Case 2:15-cv-01366-JRG-RSP Document 42 Filed 12/14/15 Page 1 of 3 PageID #: 1640
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC,
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`Plaintiff,
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`vs.
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`APPLE, INC.,
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`Defendant.
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`Case No. 2:15-cv-D1366-JRG-RSP
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`JOINT NOTICE IN COMPLIANCE WITH STANDING ORDER
` REGARDING MOTONS UNDER 35 U.S.C. § 101
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`Pursuant to the Court’s Standing Order Regarding Motions Under 35 U.S.C. § 101,
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`Plaintiff Personalized Media Communications, LLC (“PMC”) and Defendant Apple Inc.
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`(“Apple”) submit the attached letter as Ex. A outlining the parties’ respective positions.
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`Dated: December 14, 2015
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`/s/ Douglas A. Kline
`Douglas A. Kline
`Lana S. Shiferman
`GOODWIN PROCTER, LLP
`Exchange Place
`Boston, MA 02109-2802
`P: (617) 570-1000
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`F: (617) 523-1231
`email: dkline@goodwinprocter.com
`email: lshiferman@goodwinprocter.com
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`Jennifer A. Albert
`Stephen T. Schreiner
`GOODWIN PROCTER LLP
`901 New York Ave., N.W.
`Washington, DC 20001
`P: (202) 346-4000
`F: (202) 346-4444
`email: jalbert@goodwinprocter.com
`email: sschreiner@goodwinprocter.com
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 1
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42 Filed 12/14/15 Page 2 of 3 PageID #: 1641
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`S. Calvin Capshaw (State Bar No. 03788390)
`Elizabeth L. DeRieux (State Bar No. 05770585)
`CAPSHAW DERIEUX, LLP
`114 E. Commerce Ave.
`Gladewater, TX 75647
`P: (903) 845-5770
`email: ccapshaw@capshawlaw.com
`email: ederieux@capshawlaw.com
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`Attorneys for Plaintiff
`Personalized Media Communications, LLC
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`/s/ Melissa R. Smith
`Marcus E. Sernel, P.C. (admitted pro hac vice)
`Joel R. Merkin (admitted pro hac vice)
`KIRKLAND & ELLIS LLP
`300 N. LaSalle Street
`Chicago, IL 60654
`P: (312) 862-2000
`F: (312) 862-2200
`email: marc.sernel@kirkland.com
`email: joel.merkin@kirkland.com
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`Gregory S. Arovas, P.C. (admitted pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`P: (212) 446-4800
`F: (212) 446-4900
`email: greg.arovas@kirkland.com
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`Melissa R. Smith (State Bar No. 24001351)
`GILLAM & SMITH LLP
`303 S. Washington Avenue
`Marshall, TX 75670
`P: (903) 934-8450
`F: (903) 934-9257
`email: Melissa@gillamsmithlaw.com
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`Attorneys for Defendant
`Apple Inc.
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`-2-
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 2
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`Case 2:15-cv-01366-JRG-RSP Document 42 Filed 12/14/15 Page 3 of 3 PageID #: 1642
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that the all counsel of record who are deemed to have consented to
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`electronic service are being served this 14th day of December, 2015, with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be
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`served by electronic mail, facsimile transmission and/or first class mail on this same date.
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`/s/Douglas A. Kline
`Douglas A. Kline
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`-3-
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 3
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 1 of 6 PageID #: 1643
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`Exhibit A
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 4
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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 2 of 6 PageID #: 1644
`December 14, 2015
`Page 1
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`December 14, 2015
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`VIA ECF
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`PMC: Claim Construction Is Necessary To Inform the Court’s § 101 Analysis
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`Personalized Media Communications, LLC v. Apple Inc.
`Case No. 2:15-cv-01366-JRG-RSP
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`The Honorable Rodney Gilstrap
`Sam B. Hall, Jr. Federal Building and
`United States Courthouse
`100 East Houston Street
`Marshall, Texas 75670
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`Re:
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`Dear Judge Gilstrap:
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`Plaintiff Personalized Media Communications, LLC and Defendant Apple Inc. submit this joint
`letter pursuant to the Court’s Standing Order Regarding Motions Under 35 U.S.C. § 101.
