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 RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`IPR2016-00755
`Patent No. 8,191,091
`
`Page
`
`B.
`
`4.
`5.
`
`INTRODUCTION ........................................................................................... 1
`I.
`OVERVIEW OF THE PATENTED INVENTIONS ...................................... 2
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3
`IV. CLAIM CONSTRUCTION ............................................................................ 3
`A.
`“an encrypted digital information transmission including
`encrypted information” ......................................................................... 4
`“decrypting” / “encrypted” .................................................................... 9
`1.
`Overwhelming Support In The Specifications ........................... 9
`2.
`Read The Controversial Sentence In Context ........................... 11
`3.
`“Mixed Analog/Digital Embodiments” & “Decrypting
`Programming” ........................................................................... 14
`Unequivocal Statements During Prosecution ........................... 15
`BPAI and Judicial Acknowledgements of Prosecution
`Disclaimers ................................................................................ 16
`Support In Wechselberger’s Prior Declaration & Article ......... 17
`6.
`“locate” / “locating” ............................................................................ 20
`C.
`“designated” ........................................................................................ 21
`D.
`“processor” .......................................................................................... 21
`E.
`“processor instructions” ...................................................................... 24
`F.
`PRIORITY DATE ......................................................................................... 25
`A.
`Element-By-Element Support in the ’490 Patent ................................ 25
`B.
`No Clear and Unmistakable Surrender of Priority Date ..................... 29
`C.
`No Broadening of “Programming” ..................................................... 31
`D.
`Broadening of A 1981-Supported Term Is Irrelevant. ........................ 36
`E.
`Disclosure of Specific Claim Elements ............................................... 38
`VI. THE CHALLENGED CLAIMS ARE PATENTABLE ............................... 41
`
`V.
`
`
`
`

`
`
`
`A.
`
`B.
`
`C.
`
`IPR2016-00755
`Patent No. 8,191,091
`
`2.
`
`3.
`
`Response To Grounds A, B, D, E: References Dated After
`November 3, 1981 Do Not Qualify As Prior Art. ............................... 43
`Response To Ground A: Gilhousen Does Not Anticipate
`Claims 13-15, 18, 20, 23, Or 24. ......................................................... 44
`1.
`Gilhousen fails to teach “receiving an encrypted digital
`information transmission” (claims 13, 20). .............................. 44
`Gilhousen fails to teach “determining a fashion in which
`said receiver station locates a first decryption key …” or
`“locating said first decryption key …” (claim 13). ................... 47
`Gilhousen fails to teach “decrypting said encrypted
`information …” (claims 13, 20) or “decrypt a video
`portion of said programming” (claims 15, 23). ........................ 50
`Gilhousen fails to teach “passing said instruct-to-enable
`signal to a processor” (claim 13). ............................................. 51
`Gilhousen fails to teach “a first[/second] instruct-to-
`enable signal including first[/second] processor
`instructions,” and related “executing” steps (claim 20). ........... 52
`Response To Ground B: Mason Does Not Anticipate Claims
`13-15, 18, 20, 23, Or 24. ..................................................................... 56
`1. Mason fails to teach “receiving an encrypted digital
`information transmission” (claims 13 and 20). ......................... 56
`2. Mason fails to teach “decrypting said encrypted
`information …” (claims 13 and 20) or “decrypt a video
`portion of said programming” (claims 15, 23). ........................ 57
`3. Mason fails to teach “determining a fashion in which said
`receiver station locates a first decryption key …” or
`“locating said first decryption key …” (claim 13). ................... 57
`4. Mason fails to teach “passing said instruct-to-enable
`signal to a processor” (claim 13). ............................................. 59
`5. Mason fails to teach “a first[/second] instruct-to-enable
`signal including first[/second] processor instructions,”
`and related “executing” steps (claim 20). ................................. 59
`
`4.
`
`5.
`
`ii
`
`

