Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 42
`Filed: September 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00755
`Patent 8,191,091 B1
`____________
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

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`Case IPR2016-00755
`Patent 8,191,091 B1
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`
`I. INTRODUCTION
`
`A. Background
`Petitioner, Apple Inc., filed a Petition requesting an inter partes
`review of claims 13–16, 18, 20, 21, 23, 24, 26, 27, and 30 (“the challenged
`claims”) of U.S. Patent No. 8,191,091 B1 (Ex. 1003, the “’091 patent”).
`Paper 1 (“Pet.”). After Patent Owner, Personalized Media Communications,
`LLC, filed a Preliminary Response (Paper 7, “Prelim. Resp.”), we instituted
`an inter partes review of the challenged claims (Paper 14, “Institution
`Decision” or “Inst. Dec.”).
`The ’091 patent, filed in 1987, claims continuation-in-part (CIP)
`status to U.S. Pat. No. 4,696,490 (Ex. 1009) (the “’490 patent” (filed Nov. 3,
`1981)); Ex. 1006 (Related U.S. Application Data). Addressing a priority
`date issue involving the challenged claims of the ’490 patent raised during a
`teleconference with the panel, Petitioner filed a Preliminary Reply to Patent
`Owner’s Preliminary Response (Paper 10 (“Pet. Prelim. Reply”)) and Patent
`Owner filed a Sur-Reply in Response to Petitioner’s Preliminary Reply on
`Priority Date (Paper 12 (“PO Sur-Reply”)). See Paper 8 (Order Authorizing
`Pet. Prelim. Rep. and PO Sur-Reply); Ex. 1041 (Transcript).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20, “PO Resp.”) and a Contingent Motion to Amend the
`Claims (Paper 21, “Motion to Amend”); Petitioner filed a Reply (Paper 28,
`“Pet. Reply”) and an Opposition to Patent Owner’s Contingent Motion to
`Amend the Claims (Paper 29); and Patent Owner filed a Reply in Support of
`Motion to Amend (Paper 33).
`
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`Petitioner relies on, inter alia, Declarations by Anthony J.
`Wechselberger. Ex. 1001; Ex. 1055. Patent Owner relies on, inter alia,
`Declarations by Alfred C. Weaver, Ph.D. (Ex. 2001; Ex. 2022), Thomas J.
`Scott, Jr. (Ex. 2024), and Timothy D. Dorney, Ph.D. (Ex. 2130).
`The Board filed a transcription of the Oral Hearing held on June 6,
`2017. (Paper 41, “Tr.”).1 During the Oral Hearing, Patent Owner opted not
`to present arguments in support of its Motion to Amend.
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that the challenged claims are unpatentable
`and that Patent Owner has not met its burden on its Motion to Amend.
`B. Related Proceedings
`Petitioner states that the ’091 patent is involved in Case No. 2:15-cv-
`01366-JRG-RSP (E.D. Tex. filed July 30, 2015). Pet. 58. In addition to
`related Case IPR2016-00754 (see note 1), Petitioner lists a number of related
`
`
`1 An oral hearing in related Case IPR2016-00754 (“’754 IPR”) occurred on
`the same day, with similar issues presented and argued. For example, the
`parties discussed the common issue of decrypting and scrambling, as it
`relates to the alleged continuity of the ’490 patent in both cases. See Apple
`Inc. v. Personalized Media Comm’s, LLC, IPR2016-00754, Paper 40, 57:27–
`60, 34:1–38:23) (PTAB August 11, 2017) (hearing transcript) (“’754 Tr.”)
`(Discussing “both cases”). Also, the ’091 patent challenged here and the
`patent challenged in the ’754 proceeding (U.S. Patent No. 8,559,635) share
`the same application and continuation chains, and both were filed in 1987 as
`CIP applications to the ’490 patent.
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`patents involved in district court cases and other related patents involved in
`inter partes reviews. Id. at 58–59.
