UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`___________________________
`
`Case No. IPR2016-00755
`U.S. Patent No. 8,191,091
`___________________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY IN RESPONSE TO
`PETITIONER’S PRELIMINARY REPLY ON PRIORITY DATE
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`___________________________
`
`Case No. IPR2016-00755
`U.S. Patent No. 8,191,091
`___________________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY IN RESPONSE TO
`PETITIONER’S PRELIMINARY REPLY ON PRIORITY DATE
`
`
`
`
`
`IPR2016-00755 (Patent No. 8,191,091)
`
`Pursuant to 37 C.F.R. §§ 42.22, 42.104, the Petition must show that the
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`references relied upon were indeed “prior art” to the challenged claims. Petitioner
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`did not even attempt to make a prima facie case that the ’091 Patent, which was a
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`CIP, is not entitled to the 1981 priority date of the original parent application cited
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`in the priority claim on the face of the patent.
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`The situation is hardly different from HP v. TPL (IPR2013-00217), where
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`HP argued, months after filing its petition, that the challenged patent should be
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`held to the later priority date because the patentee was allegedly “estopped” from
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`claiming an earlier priority date. “Decision,” 2013 WL 6514068 at *1 (P.T.A.B.
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`Oct. 10, 2013). Since HP failed to “identify where in the Petition any of these …
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`arguments were made,” the PTAB “decline[d] to consider, for the first time, HP’s
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`arguments and evidence related to the [earlier] effective filing date.” Id. at *2.
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`Here, Petitioner’s new arguments and evidence on priority date should be rejected
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`for the same reasons.
`
`I.
`
`There Is No “Priority Date Disclaimer” Doctrine And The Prosecution
`History Does Not Evince “A Clear And Unmistakable Surrender” Of
`1981 Priority for the Claims at Issue.
`
`By picking and choosing among PMC’s statements made during an early
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`stage of examination with respect to then-pending (but later cancelled) claims,
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`Petitioner contends that PMC somehow “disclaimed” 1981 priority for the claims
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`of the ’091 Patent (issued from App. No. 08/485,507 or “the ’507 Application”)
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`1
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`IPR2016-00755 (Patent No. 8,191,091)
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`which were introduced years later. Petitioner could not cite a single controlling
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`case recognizing such a doctrine of “priority date disclaimer.”
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`Even if a general doctrine of priority date disclaimer existed (it does not),
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`Petitioner’s argument fails because the relied-upon statements fail to demonstrate
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`“a clear and unmistakable surrender” of 1981 priority. See Conoco v. EEI, 460
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`F.3d 1349, 1364 (Fed. Cir. 2006) (“To invoke argument-based estoppel [of the
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`scope of the claims] ... the prosecution history must evince a clear and
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`unmistakable surrender of subject matter.”) (bracketed portion and emphasis
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`added). And, even if they were misconstrued as “disclaimers” of priority, PMC’s
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`statements would only be applicable to the then-pending claims—all of which were
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`cancelled and replaced with significantly different claims that ultimately led to the
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`claims at issue here. It is indisputable that priority is determined on a claim-by-
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`claim basis, rather than applied wholesale to an entire application or patent. See
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`Tronzo v. Biomet, 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a later-
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`filed application to be entitled to the filing date of an earlier application under 35
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`U.S.C. § 120, the earlier application must comply with the written description
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`requirement ...”).
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`None of PMC’s statements that Petitioner relies upon can be interpreted as
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`unequivocal disclaimers of priority in view of other affirmative assertions of 1981
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`priority that PMC made throughout prosecution. For example, upon initial filing
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`2
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`IPR2016-00755 (Patent No. 8,191,091)
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`of the ’507 Application, PMC amended the “Cross-Reference to Related
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`Applications” to include a priority claim to the ’490 Patent. Ex. 2017 at 2. In
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`addition, both before and after the 1995 IDS and 1997 amendment that Apple cites,
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`PMC made clear that its priority assertion extended back to the 1981-based ’490
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`Patent. See Ex. 2015 at 1-2; Ex. 2016 at 1-2.