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`I.
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`PMC accuses Apple of infringing thirty-one claims from four PMC patents (U.S. Patents Nos.
`8,191,091, 8,559,635, 7,752,649, and 8,752,088). Apple has moved to dismiss PMC’s complaint
`arguing that PMC’s claims are drawn to unpatentable subject matter. Apple contends on that
`basis that PMC’s patents are invalid under 35 U.S.C. § 101. PMC respectfully submits that
`there are twenty-seven terms within the thirty-one asserted claims that require construction prior
`to resolution of Apple’s motion to dismiss.
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`Apple contends that the asserted claims of PMC’s ’091 and ’635 Patents “are directed to the
`abstract idea of converting information from one format to another (i.e., decrypting
`information).” D.I. 34 at 16-17. Apple’s definition of “decrypting” is unreasonably broad. The
`claimed inventions are directed to methods that are far more specific than merely “converting
`information from one format to another.” The inventions are directed to management of
`“decryption keys” and their distribution in a digital network to control access to, and
`“decryption” of, “encrypted” digital content delivered over the network. ’091 Pat., 1:25-28.
`Based on the dispute between the parties concerning the definition of “decrypting,” construction
`is needed of ’091 and ’635 Patent claim terms including “encrypted digital information
`transmission,” “decrypting,” “decryption key,” “to decrypt in a specific fashion on the basis of
`said code,” and “control signal,” among others.1
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`The layered signal decryption technology claimed the ’091 and ’635 Patents – which allows
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`1 Other terms that require construction for the ’635 and ’091 Patents are: instruct-to-enable
`signal, programming, processor instructions, tuning said receiver station to a channel, remote
`source, enabling information, encryption, remote transmitter station, unaccompanied by any non-
`digital information transmission and downloadable code. Other terms that require construction
`for the ’649 Patent claims are: stored function invoking data, digital television signals, control
`processor and digital video signals.
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 5
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 3 of 6 PageID #: 1645
`December 14, 2015
`Page 2
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`encrypted content to be transmitted along with encrypted digital control signals and requires
`decryption of the digital control signals first in order to unlock the encrypted content – was
`initially conceived to inhibit piracy of digital TV content delivered in cable, satellite and other
`networked systems. ’091 Pat., 2:45-48. At that time, the secure delivery of programming
`content along with related control signals to control or enable specific signal processing
`operations at remote receiver stations was a technological challenge particular to a distributed
`computing environment in networked systems.
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`The solutions developed to address key management and digital content delivery are technical,
`concrete, and rooted in the same emergent technology as the problem that inspired them and
`required new hardware implementations. They “include techniques whereby the pattern of the
`composition, timing and location of embedded signals may vary in such fashions that only
`receiving apparatuses that are preinformed regarding the patterns that obtain at any given time
`will be able to process the signals correctly.” ’091 Pat., 7:40-49. For example, in one
`embodiment, a signal processor 26 detects digital signals found in a television, radio and/or other
`transmission from remote content providers, decrypts encrypted digital signals, assembles
`detected digital signals into message units, and sends those messages to other devices, or stores
`them for later transmission to remote sites. The signal processor is capable of detecting digital
`signals that are varying in their location, timing and/or composition in the received digital
`transmission. ’635 Pat., 15:13-18:29. In embodiments described in the specification, a program
`is delivered as a digital television signal that includes digital “control signals” and digital
`“instruct-to-enable” signals such as “decryption keys” placed in the encrypted digital content
`transmission. ’635 Pat., 143:55-161:21, FIG. 4.
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`The claims of the ’649 Patent cover technological solutions that are considerably more specific
`than merely “the abstract idea of deciding which television program to display.” D.I. 34 at 2.
`They are directed to how to distribute digital television programming and control information so
`as to control the processing of the content at receiver stations. Terms that require construction to
`understand the scope of the claims include “message stream,” “control information,” “register
`memory,” and “cadence information.”