`C. The ’091 Patent (Ex. 1007)
`The ’091 patent describes using a conventional scrambled broadcast
`program containing digital signal information to, among other things,
`“identif[y] the particular apparatus to which [the digital] signals are
`addressed.” Ex. 1003, 18:41–62. The described system uses “a standard
`amplitude demodulator, 32, which uses standard demodulator techniques,
`well known in the art, to define the television based band signal. This base
`band signal is then transferred through separate paths to three separate
`detector devices.” Id. at 18:43–48 (referring to Figure 2A). Similarly, “[t]he
`present invention employs signals embedded in programming.” Id. at 7:50–
`51. The invention seeks to overcome alleged deficiencies in the prior art:
`“The prior art . . . has no capacity for . . . controlling the decryption of said
`programming, let alone doing so on the basis of signals that are embedded in
`said programming that contain keys for the decryption of said
`programming.” Id. at 5:15–23. “It has no capacity for decrypting combined
`media programming.” Id. at 5:38–39 (emphasis added).
`The ’091 patent describes “programming” broadly: “The term
`‘programming’ refers to everything that is transmitted electronically to
`entertain, instruct or inform, including television, radio, broadcast print, and
`computer programming was well as combined medium programming.” Id.
`at 6:31–34 (emphasis added).
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`Figure 2A of the ’091 patent follows:
`
`
`
`Figure 2A depicts conventional amplitude demodulator 32 for
`receiving standard television signals having embedded digital information
`therein:
`
`In FIG. 2A, . . . [t]he television channel signal . . . passes
`to a standard amplitude demodulator, . . . which uses standard
`demodulator techniques, well known in the art, to define the
`television base band signal. . . . [A] digital detector, 34, . . . acts
`to detect the digital signal information embedded in said [video]
`information, using standard detection techniques well known in
`the art, and inputs detected signal information to controller, 39, .
`. . .
`Ex. 1003, 18:41–62; see also id. at 159:54–61 (describing “conventional
`analog television” receivers using descramblers “that descramble analog
`television transmissions and are actuated by receiving digital key
`information”).
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`
`information
`
`D. Illustrative Claim
`Petitioner challenges independent claims 13, 20, and 26. Petitioner
`also challenges claims 14, 15, 18, 23, 24, 27, and 30, which depend directly
`or indirectly from claims 13, 20, or 26. Claim 13 follows:
`13. A method of decrypting programming at a receiver station,
`said method comprising the steps of:
`
`[a]
`receiving
`an
`encrypted digital
`transmission including encrypted information;
`
`[b] detecting in said encrypted digital information
`transmission the presence of an instruct-to-enable signal;
`
`[c] 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;
`
`[d] locating said first decryption key based on said step of
`determining;
`
`[e] decrypting said encrypted information using said first
`decryption key; and
`
`[f] outputting said programming based on said step of
`decrypting.
`Ex. 1003, 285:61–286:9 ([a]–[f] nomenclature added).
`E. Instituted Grounds of Unpatentability
`We instituted grounds of unpatentability of the challenged claims
`under the following sections of 35 U.S.C.:
`Claim(s) Challenged
`Basis
`Reference(s)
`13–15, 18, 20, 23, and 24 § 102(a) Gilhousen (Ex. 1004)2
`13–15, 18, 20, 23, and 24 § 102(e) Mason (Ex. 1005)3
`
`
`2 Gilhousen et al., U.S. Patent No. 4,613,901 (filed May 27, 1983, issued
`September 23, 1986).
`3 Mason, U.S. Patent No. 4,736,422 (filed July 2, 1984, issued April 5,
`1988).
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`§ 102(e) Frezza (Ex. 1006)4
`26 and 30
`§ 103(a) Mason and Block (Ex. 1008)5
`16 and 21
`§ 103(a) Gilhousen and Block
`16 and 21
`§ 103(a) Frezza and Block
`27
`See Inst. Dec. 5–6, 49–50 (also denying grounds based on a prior art
`reference to “Kelly”).
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, the Board construes claims by applying the
`broadest reasonable interpretation in light of the specification. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016). Under this standard, absent any special definitions, claim terms and
`phrases carry their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art, in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner and Patent Owner dispute several claim terms that require
`construction. Other terms are not in controversy and do not require express
`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (only those terms which are in controversy need to be
`construed and only to the extent necessary to resolve the controversy).