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`The cases cited by Petitioner involved different fact patterns that when
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`contrasted with the present situation actually highlight the absence of any priority
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`disclaimer by PMC. In Bradford v. Conteyor N. Am., after successfully
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`overcoming prior art rejections by denying that an earlier application disclosed a
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`claimed feature, the patentee later sought to reverse course and assert priority to
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`the earlier application. 603 F.3d 1262, 1269 (Fed. Cir. 2010). The prosecution
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`statements that doomed the priority assertion in Bradford were not only
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`unequivocal, but were also directed to the very same claims. Id. at 1269-70. That
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`is not the case here. Further, the statements in Bradford were relied on by the PTO
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`to allow the claims at issue—a clear benefit to the patentee. Id. That is not the case
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`here. As for Hakim v. Cannon Avent Group, 479 F.3d 1313, 1315-16 (Fed. Cir.
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`2007) and Springs Window Fashions v. Novo Industries, 323 F.3d 989, 993-94
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`(Fed. Cir. 2003), those cases also involved clear and unmistakable disclaimers by
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`the patentees, which is not the case here. They are also inapposite because they
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`involve disclaimer of claim scope, not disclaimer of priority dates.
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`3
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`IPR2016-00755 (Patent No. 8,191,091)
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`The only relevant support that Petitioner can cite (at pages 2-3) is a decision
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`(Ex. 1048) on a related patent by the Board that cited no authority for “priority date
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`disclaimer” and that is the subject of a pending Request for Rehearing. See Paper
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`43 (4/22/2016) in IPR2014-01527. With all due respect to the Board, the earlier
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`decision should not be followed here because it was wrongly decided as a matter of
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`law as pointed out in the still pending rehearing request.
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`Petitioner does not dispute that the alleged “disclaimer” statements by PMC
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`were made years before the original version of the claims at issue here were
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`introduced. In particular, PMC’s statement that “there could never have been a
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`basis for claiming the present subject matter [in the 1981 applications]” (Ex. 1043
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`at 21 (emphasis added)) refers explicitly to then-pending claims 3-32 in 1997.
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`That statement obviously did not apply to the new claims 33-63 introduced in 2011
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`which recited different limitations.
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`The early statements made by PMC were directed to claims 3-32 which each
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`recited “modifying a fashion in which said receiver station locates [/ receives /
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`identifies] said enabling information …” That feature was not disclosed in the
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`1981 specification, which is why priority was asserted by PMC to 1987, not 1981.
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`But claims 3-32 were canceled, and the new claims 33-63 which ultimately led to
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`the claims challenged here did not recite that feature (“modifying a fashion ...”).
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`In fact, Petitioner agrees that “the 1981 specification [only] describes
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`4
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`IPR2016-00755 (Patent No. 8,191,091)
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`‘preinformed’ receivers” (Reply at 7) and does not disclose the limitation of
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`“modifying a fashion …” (e.g., reprogramming the receivers on the fly) found in
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`original claims 3-32 but absent from the claims at issue here.
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`Indeed, Petitioner has failed to demonstrate that the subject matter of then-
`
`pending claims 3-32 is substantively the same as or equivalent to that of the issued
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`claims. It is telling that Petitioner chose the phrase “tremendous overlap” to
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`characterize its cursory comparison between the two sets of claims. Instead of
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`conducting an element-by-element comparison between even a single pair of
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`claims, Petitioner merely listed some discrete words and phrases that appear in
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`both set of claims but glossed over key differences, such as “modifying a fashion
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`...” versus “determining a fashion …” as discussed above. A POSITA would
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`appreciate that “modifying a fashion …” (e.g., reprogramming or reconfiguring
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`the receiver station) is considerably different from “determining a fashion …”
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`(e.g., choosing from among pre-programmed options).
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`Finally, the fact that the ’507 Application was initially labeled, for
`
`administrative docketing convenience, as “DECR 87B” does not prospectively
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`restrict the application to the 1987 priority date. Nothing in the record shows that
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`either the PTO or PMC intended for such designation to constitute some kind of
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`binding restriction on PMC’s priority claim. In fact, some issued PMC patents
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`were accorded priority dates different from their initial designations, such as the
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`5
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`IPR2016-00755 (Patent No. 8,191,091)
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`“SETT 81B” application (accorded 1987 priority) and the “DOWN 87B”
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`application (accorded 1981 priority). See Ex. 1049 at 9, 11; Ex. 2018 at 9-10; Ex.