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`The ’649 Patent claims describe the transmission of “digital television signals” along with
`“message streams” or other “control information” that control the processing and output of
`digital television content to users. “In the present invention, particular signal processing
`apparatus (‘signal processor’) detect signals and, in accordance with instructions in the signals
`and preprogramming in the signal processor, decrypt and/or record and/or control station
`apparatus by means of the signals…” ’649 Pat., 8:35-39. “The scanners/switches, working in
`parallel or series or combinations, transfer the transmission to receiver/decoder/detectors that
`identify signals encoded in programming transmissions and convert the encoded signals to digital
`information; decryptors that may convert the received information, in part or in whole, to other
`digital information according to preset methods or patterns; and one or more processor/monitors
`and/or buffer comparators that organize and transfer the information stream.” Id., 8:47-5l;
`144:31-160:54 (describes how a “message stream” controls received states in a network). Like
`the claims of the ‘635 and ‘091 Patents, this patent is directed to a problem rooted in emergent
`technology in the area of digital video distribution in networked systems.
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`Claim 14 of the ’088 Patent is not merely directed to the abstract idea of “monitoring how
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 6
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 4 of 6 PageID #: 1646
`December 14, 2015
`Page 3
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`information is used.” D.I. 34 at 2. Rather, it is directed to how to process and route signals
`within a receiver station in a network, including monitoring how those signals are routed and
`used. ’088 Pat., 2:32-39. Terms that require construction to determine the scope of claim 14
`include “multimedia receiving apparatus,” “input ports,” “output ports,” and “multimedia
`signals.” The problem of monitoring signal usage is a particularly acute one in computer
`networks with distributed processing and receiver stations that may be located across the
`country. The specification discloses in detail how “multimedia receiving apparatuses” may be
`controlled in their routing of signals from a specific input port to specific output ports. See, e.g.,
`’088 Pat., FIG. 3A (switch 39A), FIG. 7 (switch 259; 16:55-63 (providing detailed description).
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`Thus, the claims of the patents-in-suit describe particular methods and apparatus that represent
`specific solutions to vexing technological problems. What the additional features include must
`be determined during claim construction. Further, the claims of the ’635 and ’088 Patents derive
`priority to November 1981, while the claims of the ’649 and ’091 Patents claim priority to
`September 1987. These dates are critical to both claim construction and the Section 101 analysis
`because the questions of the state of the art, the technological environment in which the claimed
`inventions operate, and the conventionality of the claimed technology must be viewed within the
`proper context. Here, without an opportunity to fully examine how a person of ordinary skill in
`the art would interpret the claims at the relevant points in time, and given the parties’
`disagreements, it would be improper to simply adopt Defendant’s characterization of the claims.
`See Advanced Marketing Sys., LLC v. CVS Pharmacy, Slip op., Case No. 6:15-cv-134 (E.D. Tex.
`Nov. 18, 2015). PMC requests that the Court defer decision on Defendant’s motion until the
`completion of claim construction pursuant to E.D. Tex. LPR 1-2.
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`II.
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`Apple’s Position
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`Apple respectfully submits that, contrary to PMC’s position, this Court need not engage
`in claim construction, let alone construction of 27 terms, to rule on the § 101 issues. The long
`history of litigation surrounding the family of PMC patents confirms that the § 101 issues are
`independent, and can be decided without resolution, of any claim construction questions.
`Moreover, as an independent basis of dismissal, Apple’s motion seeks to dismiss the ’635 and
`’091 patent counts brought by PMC based on collateral estoppel, i.e., issue preclusion. Dkt. 34
`at 1-16. No aspect of collateral estoppel depends on claim construction, and thus Apple
`respectfully submits that the Court fully consider its motion to dismiss without delay.