`
`
`
`
`
`4 Frezza et al., U.S. Patent No. 4,712,239 (filed June 16, 1986, issued Dec. 8,
`1987).
`5 Block et al., U.S. Patent No. 4,484,217 (filed May 11, 1982, issued Nov.
`20, 1984).
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`1. Claims 13 and 20, “an encrypted digital information
`transmission including encrypted information,”
`Claim 26, “receiving an information transmission
`including encrypted information”
`
`Petitioner contends that the phrase noted above, recited in claims 13
`and 20, means “an information transmission that is partially or entirely
`digital, at least a portion of which is encrypted.” Pet. 5. For purposes of
`institution, we construed the phrase to “include[] at least some encrypted
`digital information, and does not preclude, with that transmission, non-
`encrypted information or scrambled analog information.” Inst. Dec. 12.
`Petitioner agrees with our construction. Pet. Reply 6. Patent Owner
`does not. PO Resp. 4–5. According to Patent Owner, “[t]he broadest
`reasonable interpretation of the term ‘an encrypted digital information
`transmission including encrypted information’ should be ‘an information
`transmission carrying entirely digital content at least a portion of which is
`encrypted.’” Id. (citing Ex. 2022 ¶ 42).
`Petitioner contends “the plain language” of the phrase “encrypted
`digital information transmission including encrypted information” includes
`not only encrypted digital information, it may additionally include
`“information that is not encrypted or digital.” See Pet. 5–6 (emphasis by
`Petitioner). Petitioner further contends that “[w]hen 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.” Id. at 7 (citing Ex. 1030, claim 18).
`Claim 18 of the related patent, U.S. Patent No. 8,559,635 (the “’635
`patent”), which shares a common specification with the ’091 patent
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`challenged in the companion ’754 IPR (see note 1), supports Petitioner.
`Claim 18 of the ’635 patent recites “receiving at least one encrypted digital
`information transmission, wherein the at least one encrypted digital
`information transmission is unaccompanied by any non-digital information
`transmission.” Ex. 1030, 288:13–16 (emphasis added).
`In response, Patent Owner explains digital cannot be partially digital,
`as “[n]o POSITA would ever refer to a mixture of analog and digital data
`simply as ‘digital data’ without saying anything more.” PO Resp. 5. In
`contrast, Patent Owner contends “the inventors explicitly expanded the
`scope of ‘encrypted’ to cover partially encrypted information transmissions.”
`Id. Patent Owner relies on the earlier ’490 patent to support its argument
`that encrypted means at least “partially encrypted.” Id. (citing Ex. 1009,
`13:68–14:2 (“Encrypted transmissions may be only partially encrypted)).
`Patent Owner’s argument improperly characterizes Petitioner’s
`proffered claim construction to require a construction of “digital” to “convey
`a sense of varying degree” or to mean “partially digital.” See PO Resp. 4–5.
`It does not. Rather, the construction requires the transmission to be partially
`digital and the transmission may include analog information. Patent Owner
`does not dispute that disclosed TV transmissions in both the ’490 and ’091
`patents include analog and embedded digital information, including analog
`carrier waves, with some information encrypted. See id. at 8 (arguing some
`claims do not cover “all the disclosed embodiments” and “[t]hose mixed
`analog/digital embodiments support the broader ‘information transmission’
`(claim 26) instead”); Pet. Reply 8 (“The specification describes numerous
`transmissions that include both analog and digital data”) (citing Inst. Dec.
`10–11)); supra Section I.A (Introduction); Ex. 1003, Fig. 2A, 11:23–61,
`
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`12:1–12, 18:41–62, 159:57–61 (describing Wall Street television
`embodiment and analog-digital mixed television signals).
`Simply put, the phrase “encrypted digital information transmission
`including encrypted information” (as recited in independent claims 13 and
`20 (emphasis added)) means the transmission includes “encrypted digital
`information” and “encrypted information.” The claim phrase itself shows
`that “encrypted information” need not be “encrypted digital information.”
