrypted digital information
`
`transmission,” the plain language of the claim does not require that the
`
`transmission be of only encrypted digital information.
`
`Indeed, by stating that it is “an encrypted digital information transmission
`
`including encrypted information,” the plain language of the phrase makes clear
`
`that the “encrypted digital information transmission” may include information that
`
`is not encrypted or digital. “Different claim terms are presumed to have different
`
`meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BenQ Am. Corp., 533 F.3d
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`1362, 1371 (Fed. Cir. 2008). Claims must also be interpreted to give effect to all
`
`claim limitations. Becton, Dickinson & Co. v. Tyco Healthcare Group, L.P., 616
`
`F.3d 1249, 1257 (Fed. Cir. 2010). Under these claim construction canons, the
`
`“encrypted
`
`information”
`
`included
`
`in
`
`the “encrypted digital
`
`information
`
`transmission” must have some meaning, and be distinct from, the encrypted digital
`
`information of the transmission. If all information in the transmission were
`
`required to be encrypted and digital, this phrase would have no purpose.
`
`This non-limiting construction of the phrase is consistent with the disclosure
`
`of the ’490 patent, of which the ’091 patent is a continuation-in-part. The ’490
`
`patent explains that “Encrypted transmissions may be only partially encrypted. For
`
`example, only the video portion of the transmission may be encrypted. The audio
`
`portion may remain unencrypted.” Ex. 1009 at 14:1-4. By similar logic, a
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`“digital” transmission may be only partially digital. See id. When the patentee
`
`wanted to specify that “an encrypted digital information transmission” included
`
`only digital information (in a related patent having the same specification as the
`
`’091 patent), it added language expressly excluding non-digital information from
`
`the transmission in certain claims. See, e.g., Ex. 1041 at Claim 18. Because the
`
`patentee did not provide any limiting or exclusionary language in the Challenged
`
`Claims, “an encrypted digital information transmission including encrypted data”
`
`is not limited to transmitting only encrypted, only digital, or only encrypted digital
`
`information.
`
`(3)
`“processor” (claims 13-16, 18, 26-27, and 30) and “processor
`instructions” (claims 20-21 and 23-24)
`
`Apple submits, for purposes of this IPR only, that the BRI of “processor” is
`
`“a device that operates on data” and the BRI of “processor instructions” is
`
`“instructions to a device that operates on data.” These constructions are consistent
`
`with the plain meaning of the terms, in the context of the ’091 patent, and are
`
`supported by intrinsic evidence.
`
`Nothing in the claims limits the functionality of the “processor.” See Ex.
`
`1003 at Claims 13 and 26. The term “processor” appears throughout the
`
`specification, but the specification does not define or limit the functionality of the
`
`processor. Rather, the specification describes a variety of processors, including
`
`hardwired devices that process data. See, e.g., Ex. 1003 at 134:27-31 (decoders 30
`
`7
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`and 40 process information), 75:21-27 (buffer/comparator 8 processes).
`
`In an IPR proceeding addressing a related PMC patent, the Board properly
`
`ruled that a “processor” is “a device that operates on data.” Ex. 1013 at 7-8. And
`
`the district court in which PMC has sued Apple previously construed “processor,”
`
`as it appears in a related patent having the same specification as the ’091 patent, as
`
`“any device capable of performing operations on data.” Ex. 1018 at 7-8. Even
`
`PMC proposed construing “processor” as “any device capable of performing
`
`operations on data” in the Amazon district court litigation, for a related patent
`
`having the same specification. Ex. 1016 at 12.
`
`Nor does anything in the claims limit what it means to be “processor
`
`instructions.” Ex. 1003 at Claim 20. The phrase “processor instructions” does not
`
`appear in the specification. The plain meaning of “processor instructions” is
`
`“instructions to a processor [a device that operates on data].”
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How the Claims are Unpatentable
`
`How the Challenged Claims are unpatentable is detailed in Section II.D.
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge
`
`An Appendix of Exhibits is attached. Relevance of the evidence, including
`
`identifying the specific portions of the evidence that support the challenge, may be
`
`found in Section II.D. Apple submits a declaration of Anthony J. Wechselberger
`
`in support of this petition in accordance with 37 C.F.R. § 1.68 (Ex. 1001).
`
`8
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`II. THERE IS A REASONABLE LIKELIHOOD THAT THE CLAIMS
`OF THE ’091 PATENT ARE UNPATENTABLE
`
`A.
`
`Summary of the Prosecution History of the ’091 Patent
`
`U.S. Patent Appl. No. 08/485,507 (“the ’507 application”), which led to the
`
`’091 patent, was filed on June 7, 1995. Ex. 1003 at 1. The ’091 patent did not
`
`issue until May 29, 2012. Ex. 1003 at 1.