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`2019 at 17.
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`II. All Challenged Claims Are Supported By The 1981 Specification.
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`PMC’s Preliminary Response (at 7-16) and Dr. Weaver’s Declaration (Ex.
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`2001 at ¶44 (pp. 14-42)) demonstrate that the challenged claims are fully supported
`
`by the 1981 specification. Petitioner has failed to show that any element of any
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`challenged claim is absent from the 1981 disclosure. For example, Petitioner’s
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`only citation to the ’490 Patent (i.e., Ex. 1009 at 4:31-40) does not show its failure
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`to disclose the “detecting” or “determining” steps.
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`Petitioner’s argument premised on an allegedly broadened “definition” of
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`“programming” has no legal or factual basis. First, the so-called original
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`“definition” is in the Abstract of the ’490 Patent which could not serve as a source
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`of claim construction. See MPEP (Rev. 52, 1977) § 608.01(b) (37 C.F.R. § 1.72(b)
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`states that the abstract of the patent “shall not be used for interpreting the scope of
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`the claims” by the PTO). Second, the 1981 Abstract merely provides a description
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`of certain types of programming “transmitted over television or radio” rather than
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`a restrictive definition. Third, the extensive description of other forms of
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`programming content delivered over other (non-TV and non-radio) media in the
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`1981 specification further confirms that “programming” is not limited to TV or
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`6
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`IPR2016-00755 (Patent No. 8,191,091)
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`radio content in the 1981 disclosure. See, e.g., Ex. 1009, 3:51-55 (“This method
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`provides techniques whereby, … presentations, be they television, radio, or other
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`electronic transmissions, may be … processed”). Even assuming the definition of
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`“programming” were broadened, Petitioner does not dispute that the 1981
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`specification discloses “programming” (see id., Abstract; 16:5-7; 16:25-32; 19:42-
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`20:7; 21:1-22:4); nor does its citation to Power Oasis, Inc. v. T-Mobile USA, Inc.,
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`522 F.3d 1299, 1309-11 (Fed. Cir. 2008) support the proposition that a claim loses
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`its support in an earlier application (and hence its priority date) simply because a
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`claim term is described more broadly in a CIP.
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`Petitioner’s reliance on the decision in IPR2014-01527 regarding the term
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`“programming” is also misplaced. That case was wrongly decided and was
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`directly contradicted by multiple earlier BPAI decisions on the very same issue
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`(Ex. 2020 at 20-21; Ex. 2021 at 13-16). As noted above, a decision on Request for
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`Rehearing is yet to be issued in IPR2014-01527.
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`Therefore, all the challenged claims are entitled to the 1981 priority date.
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`
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`Dated: July 27, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`By
`/ Douglas J. Kline /
`Douglas J. Kline
`Registration No.: 35,574
`GOODWIN PROCTER LLP
`
`
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`7
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`IPR2016-00755 (Patent No. 8,191,091)
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`
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1209
`
`Attorney for Patent Owner Personalized
`Media Communications, LLC
`
`8
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`IPR2016-00755 (Patent No. 8,191,091)
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing:
`
`PATENT OWNER’S SUR-REPLY IN RESPONSE TO
`PETITIONER’S PRELIMINARY REPLY ON PRIORITY DATE
`
`filed herewith and the exhibits cited therein were served, pursuant to 37 C.F.R.
`§42.6(e)(1) and the consent found in Section III.D of the Petition (Paper No. 1), by
`electronic mail on counsel for Petitioner at the electronic mail addresses set forth
`below:
`
`
`Marcus E. Sernel, Joel R. Merkin, and Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: (312) 862-2000; F: (312) 862-2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`Gregory S. Arovas
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`P: (212) 446-4800; F: (212) 446-4900
`greg.arovas@kirkland.com
`
`
`
`
`
`Dated: July 27, 2016
`
`
`
`
`By:
`
` / Douglas J. Kline /
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