`Patent Owner’s contention that the term includes non-encrypted
`information but excludes non-digital information (e.g., analog information)
`renders the plain meaning of the last part of the phrase superfluous. In other
`words, if “an encrypted digital information transmission, including
`encrypted information,” only includes encrypted digital information, then it
`renders superfluous “including encrypted information.” During Oral
`Hearing arguments about the disputed phrase, Patent Owner acknowledged
`that the latter phrase “may be” superfluous. See Tr. 43:8–45:7, 41:13.
`Patent Owner’s Response similarly concedes that its construction
`renders “including encrypted information” superfluous. In other words,
`Patent Owner argues “once the ‘transmission’ is construed, as PMC
`proposes, to carry all-digital information, the ‘encrypted information’ is also
`limited to ‘encrypted digital information’ only.” PO Resp. 8. Precedent
`disfavors such a construction. See Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., 381 F.3d 1111, 1119–20 (Fed. Cir. 2004) (“While not an
`absolute rule, all claim terms are presumed to have meaning in a claim.”);
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
`2005) (“A claim construction that gives meaning to all the terms of the claim
`is preferred over one that does not do so.”); Power Mosfet Techs., L.L.C. v.
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`Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“[I]nterpretations that
`render some portion of the claim language superfluous are disfavored.”).
`This argument also incorrectly assumes “‘transmission’ is construed,
`as . . . to carry all-digital information.” PO Resp. 8. To the contrary, none
`of the challenged claims require the transmission to be all-digital, and
`nothing in claims 13 or 20 transforms “encrypted information” as recited in
`the last part of the phrase into “encrypted digital information.”
`Turning to claim 18 of the related ’635 patent, it recites “receiving at
`least one encrypted digital information transmission, wherein the at least one
`encrypted digital information transmission is unaccompanied by any non-
`digital information transmission.” Ex. 1030, 288:13–16 (emphasis added).
`This shows that Patent Owner informs the meaning of encrypted digital
`information transmission as including analog (i.e., non-digital) information,
`else there would have been no need to specify the exclusion of such
`information. Patent Owner, however, argues
`the claim clause—“wherein the at least one encrypted digital
`information transmission is unaccompanied by any non-digital
`specifies what other
`information
`transmission”—merely
`transmission accompanies the “encrypted digital information
`transmission”; the “wherein” clause does not affect the intrinsic
`“encrypted digital
`characteristics of
`the
`information
`transmission” itself such as whether it is fully or partially
`encrypted or digital.
`PO Resp. 7.
`Contrary to Patent Owner’s arguments, as Petitioner argues, Patent
`Owner’s attempt to distinguish “unaccompanied by” does not account for
`opposite arguments it made during “PMC’s proposed constructions of the
`term” in related IPR proceedings. See Pet. Reply 8 (citing Ex. 1056, 21–22;
`1061, 13; Ex. 1062, 9–10). Each of the cited Exhibits supports Petitioner,
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`because each one shows that Patent Owner equated “unaccompanied for”
`with “does not include” in its proposed construction. Ex. 1061, 13 (“Patent
`Owner submits that a person of ordinary skill in the art would understand
`this to mean ‘a digital information transmission that does not include non-
`digital information such as analog information.’”) (emphasis added); Ex.
`1056, 21–22 (similar statement by Patent Owner); Ex. 1062, 9–10 (similar
`statement by Patent Owner). Also, Patent Owner’s arguments here, and
`throughout, effectively concede that the challenged claims cover a mixed
`analog television signal––i.e., analog television transmissions “accompanied
`with” embedded digital information at some time during a given
`transmission.
`To support their respective positions, both parties cite to the ’091
`patent (which contains 288 columns, Ex. 1003) and is a CIP of the earlier-
`filed ancestor ’490 patent (which contains only 24 columns). As noted
`above, Patent Owner agrees with our initial finding that both of “the
`patent[s] disclose[] . . . ‘embodiments that involve mixtures of digital and
`analog information.’” See PO Resp. 8 (quoting Inst. Dec. 10) (Patent Owner
`refers to “the patent” whereas our finding refers to the ’091 and the ’490
`patents). Nevertheless, Patent Owner contends “[t]hose mixed analog/digital
`embodiments support the broader ‘information transmission’ (claim 26)
`instead.” Id. According to Patent Owner, the “French Chef” example
`(disclosed in the earlier-filed ’490 patent as part of the “Julia Child”
`television show) includes “two alternative embodiments,” and “[h]ere, the
`separate transmission of the encrypted recipe in encoded digital form
`constitutes an (all-digital) ‘encrypted digital information transmission.’” Id.