`
`Although the ’507 application was filed on June 7, 1995, prosecution did not
`
`begin in earnest until April 11, 2011. In a May 9, 2000 amendment, the applicants
`
`canceled all but one pending claim “[i]n consonance with the agreement between
`
`Applicants and the Office regarding the co-pending U.S. patent applications related
`
`to this application,” and requested that prosecution of the ’507 application “be held
`
`in abeyance.” Ex. 1032 at 3. The applicants’ request was originally rejected
`
`because applicants failed to “review their hundred[] of applications, containing
`
`over ten thousand claims” to eliminate any conflicting claims or to certify that
`
`there are no conflicting claims, as the Examiner had requested in an Office Action
`
`on July 7, 1998. Ex. 1033 at 2; Ex. 1031 at 4-10. The applicants’ request was
`
`ultimately granted, however. Ex. 1034 at 1.
`
`On April 11, 2011, prosecution resumed when the applicants submitted a
`
`supplemental amendment cancelling the one pending claim and adding claims 33-
`
`63 (which, amended, correspond to issued claims 1-31 of the ’091 patent). Ex.
`
`1035 at 5-9. The applicants asserted that the new claims “involve[] the use of
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`digital signals through reference to ‘decryption’ and ‘encryption.’” Ex. 1035 at 10.
`
`According to the applicants, this feature distinguished the new claims from the
`
`prior art (including Gilhousen and Mason). Ex. 1035 at 10-11.
`
`On August 2, 2011, the Examiner issued a final rejection. Among the
`
`grounds
`
`for
`
`rejection,
`
`the Examiner
`
`rejected claims 45-50 and 52-56
`
`(corresponding to claims 13-18 and 20-24 in the ’091 patent) as anticipated by
`
`Mason. Ex. 1036 at 14. For claims 45 and 46, the Examiner identified the
`
`distribution key D in Mason as corresponding to both the “instruct-to-enable
`
`signal” and the “second decryption key,” while identifying period key P as the
`
`“first decryption key” and session key S as “encrypted information.” Ex. 1036 at
`
`14-15. For claim 52, the Examiner identified distribution key D as corresponding
`
`to the “first instruct-to-enable signal, first decryption key,” period key P as
`
`corresponding to “second instruct-to-enable signal, second decryption key,” and
`
`session key S as “encrypted information.” Ex. 1036 at 16. The Examiner found
`
`that “Mason does teach the encryption and decryption of digital signals,” rejecting
`
`applicants’ argument that Mason was limited to analog signals. Ex. 1036 at 21-22.
`
`The applicants filed an amendment on October 3, 2011. Ex. 1037. The
`
`applicants continued to argue that Mason “does not contemplate digital
`
`transmissions.” Ex. 1037 at 11. In the alternative, applicants argued that Mason
`
`did not anticipate the claims because the “instruct-to-enable” signal in Mason
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`identified by the Examiner, distribution key D, is not transmitted with the
`
`information transmission, and thus could not be detected in that transmission as
`
`required by amended claims 45 and 52. Ex. 1037 at 11, 13. The applicants further
`
`argued that because distribution key D was not transmitted, it could not be a
`
`second decryption key. Ex. 1037 at 12.
`
`The Examiner continued to reject applicants’ argument that Mason was
`
`limited to analog transmissions in an Advisory Action. Ex. 1038 at 3. In response,
`
`the applicants further amended claims 45 and 52 on December 21, 2011, adding
`
`that the “information transmission” of the claims was an “encrypted digital
`
`information transmission.” Ex. 1039 at 4-5. The applicants argued that Mason did
`
`not teach this amended limitation, and also repeated their argument that
`
`distribution key D of Mason could not be the instruct-to-enable signal of the
`
`claims. Ex. 1039 at 11, 13.
`
`The Examiner issued a Notice of Allowance on March 19, 2012. Ex. 1040.
`
`The Examiner agreed with applicants that Mason failed “to teach or suggest
`
`‘detecting in said encrypted digital information transmission the presence of an
`
`instruct-to-enable signal’ and ‘determining a fashion in which said receiver locates
`
`a first decryption key by processing said instruct-to-enable signal’ in combination
`
`with the other limitations” of the claims. Ex. 1040 at 7-8.
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
`
`B. Description of the Alleged Invention of the ’091 Patent
`The ’091 patent is titled “Signal Processing Apparatus and Methods.” Ex.
`
`1003 at 1. The Challenged Claims are all directed to “[a] method of decrypting
`
`programming at a receiver station,” including the steps of “receiving an []
`
`information transmission including encrypted information” and “detecting” “an
`
`instruct-to-enable signal.” Ex. 1003 at claims 13, 20 and 26.