`
`
`
`E.
`
`F.
`
`D.
`
`Response To Ground C: Frezza Does Not Anticipate Claims 26
`Or 30. ................................................................................................... 61
`1.
`Frezza fails to teach “receiving an information
`transmission including encrypted information” or
`“decrypting said encrypted information …” (claim 26). .......... 61
`Frezza fails to teach “detecting the presence of an
`instruct-to-enable signal” (claim 26). ....................................... 63
`Frezza fails to teach “automatically tuning said receiver
`station to a channel designated by said instruct-to-enable
`signal” (claim 26). ..................................................................... 64
`Response To Grounds D, E, and F: The Combinations Of
`References with Block Cannot Render Claims 16, 21 Or 27
`Obvious. .............................................................................................. 64
`1.
`None of the combinations teach or suggest “storing
`information evidencing said step of decrypting” (claims
`16, 21, or 27). ............................................................................ 65
`It would not have been obvious to combine any of the
`primary references with Block. ................................................. 68
`Response To Grounds D, E, and F: Secondary Considerations
`Confirm The Nonobviouness Of The Claimed Inventions. ................ 70
`VII. CONCLUSION .............................................................................................. 70
`
`
`IPR2016-00755
`Patent No. 8,191,091
`
`2.
`
`3.
`
`2.
`
`iii
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Augustine Med., Inc. v. Gaymar Indus., Inc.,
`181 F.3d 1291 (Fed. Cir. 1999) .......................................................................... 25
`
`Baran v. Med. Device Techs., Inc.,
`616 F.3d 1309, 1316 (Fed. Cir. 2010) ................................................................ 14
`
`Ex Parte Burgess,
`No. 2008-2820, 2009 WL 291172 (B.P.A.I. Feb 06, 2009) ............................... 42
`
`Graham v. John Deere Co.,
`383 U.S. 1, 15-17 (1966) .................................................................................... 42
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................ 41
`
`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) ............................................................................ 42
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 55
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 42
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 3
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................. 25, 36, 37
`
`PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC,
`815 F.3d 747, 755 (Fed. Cir. 2016) .................................................................... 14
`
`Purdue Pharma LP v. Faulding Inc.,
`230 F.3d 1320 (Fed. Cir. 2000). ......................................................................... 39
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) .......................................................................... 41
`
`iv
`
`

`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 43
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`Technology Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ................................................................... 37, 38
`
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .............................................................................. 4
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 41
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 42
`
`
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 43
`
`35 U.S.C. § 120 ........................................................................................................ 39
`
`
`
`Other Authorities
`
`M.P.E.P. § 2112 ....................................................................................................... 57
`
`M.P.E.P. § 2141 ....................................................................................................... 44
`
`M.P.E.P. § 2143 ....................................................................................................... 44
`
`
`
`v
`
`