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`at 8–9 (citing Ex. 2022 ¶ 55; comparing Ex. 1009, 20:28–37, with id. at
`20:60–68).
`Neither of the French Chef embodiments in the earlier-filed ’490
`patent clearly supports an all-digital modulation technique. For example, in
`the “alternate method,” the recipe is “in encoded digital form in the
`programming transmission received by the TV set.” Ex. 1009, 20:60–63
`(emphasis added). Similarly, in the other embodiment, the TV tunes “to the
`appropriate channel to receive the recipe in encoded digital form.” Id. at
`20:35–37 (emphasis added). These ’490 patent passages do not describe the
`transmissions as all-digital; rather the digital signals are embedded as an
`encoded recipe (similar to other embedded control signals, program, or
`network identifiers, or other signals) in analog television channels. See id. at
`15:7–11, 56–63, 20:60–68; supra note 6; infra note 7. Also, the latter
`disclosed digital recipe of another channel does not include any control
`signal in the transmission, which the claims require (e.g., an instruct-to-
`enable signal).6 Moreover, even if somehow the encrypted recipe of one of
`the French Chef embodiments does support an all-digital interpretation (they
`do not), this does not limit claims 13 and 20 to a single embodiment
`according to the plain language of the claims (which include a broad array of
`programming, as explained further below).
`
`
`6 In this other channel embodiment, the recipe appears to be digital textual
`information that the system transmits to a viewer user on a different
`television channel than the channel transmitting the “The French Chef”
`television program. See Ex. 1009, 20:18–19, 32–37. In the same channel
`embodiment, the system embeds the encrypted digital recipe in “The French
`Chef” program. See id. at 20:6–63.
`
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`Contrary to Patent Owner’s argument that an embodiment in the ’091
`patent limits the claims to all-digital (see PO Resp. 11–12 (citing Ex. 1003,
`159:46–61 describing an Example # 7 embodiment)), during prosecution of
`the ’091 patent, Patent Owner described “example # 6 and especially
`example # 7,” of the ’091 patent as “includ[ing] both digital and analog
`television signals . . . relat[ing] to the ‘Wall Street Week program.’” See Ex.
`1043, 12; Ex. 1003, 148:5–160:28 (describing the Example # 7
`embodiment).  
`As shown above, the record does not support Patent Owner’s
`arguments that seek to limit any of the challenged claims to all-digital.  In
`addition, Patent Owner’s current substitute amendments acknowledge that
`even the later-filed ’091 patent includes digital control messages “as part of
`an analog television transmission.” Paper 33, 6. 
`
`As explained above, the phrase “receiving an encrypted digital
`information transmission including encrypted information” specifically
`requires the “information transmission” to include “encrypted information,”
`which includes non-digital (analog) and/or digital information, because the
`claim specifically distinguishes between “encrypted digital information” and
`“encrypted information.” Similarly, as noted in the Institution Decision,
`reciting “encrypted information” in claim 26, and reciting “encrypted digital
`information” in claim 13 (emphasis added), shows further that encrypted
`information need not be digital information. Inst. Dec. 8–9. Patent Owner
`does not address this reasoning in its Response, but instead concedes that
`“information transmission (claim 26)” supports the broader interpretation.
`PO Resp. 8 (arguing “[t]hose mixed analog/digital embodiments [in the ’091
`patent] support the broader ‘information transmission’ (claim 26) instead.”)
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`Nothing in the plain language of claim 13 implies an “entire” digital
`
`or “entire” encrypted transmission. Patent Owner does not rely on a
`lexicographic definition to support its claim construction in its Patent Owner
`Response. See id. at 5. The earlier-filed ’490 patent states “[a] decrypter
`does not necessarily decrypt the entire transmission. Encrypted
`transmissions may be only partially encrypted. For example, only the video
`portion . . . may be encrypted.” Ex. 1009, 13:68–14:2; see PO Resp. 5
`(citing and partially quoting Ex. 1009, 13:68–14:2); Prelim. Resp. 25 (citing
`same passage, arguing the inventors “act[ed] as their own lexicographer”).