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`Other than its list of 27 terms, PMC has refused to provide any explanation to Apple as to
`why construction of these terms is necessary to evaluate § 101 issues. Apple has thus been
`forced to prepare its “response” without knowing the basis for PMC’s position, and Apple has
`difficulty conceiving what that basis might be. Indeed, PMC’s prior cases and conduct are
`inconsistent with its present position regarding the need for extensive claim construction. When
`PMC was previously faced with the same claim construction question earlier this year in
`Delaware – where seven related PMC patents were at issue, as opposed to four related PMC
`patents here – PMC identified just eight terms that allegedly required construction for the § 101
`analysis. See Dkt. 34-4 at 2-3 (Ex. 2 to Apple’s motion to dismiss) (PMC v. Amazon, No. 1:13-
`cv-1608-RGA, Dkt. 120 (D. Del. Mar. 20, 2015)). The Delaware court considered PMC’s
`position and determined the claims asserted against Amazon were patent-ineligible under § 101
`(including invalidating virtually identical claims to those asserted against Apple) without finding
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 7
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 5 of 6 PageID #: 1647
`December 14, 2015
`Page 4
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`it necessary to construe any terms. Likewise, in this case, as further explained below, construing
`the terms identified by PMC would have no conceivable impact on the § 101 analysis.
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`Tellingly, several terms identified by PMC have previously been construed by this court,
`and the analysis and constructions show that claim construction of these terms has no bearing on
`the § 101 issues. For example, this court previously construed “decrypt” as “decoding data using
`a key,” which does not present a § 101 issue. PMC v. Motorola et al., No. 2:08-cv-70, Dkt. 271
`at 49-54 (E.D. Tex. Sept. 30, 2011). Even PMC’s proposed construction in Delaware of
`“decrypting” for § 101 purposes, which asserted that decryption uses “mathematical operations”
`on data, is a prime example of an abstract concept that the Supreme Court and Federal Circuit
`have explained is not patent eligible in Alice and Digitech. Dkt. 34-4 at 2 (PMC v. Amazon, No.
`1:13-cv-1608-RGA, Dkt. 120). PMC’s own patent specification further confirms that decryption
`– under any construction – cannot provide an inventive concept under § 101, as PMC
`characterized decryptors as “standard,” “conventional,” and “well known in the art.” ’635
`patent, 16:40-45 (“Decryptor, 10, is a standard digital information decryptor, well known in the
`art”), 148:11-16 (“Decryptors, 107, 224 and 231, are conventional decryptors, well known in the
`art”). PMC’s list of 27 terms includes several other encryption/decryption-related terms (e.g.,
`“decryption key,” “encrypted/encryption,” “encrypted digital information transmission,” and “to
`decrypt in a specific fashion on the basis of said code”), all of which similarly would have no
`impact on the § 101 analysis.
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`Likewise, this court previously construed the term “programming,” and separately
`determined that “control signal” (both on PMC’s list) requires no construction. PMC v. Zynga,
`No. 2:12-cv-68-JRG-RSP, Dkt. 150 at 23, 26 (E.D. Tex. Aug. 28, 2013). Nothing about the
`constructions of these terms (or lack thereof) would impact the § 101 analysis. Indeed, this court
`has construed various terms closely related to terms on PMC’s list (e.g., “processor,” “instruct
`signals,” “remote data source,” “remote video source,” “remote station”), and in each instance
`the construction has no perceivable impact on the § 101 analysis. Id. at 14-29.
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`Several terms on PMC’s list relate to data items, such as various types of (i) “signals”
`(e.g., “instruct-to-enable signal,” “control signal,” “digital television signals,” “digital video
`signals,” “multimedia signals”), (ii) “information” (e.g., “enabling information,” “control
`information,” “cadence information”), and (iii) other data (e.g., “programming,” “processing
`instructions,” “downloadable code,” “message stream,” “stored function invoking data”). PMC
`further lists several generic components (e.g., “remote source,” “remote transmitter station,”
`“multimedia receiving apparatus,” “control processor,” “register memory,” “input ports,” “output
`port”). Regardless of the precise construction of these terms, to the extent they need to be
`construed at all, PMC has not shown how any of these constructions change the § 101 calculus.