`
`
`I.
`
`INTRODUCTION
`
`IPR2016-00755
`Patent No. 8,191,091
`
`The Board instituted trial on the following grounds against 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):
`
`A. claims 13-15, 18, 20, and 23-24 as anticipated by Gilhousen (Ex.
`
`1004);
`
`B. claims 13-15, 18, 20, and 23-24 as anticipated by Mason (Ex.
`
`1005);
`
`C. claims 26 and 30 as anticipated by Frezza (Ex. 1006);
`
`D. claims 16 and 21 as obvious over Gilhousen and Block (Ex.
`
`1008);
`
`E. claims 16 and 21 as obvious over Mason and Block; and
`
`F. claim 27 as obvious over Frezza and Block.
`
`Paper 14 (“Dec.”), 49-50.
`
`Patent Owner, Personalized Media Communications, LLC (“PMC”),
`
`submits the following response to the Petition (“Pet.”) and Preliminary Reply
`
`(“Reply”) filed by Petitioner concerning the instituted grounds.
`
`At least claims 13-16, and 18 are entitled to the priority date of November 3,
`
`1981. Since none of the cited references are dated before November 3, 1981, they
`
`do not qualify as prior art against any of claims 13-16, or 18.
`
`1
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`Even assuming the cited references were prior art, they fail to disclose all the
`
`claim elements (if properly construed) and, further, they would not be obvious to
`
`combine as Petitioner alleges. The single secondary reference (i.e., Block) does
`
`not teach or suggest “storing information evidencing said step of decrypting”—the
`
`sole limitation for which the secondary reference is cited.
`
`Therefore, the Board should confirm the validity of the Challenged Claims.
`
`II. OVERVIEW OF THE PATENTED INVENTIONS
`The claims of the ’091 Patent are directed to decryption key management
`
`techniques. (Ex. 2022, ¶40.) Each challenged claim recites “a method of
`
`decrypting programming at a receiver station” including the steps of: (a) “receiving
`
`an [encrypted digital] information transmission including encrypted information,”
`
`(b) detecting at least one “instruct-to-enable signal,” (c) locating or obtaining
`
`“decryption key(s)” or “enabling information” based on the “instruct-to-enable
`
`signal,” (d) “decrypting said encrypted information” using the key(s) or enabling
`
`information, and (e) “outputting said programming based on said step of
`
`decrypting.”
`
`How the decryption key(s) or enabling information are located or obtained
`
`vary among the three sets of claims, with each citing a different inventive key-
`
`handling technique. Claim 13 recites “determining a fashion in which said
`
`receiver station locates a first decryption key by processing said instruct-to-enable
`
`
`
`2
`
`
`
`

`
`signal” and “locating said first decryption key based on said step of determining.”
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`Claim 20 recites “detecting in said encrypted digital information transmission the
`
`presence of a first[/second] instruct-to-enable signal including first[/second]
`
`processor instructions” and “executing said first[/second] processor instructions of
`
`said first[/second] instruct-to-enable signal to provide a first[/second] decryption
`
`key.” Claim 26 recites “automatically tuning said receiver station to a channel
`
`designated by said instruct-to-enable signal” and “receiving enabling information
`
`from a remote source based on said step of tuning.” (Ex. 1003, claims 13, 20, 26.)
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`The claims of the ’091 Patent are directed to a person who, at the time of the
`
`claimed inventions (i.e., by November 3, 1981), has at least the equivalent of a
`
`Bachelor of Science in digital electronics, electrical engineering, computer
`
`engineering, computer science, or a related technical degree, with several years
`
`(e.g., 2-5 years) of post-degree experience in a similar field. (Ex. 2022, ¶33.)
`
`IV. CLAIM CONSTRUCTION
`Under the broadest reasonable interpretation standard, “claims should
`
`always be read in light of the specification and teachings in the underlying patent,”
`
`and the meaning of a claim must “reasonably reflect the plain language and
`
`disclosure” instead of being “unreasonably broad.” Microsoft Corp. v. Proxyconn,
`
`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015); 37 C.F.R. § 42.100. “Ordinary and
`
`
`
`3
`
`
`
`

`
`customary meaning” is not a definition itself. That is why a claim term must be
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`considered in view of the specification from the perspective of a person of ordinary
`
`skill in the art (“POSITA”). Thus, in construing a term during inter partes review,
`
`the PTAB should consider: (1) ordinary and customary meaning; (2) the language
`
`of the claims; and (3) the specification. Tempo Lighting, Inc. v. Tivoli, LLC, 742
`
`F.3d 973, 977 (Fed. Cir. 2014).
`
`PMC respectfully requests that the Board adopt the following constructions.
`
`A.
`
`“an encrypted digital information transmission including
`encrypted information”
`
`The 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.” (Ex. 2022, ¶42.)
`
`The phrase “encrypted digital information transmission” includes two
`
`modifiers, “encrypted” and “digital,” which, based on their plain meaning, would
`
`have meant the content of “information transmission” is entirely encrypted and
`
`entirely digital.
`
`To a POSITA or any English-speaking person, an adjective such as “digital”
`
`does not convey a sense of varying degree. A piece of data is either digital or
`
`analog; there is no in-between state. Unlike color adjectives (e.g., “blue” covers
`
`
`
`4
`
`
`
`