`This passage implies the whole transmission may be encrypted and
`decrypted. During the Oral Hearing in the related ’754 IPR, Patent Owner
`confirmed that the ’490 patent largely described protecting mixed analog
`and digital television signals with encryption. See note 1; ’754 Tr. 39:8–24
`(Patent Owner agreeing “the thrust of the whole patent [is] to protect all
`manner of transmissions”).
`
`Also, the ’490 patent and ’091 patent do not specify the parameters of
`the claim phrase, “encrypted digital information transmission including
`encrypted information.” The quoted disclosure (PO Resp. 5) and other parts
`of the ’490 and ’091 patents merely describe what appears to be a typical
`situation in which part of a transmission may be encrypted as embedded data
`in an analog television signal. See Ex. 1009, 14:1–3; Ex. 1001 ¶¶ 41–49
`(describing known digital systems that were only partly digital); Ex. 1003,
`155:43–45 (the “studio commences transmitting analog television
`information on its transmission frequency and embeds and transmits
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`particular SPAM message information on lines 20, 21, 22, 23, 24, 254, 26,
`and 27”).7
`
`Patent Owner also does not argue specifically that the prosecution
`history supports its position with respect to the transmission term. In any
`event, as noted in the Institution Decision, Patent Owner did not argue
`during prosecution that challenged claims 13 and 20 exclude the “Wall
`Street Week” embodiment highlighted in the ’091 patent in several places.
`See, e.g., Ex. 1003, 11:23–61, 12:1–12, 159:57–61. In addition, in its
`Preliminary Response, as noted in the Institution Decision,
`
`
`7 As discussed further below, the two patents contain overlapping portions,
`and in particular, the earlier-filed ’490 patent indicates throughout that the
`referenced video portion refers to embedding digital signals into a normal
`analog television transmission. See Ex. 1009, 9:31–33 (“A digital signal is
`embedded by conventional generating and encoding means and transmitted
`in a television, radio or other transmission.”); see also 7:23–49 (describing
`reception of standard TV and decryption); 4:5–6 (embedding signals in
`programs); accord Ex. 1001 ¶ 46 (“[A] person of ordinary skill in 1981 or
`1987 would have considered ‘digital television,’ ‘digital video,’ or ‘digital
`programming’ to be fundamentally comprised of an analog video signal that
`contained embedded digital content such as teletext or videotex.”). Figure
`4B of the ’091 patent describes what appears to be decrypting examples: 1)
`decrypting via the “PROGRAMMING DECRYPTER OR INTERRUPT
`MEANS” 104 signifying (descrambling)––especially where this was “well
`known in the art” (Ex. 1009, 13:5–8); and 2) decrypting by signal processor
`100 of encoded digital signals embedded in the video or audio. The
`’490 patent explains that signal processor 100 “possibly decrypts” signals to
`decrypter/interrupter 101, to inform the latter “how to decrypt or interrupt
`the programming.” Id. at 13:27–32 (“The signal or signals may transmit a
`code or codes necessary for the decryption of the transmission.”). Further,
`Mr. Wechselberger testifies that before the mid-1980s (i.e., after the filing of
`the ’490 patent), skilled artisans interchanged the terms “encrypted” and
`“scramble[ed].” See Ex. 1001 ¶¶ 62–65.
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`Patent Owner argues . . . that an analog television embodiment
`(which includes digital information) is within the scope of the
`claims. For example, in a related argument alleging support in
`the ’490 patent for “receiving an encrypted digital information
`transmission including encrypted information,” Patent Owner
`relies on “the incoming programming” of “‘The French Chef’
`TV program.” See Prelim. Resp. 9–10 (citing Ex. 1009, 20:12–
`50; 20:60–68). This conventional TV program includes analog
`information, which includes an encrypted recipe “in encoded
`digital form in the programing transmission received by TV set,
`202,” which processor 200 eventually decrypts. Ex. 1009,
`20:60–68. In addition, claim 26 specifically recites “wherein
`said encrypted information includes television programming,”
`further indicating that encrypted information may include analog
`information, because programming, as discussed further below,
`and as noted above, is a broad term. Ex. 1003, 6:31–34; supra
`Section I.B. For example, programming covers embodiments
`exemplified by the “Wall Street Week” and “The French Chef”
`analog television shows.