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`Further undermining PMC’s position, several terms on PMC’s list are terms that were
`recited in PMC’s asserted claims in Delaware, yet when previously invited to identify terms that
`require construction for the § 101 analysis, PMC excluded these terms. For example, PMC did
`not previously identify the following terms now on its list: “processor instructions” (recited in
`asserted claim 9 of the ’587 patent in Delaware), “enabling information” (recited in asserted
`claim 22 of the ’304 patent in Delaware), “remote source” (recited in asserted claim 22 of the
`’304 patent and asserted claim 13 of the ’243 patent in Delaware), and “encrypted/encryption”
`(recited in asserted claims 1, 22, and 23 of the ’304 patent and asserted claims 18 and 49 of the
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 8
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-1 Filed 12/14/15 Page 6 of 6 PageID #: 1648
`December 14, 2015
`Page 5
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`’749 patent in Delaware). See PMC v. Amazon, No. 1:13-cv-1608-RGA, Dkt. 92. Similarly,
`slight variations of several terms now on PMC’s list were recited in the asserted claims in
`Delaware, but not previously raised by PMC as requiring construction, including “code” (recited
`in asserted claims 2 and 18 of the ’749 patent), “transmitter station” (recited in nine asserted
`claims in Delaware), “memory” (recited in 12 asserted claims in Delaware), and “processor”
`(recited in 10 asserted claims in Delaware). Id.
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`PMC’s attempt to use claim construction as a means for delaying ruling on the § 101
`issues in Apple’s motion to dismiss should be rejected. The circumstances of this case show that
`claim construction would not impact the § 101 analysis, and thus it is appropriate for the court to
`make a determination of patent eligibility at the pleading stage without delay. See, e.g., eDekka
`LLC v. 3Balls.com, Inc., No. 2:15-cv-541-JRG, Dkt. 100 at 4 (E.D. Tex. Sept. 21, 2015) (“In
`certain circumstances, claim construction is not a pre-requisite to a § 101 determination.”); Clear
`With Computers, LLC v. Altec Indus., Inc., No. 6:14-cv-79-JRG, Dkt. 59 at 6 (E.D. Tex. Mar. 3,
`2015) (noting the Court previously construed claims from patents in the same family numerous
`times). Apple’s independent collateral estoppel ground for dismissal further supports that claim
`construction is unnecessary at this stage.
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 9
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-2 Filed 12/14/15 Page 1 of 2 PageID #: 1649
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`Claim(s)
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`13, 20
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`13, 20, 26
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`13, 20, 26
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`13, 20, 26
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`13, 20
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`20
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`26
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`26
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`26
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`Claim(s)
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`1, 2, 21
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`1, 3, 32
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`3, 30
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`PMC’s LIST OF CLAIM TERMS REQUIRING CONSTRUCTION
`IN ADVANCE OF SECTION 101 MOTION
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`U.S. Patent No. 8,191,0911
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`encrypted digital information transmission
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`decrypting/decryption
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`instruct-to-enable signal
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`programming
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`decryption key
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`processor instructions
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`tuning said receiver station to a channel
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`enabling information
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`remote source
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`U.S. Patent No. 8,559,635
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`encrypted/encryption
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`control signal
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`remote transmitter station
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`18, 20, 32, 33
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`unaccompanied by any non-digital information transmission
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`18, 33
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`33
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`Claim(s)
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`39, 54
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`to decrypt in a specific fashion on the basis of said code
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`downloadable code
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`U.S. Patent No. 7,752,649
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`message stream
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`1 If a particular term appears in multiple patents, it is only included on the list once.
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`ACTIVE/84527376.1
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 10
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`

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`Case 2:15-cv-01366-JRG-RSP Document 42-2 Filed 12/14/15 Page 2 of 2 PageID #: 1650
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`Claim(s)
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`39, 54, 62
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`39, 62, 67
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`39, 54, 62
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`67
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`39, 54, 67
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`39, 62, 67
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`54, 62
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`U.S. Patent No. 7,752,649
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`control information
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`register memory
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`stored function invoking data
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`cadence information
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`digital television signals
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`control processor
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`digital video signals
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`Claim(s)
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`U.S. Patent No. 8,752,088
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`14
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`14
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`14
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`14
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`multimedia receiving apparatus
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`input ports
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`multimedia signals
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`output port
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`2
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`ACTIVE/84527376.1
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`APPLE Exhibit 1050
`Apple v. PMC
`IPR2016-00755
`Page 11