`
`multiple shades of blue such as azure, baby blue, cobalt blue, and so on), there is
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`no such thing as “a little digital,” “half digital,” or “partially digital” when data or
`
`information (or transmission thereof) is described.1 In other words, “digital” data
`
`means digital data, not “half-digital” or “partially digital” data. No POSITA would
`
`ever refer to a mixture of analog and digital data simply as “digital data” without
`
`saying anything more. (Ex. 2022, ¶45.)
`
`Compared to “digital,” the modifier “encrypted” here is different in at least
`
`two aspects. First, the specification specifically notes: “Encrypted transmissions
`
`may be only partially encrypted” (Ex. 1009, 13:68-14:2). This quoted statement is
`
`applicable to all “encrypted transmissions” including “an encrypted digital
`
`information transmission …”2 Thus, the inventors explicitly expanded the scope of
`
`“encrypted” to cover partially encrypted information transmissions. Second,
`
`partial encryption of information or data is common and often expected. Thus,
`
`
`1 In contrast to the description of data or information, a POSITA might describe a
`
`certain process or operation involving both analog and digital steps as “partially
`
`digital”; but that is irrelevant here.
`
`2 The Board’s dismissal of this statement (Dec., 9) as not dealing with the disputed
`
`term phrase verbatim is improper.
`
`
`
`5
`
`
`
`

`
`unlike so-called “partially digital information,” partially encrypted information is
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`at least conceivable to a POSITA.
`
`In sharp contrast to the term “encrypted,” the inventors never expressed any
`
`intent to expand “digital” to cover, as Petitioner proposes, an “at least partially
`
`digital information transmission” containing analog information. Petitioner’s
`
`reliance on “similar logic” for an overbroad construction of “digital” transmission
`
`is therefore misplaced. (Pet., 6-7.)
`
`Contrary to the Board’s assertion, Patent Owner did address, through expert
`
`declaration, Petitioner’s claim differentiation argument based on claim 18 of the
`
`’635 patent. (See Exhibit 2001, ¶24.) As Dr. Weaver notes, the more appropriate
`
`claim differentiation analysis should compare claims 13 and 20 with claim 26:
`
`- “receiving an encrypted digital information transmission including
`
`encrypted information” (claims 13 and 20)
`
`- “receiving an [] information transmission including encrypted
`
`information” (claim 26)
`
`The contrast among these claims within the same patent is illuminating: the
`
`modifier “digital” must impose a meaningful limitation when it is applied to claims
`
`13 and 20 but not present in similar element of claim 26. See Forest Laboratories,
`
`Inc. v. Abbott Laboratories, 239 F.3d 1305, 1310 (Fed. Cir. 2001) (“Where claims
`
`use different terms, those differences are presumed to reflect a difference in the
`
`
`
`6
`
`
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`scope of the claims.”); 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.”). To construe “digital information
`
`transmission” as “at least partially digital information transmission”
`
`unreasonably broadens this plain phrase by reading out the modifier “digital”
`
`from claims 13 and 20.
`
`It is also unfair and irrelevant to compare the disputed phrase in the ’091
`
`Patent to the “receiving” terms found in a subsequently issued (albeit related)
`
`patent. In claim 18 of the ’635 patent, the claim clause—“wherein the at least one
`
`encrypted digital information transmission is unaccompanied by any non-digital
`
`information transmission”—merely specifies what other transmission accompanies
`
`the “encrypted digital information transmission”; the “wherein” clause does not
`
`affect the intrinsic characteristics of the “encrypted digital information
`
`transmission” itself such as whether it is fully or partially encrypted or digital.
`
`Those intrinsic characteristics are already covered by the modifiers “encrypted”
`
`and “digital.” Therefore, it would be patently unreasonable to retrospectively
`
`expand the scope of “an encrypted digital information transmission” based on the
`
`“wherein” clause in the later patent. (Ex. 2022, ¶53.)
`
`Claim differentiation within this disputed term “an encrypted digital
`
`information transmission including encrypted information” (Dec., 8; Pet., 6) is also
`
`
`
`7
`
`
`
`