`
`In Claim 13, there is a single “instruct-to-enable signal,” which is processed
`
`to “determin[e] a fashion in which said receiver station locates a first decryption
`
`key,” and the first decryption key is located “based on said step of determining.”
`
`Ex. 1003 at Claim 13. In Claim 20, the transmission includes both a first and a
`
`second “instruct-to-enable signal,” which include first and second “processor
`
`instructions.” Ex. 1003 at Claim 20. Those processing instructions are executed to
`
`provide a first and second decryption key. Claims 13 and 20 both include the steps
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`of “decrypting said encrypted information” using the decryption key(s) provided in
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`earlier steps of the method, and “outputting said programming based on said step
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`of decrypting.” Ex. 1003 at Claims 13 and 20.
`
`In Claim 26, the the receiver station is “automatically tun[ed]” “to a channel
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`designated by said instruct-to-enable signal,” and “enabling information from a
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`remote source” is received “based upon said step of tuning.” Ex. 1003 at Claim
`
`26. The encrypted information is decrypted “by processing said enabling
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`information,” and “said programming” is output “based on said step of
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`decrypting.” Ex. 1003 at Claim 26.
`
`C.
`
`Summary of Grounds of Unpatentability
`
`Ground 1: Gilhousen discloses a system and method for scrambling and
`
`selectively descrambling television signals in a subscription television system.
`
`Gilhousen teaches that a control computer at a transmitter sends an encrypted
`
`digital information transmission, including scrambled video and audio television
`
`signals and control information, to a subscriber station. The initialization vector
`
`(“IV”) frame count and subscriber key generation number included in that
`
`transmission are “instruct-to-enable” signals that are processed by the subscriber
`
`station to locate the decryption keys. The subscriber station decrypts the video and
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`audio signals using the decryption keys and outputs the decrypted television
`
`programming.
`
`Ground 2: While Gilhousen does not expressly disclose storing information
`
`evidencing decrypting, a PHOSITA would have recognized the benefit of doing so,
`
`and would have modified Gilhousen to use the teaching in Block of storing a use
`
`code evidencing the descrambling of a television program.
`
`Ground 3: Mason discloses a system for encrypting and decrypting
`
`television signals. Mason discloses that a transmitter sends an encrypted digital
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`information transmission, including a scrambled television signal and encrypted
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`signals P(Ts+S+P) and D(Tc+P), to a receiver. Encrypted signals P(Ts+S+P) and
`
`D(Tc+P) are “instruct-to-enable signals” that are processed at the receiver to locate
`
`the decryption keys. The receiver decrypts the television signal using the
`
`decryption keys and outputs the decrypted television video signal.
`
`Ground 4: While Mason does not expressly disclose storing information
`
`evidencing decrypting, a PHOSITA would have recognized the benefit of doing so,
`
`and would have modified Mason to use the teaching in Block of storing a use code
`
`evidencing the descrambling of a television program.
`
`Ground 5: Frezza discloses a system and method for preventing
`
`unauthorized users from viewing scrambled television programming received by a
`
`subscriber station. When a converter at the subscriber station is powered on, it
`
`detects the presence of an initialization program, which instructs a receiver to
`
`automatically tune to the channel on which a booter image is transmitted. The
`
`subscriber station receives the booter image from a remote cable headend and uses
`
`the image to calculate a booter checksum. Frezza teaches comparing the calculated
`
`booter checksum with the security checksum transmitted with a scrambled
`
`television signal. If the two checksums match, the subscriber station descrambles
`
`the programming and makes it available for viewing.
`
`Ground 6: While Frezza does not expressly disclose storing information
`
`evidencing decrypting, a PHOSITA would have recognized the benefit of doing so,
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`and would have modified Frezza to use the teaching in Block of storing a use code
`
`evidencing the descrambling of a television program.
`
`Ground 7: Kelly discloses a system for automatically tuning a subscription
`
`television signal decoder to a subscription television channel to receive current
`
`subscriber authorization data, which allows scrambled television signals to be
`
`descrambled and viewed. Kelly teaches that an ON/OFF mode selection signal is
`
`detected, passed to a processor, and if in the “OFF” mode, a receiver is
`
`automatically tuned to a homing mode which locates a subscription television
`
`channel. Subscriber authorization data is received over that subscription television
`
`channel, and that data is used to authorize the subscriber station to descramble
`
`scrambled subscription television and output it to a television receiver.
`
`Ground 8: While Kelly does not expressly disclose storing information
`
`evidencing decrypting, a PHOSITA would have recognized the benefit of doing so,
`
`and would have modified Kelly to use the teaching in Block of storing a use code
`
`evidencing the descrambling of a television program.