`Inst. Dec. 11.
`
`Patent Owner now argues that it disclaimed the scope of the related
`term “decrypting” (discussed below) during prosecution of the ’091 patent.
`See PO Resp. 15–16. To the extent this argument applies to the encrypting
`phrase at issue here, we adopt and incorporate the remaining findings and
`discussion from the Institution Decision and our discussion of decrypting
`below. See Inst. Dec. 10–12. In short, the ’091 patent refers to “decrypting
`combined media programming.” Ex. 1003, 5:38–39 (emphasis added).
`
`As discussed above and below, programming is a broad term, not
`limited to digital data, indicating decrypting and encrypting encompass all
`manner of data and signals. Challenged claims 18, 24, and 30, which
`depend respectively from claims 13, 20, and 26, specifically recite “said
`encrypted information includes television programming,” and Patent Owner
`
`17
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`Case IPR2016-00755
`Patent 8,191,091 B1
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`concedes, as noted above, that claim 26 covers mixed analog/digital
`embodiments. See PO Resp. 8 (arguing “[t]hose mixed analog/digital
`embodiments [in the ’091 patent] support the broader ‘information
`transmission’ (claim 26) instead.”).
`
`The earlier-flied ’490 patent shows that the disclosure broadly
`contemplates decrypting programming and the signals within programming:
`“The signals that enable the decrypter/interrupter, 101, to decrypt and/or
`transfer program[m]ing uninterrupted may be embedded in the
`program[m]ing or may be elsewhere.” Ex. 1009, 13:17–20 (emphasis
`added). “These techniques employ signals embedded in programming.” Id.
`at 4:5–6. “The present invention provides a method for obscuring the
`meaning of the signals to prevent unauthorized use of the signals and their
`associated programming. Their meanings may be obscured through
`encryption.” Id. at 4:31–34 (emphasis added). Each of the challenged
`claims recite “decrypting programming” and “outputting said programming
`based on said step of decrypting.” The ’490 patent explains that signal
`processor 100 “possibly decrypts” signals to decrypter/interrupter 101, to
`inform the latter “how to decrypt or interrupt the programming.” Id. at
`13:27–32 (emphasis added) (“The signal or signals may transmit a code or
`codes necessary for the decryption of the transmission.”). The ’490 patent
`also describes “convert[ing] the encoded signals [of received transmissions]
`into digital information.” Ex. 1009, 4:64–65 (emphasis added). Therefore,
`given analog television programming and the desire to protect its
`unauthorized viewing that the ’490 and ’091 patents teach, decrypting
`programming and the signals within it must reasonably encompass
`
`18
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`Case IPR2016-00755
`Patent 8,191,091 B1
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`descrambling the programming by virtue of decrypting encrypted digital
`signal keys.
`
`Patent Owner obscures the construction and consequent scope of the
`claim terms at issue here by contending that “PMC has not contended that
`they [(claims 13, 20, and 26)] must cover ‘digital television programming.’”
`PO Resp. 33. Patent Owner also obscures the construction and scope of the
`claims by arguing “whether the Board construes ‘digital television
`programming’ to be analog video containing embedded digital content (as
`Petitioner proposes) or entirely digital TV content, the ’490 Patent provides
`written support for both cases.” Id. Patent Owner cites to examples that
`provide mixed analog television with embedded content and alleges one
`example provides “all-digital TV.” See id. (citing Ex. 1009, 20:32–38,
`20:60–68 (French Chef examples discussed above), Fig. 2A, 6:6:67–7:1)
`(alleging Path C constitutes “all-digital TV”).
`
`These examples, including the latter example, do not support “digital
`television programming,” because in the latter example, the signal first
`passes through “AMPLITUDE DEMODULATOR” 32 of “ONE TV
`CHANNEL” in a “TV SIGNAL DECODER,” just like paths A and B,
`which Patent Owner does not describe as all-digital and which constitute
`typical mixed analog