`
`misguided because it compares a modifier (“encrypted digital information”) with a
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`noun (“encrypted information”) here. More importantly, the “encrypted
`
`information” does not have a scope independent of the “encrypted digital
`
`information transmission including encrypted information”: once the
`
`“transmission” is construed, as PMC proposes, to carry all-digital information, the
`
`“encrypted information” is also limited to “encrypted digital information” only.
`
`Furthermore, comparing the two underlined phrases is not as fair as contrasting the
`
`steps “receiving an encrypted digital information transmission …” (claims 13, 20)
`
`versus the step of “receiving an information transmission …” (claim 26). (Ex.
`
`2022, ¶54.)
`
`The fact, as the Board points out, that the patent discloses some
`
`“embodiments that involve mixtures of digital and analog information” (Dec., 10)
`
`has little bearing on the scope of “encrypted digital information transmission”
`
`because this disputed term, constrained by the “encrypted digital” modifier, need
`
`not and cannot cover all the disclosed embodiments. Those mixed analog/digital
`
`embodiments support the broader “information transmission” (claim 26) instead.
`
`Indeed, the Board itself recognizes that the “French Chef” example teaches two
`
`alternative embodiments for transmitting an encrypted recipe—either “in the
`
`programming transmission” or in a separate channel/transmission. (Dec., 11 and
`
`fn. 7; also compare Ex. 1009, 20:60-68 with 20:28-37.) Here, the separate
`
`
`
`8
`
`
`
`