`
`Each Ground is distinct. While each of Gilhousen, Mason, Frezza and Kelly
`
`relate to security in subscription television systems, such as cable television
`
`systems, the manner in which they secure a subscription television signal and
`
`control its decryption varies. Ex. 1001 ¶¶ 97-107.
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`D. Claim-By-Claim Explanation of Grounds of Unpatentability
`Apple provides a detailed discussion of the grounds on which each of the
`
`Challenged Claims is anticipated or rendered obvious by the prior art cited above.
`
`Ground 1: Gilhousen Anticipates Claims 13-15, 18, 20, 23, and 24
`Gilhousen teaches every element of Claims 13-15, 18, 20, 23, and 24.
`
`(1) Claim 13 Is Anticipated By Gilhousen
`a.
`Claim 13, preamble: “a method of decrypting programming at
`a receiver station”
`
`Gilhousen teaches a method of decrypting programming at a receiver station.
`
`Ex. 1001 ¶¶ 112-116. Gilhousen discloses a receiver station that includes
`
`descrambler signal processor 150 and receives broadcast information. Ex. 1004 at
`
`12:10-18, Fig. 5; Ex. 1001 ¶ 112. “The descrambler signal processor 150
`
`descrambles the scrambled television signal on line 152 in accordance with the
`
`unique keystream received on line 159 to provide a descrambled video signal on
`
`line 160.” Ex. 1004 at 12:36-40; see also id. at 22:24-28. As explained above at
`
`Section I.C(1), “decrypt” as used in the ’091 patent encompasses descrambling
`
`analog data.
`
`Even if “decrypting” were limited to digital data, however, Gilhousen still
`
`teaches a method of decrypting because it discloses the scrambling and
`
`unscrambling of digital video and audio components of a television signal. Ex.
`
`¶¶ 114-116. Gilhousen’s amplified video signal 63 is converted “into a digital
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`video information signal on line 65” by A/D (analog/digital) converter 52. Ex.
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`1004 at Fig. 3, 6:46-50. That digital video information signal is then scrambled to
`
`form “scrambled video information line on line 66.” Ex. 1004 at 6:62-7:6. The
`
`scrambled digital video information “is converted to an analog signal by the D/A
`
`converter 62 to provide a scrambled TV signal” to be transmitted to a receiver
`
`station. Ex. 1004 at 8:2-4. On the receiver end, “A/D converter 205 converts the
`
`scrambled television signal on line 215 into a digital video information signal on
`
`line 230.” Ex. 1004 at 16:26-29. This digital video information signal is
`
`descrambled to form “descrambled video information lines on line 231.” Ex. 1004
`
`at 16:33-64. The descrambled digital video information signal is then “converted
`
`to an analog signal by the D/A converter 213 to provide a descrambled video
`
`signal on line 160.” Ex. 1004 at 17:42-46. The audio component of the television
`
`signal is also digitized before it is scrambled and transmitted to the receiver. Ex.
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`1004 at 8:46-50, 11:66-12:2; Ex. 1001 ¶ 116.
`
`b.
`
`Claim 13, element [a]: “receiving an encrypted digital
`information transmission including encrypted information”
`
`Gilhousen teaches receiving an encrypted digital information transmission
`
`(i.e., scrambled television signal 152) including encrypted information (i.e.,
`
`scrambled digital video signal). Ex. 1001 ¶¶ 117-120. Gilhousen discloses the
`
`“descrambler signal processor 150” at the receiver station “receives the scrambled
`
`television signal on line 152.” Ex. 1004 at 12:13-18. The scrambled television
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`Petition for Inter Partes Review of U.S. Patent No. 8,191,091
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`signal on line 152 is “an encrypted digital information transmission that includes
`
`encrypted information” because it is an information transmission that is at least
`
`partially digital and a portion of the transmission is encrypted.
`
`Gilhousen discloses that the scrambled television signal on line 152 includes
`
`control signals including “the IV frame count signal on line 153, the encrypted
`
`channel key signal on line 154, the category address signal on line 155, the
`
`encrypted category key signals on line 156, the subscriber key generation number
`
`on line 157 and various process control signals on line 158 that are related to the
`
`operation of the descrambler key distribution system 151.” Ex. 1004 at 12:17-35.
`
`The control signals are digital information that are transmitted as part of scrambled
`
`television signal 152. Ex. 1004 at 5:36-55, 11:52-65, 15:50-16:4; Ex. 1001 ¶¶ 117-
`
`118. Of these digital control signals, the channel key and category key are
`
`encrypted. Ex. 1004 at 5:36-55. Scrambled television signal 152 also includes
`
`encrypted information, because it includes the scrambled video and audio
`
`
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