`
`transmission of the encrypted recipe in encoded digital form constitutes an (all-
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`digital) “encrypted digital information transmission.” (Ex. 2022, ¶55.)
`
`Lastly, PMC’s proposed definition in the district court—“signals sent or
`
`passed from one location to another location to convey digital information which
`
`is in encrypted form” (Ex. 1015, 1)—only covers signals that “convey digital
`
`information” and therefore is no broader than the all-digital construction here. (Ex.
`
`2022, ¶56.)
`
`“decrypting” / “encrypted”
`
`B.
`Throughout the patent specifications and during PTO and court proceedings,
`
`PMC has consistently construed “decryption” as “a method that uses a digital key
`
`in conjunction with an associated algorithm to decipher (render intelligible or
`
`usable) digital data” and similarly construed “encryption” as “an operation
`
`performed on digital data in conjunction with an associated algorithm and digital
`
`key to render the digital data unintelligible or unusable.”
`
`1. Overwhelming Support In The Specifications
`The specifications make clear that decryptors operate on digital data only.
`
`For instance, the decryptors in Examples #6-7 in the ’091 Patent are described
`
`explicitly as devices for decrypting digital information:
`
`“Decryptors, 107, 224 and 231, are conventional decryptors, well
`known in the art, with capacity for receiving encrypted digital
`
`
`
`9
`
`
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`information, decrypting said information by means of a selected
`cipher algorithm and a selected cipher key, and outputting the
`decrypted information.”
`
`Ex. 1003, 147:21-26. See also Ex. 1009, 4:61-5:2 (decryptors convert the received
`
`information … to other digital information); Ex. 1003, 148:13-20 (“the program
`
`originating studio … transmits a television signal that consists of so-called ‘digital
`
`video’ and ‘digital audio’” in which “the digital video information is doubly
`
`encrypted …”); id., 24:17-19 (describing the decryption of the execution segment
`
`of a digital message); id., 73:34-36; 101:51-58 (describing techniques to encrypt
`
`“binary information” – i.e., digital information); id., 77:10-38 (describing a
`
`decryptor 10 that receives digital data and decrypting it into “binary
`
`information”).
`
`A POSITA reading the specifications would not confuse the
`
`encryption/decryption of digital data with the scrambling/descrambling of an
`
`analog television signal. (Ex. 2022, ¶¶58-59.) Not only does the patent describe
`
`decryption as a digital process, as quoted above, it also unequivocally distinguishes
`
`“encryption/decryption means and methods” from analog
`
`scrambling/descrambling:
`
`“Various scrambling means are well known in the art for
`scrambling, usually the video portion of analogue television
`transmissions in such a fashion that only subscriber stations with
`
`
`
`10
`
`
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`appropriate descrambling means have capacity to tune suitably to
`the television transmission and display the transmitted television
`image information. Encryption/decryption means and methods,
`well known in the art, can regulate the reception and use of, for
`example, digital video and audio television transmission, digital
`audio radio and phonograph transmission, digital broadcast print
`transmission, and digital data communications.”
`
`Ex. 1003, 143:20-30. Thus, the patent informs a POSITA in no uncertain terms
`
`what decryption is and what decryption is not.
`
`Read The Controversial Sentence In Context
`
`2.
`Petitioner’s sole basis for broadly reading the “decrypting” terms to cover
`
`analog descrambling boils down to an erroneous interpretation of a single sentence
`
`from the specification that was taken out of context. (Pet., 4-5.) Although both
`
`Petitioner and the Board only quoted a part of this controversial sentence, it is
`
`worthwhile to carefully read the entire sentence in its full context—
`
`“It is obvious to one of ordinary skill in the art that the foregoing is
`presented by way of example only and that the invention is not to
`be unduly restricted thereby since modifications may be made in
`the structure of the various parts without functionally departing
`from the spirit of the invention. For example, the decryption
`cipher key information and/or algorithm instructions and/or the
`location or locations of said key information and/or instructions
`may be computed in other, more complex or less complex,
`
`
`
`11
`
`
`
`

`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`fashions. And for example, the transmitted programming may be
`processed through fewer than three steps of decryption or more
`than three. And for example, the “Wall Street Week”
`transmission may be of conventional analog television, and the
`decryptors 107, 224, and 231, may be conventional descramblers,
`well known in the art, that descramble analog television
`transmissions and are actuated by receiving digital key
`information.”
`
`Ex. 1003, 159:46-61.
`
`This quoted passage focuses on alternative embodiments. Rather than
`
`equating descrambling with decryption, the highlighted sentence states quite the
`
`opposite: “conventional (analog) descramblers” would be used in place of, or as an
`
`alternative to, the “decryptors, 107, 224, and 231” if and when “the ‘Wall Street
`
`Week’ transmission [is] of conventional analog television” instead of digital
`
`television programming. Read in the proper context, the sentence actually conveys
`
`to a POSITA (upon reviewing the whole sentence/passage): If the “Wall Street
`
`Week” program is transmitted as a conventional analog television signal, then the
`
`decryptors 107, 224, and 231, may accordingly be [replaced by] conventional
`
`descramblers to perform descrambling of the analog signal. Thus, this statement
`
`once again contrasts, rather than conflates, digital decryption with analog
`
`descrambling since it confirms a conventional analog television transmission
`
`
`
`12
`
`
`
`

`
`requires conventional (analog) descramblers instead of digital decryptors. (Ex.
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`2022, ¶63.)
`
`Indeed, a recent Markman decision involving the ’091 Patent noted that “the
`
`intrinsic record is not one passage” and found that “the intrinsic record as a whole
`
`shows that PMC reading of the passage is the correct one.” (Ex. 2023, 16-17
`
`(remarking: “The parties cannot seriously dispute that the specification, as a whole,
`
`talks about decryption and encryption in the context of digital operations.”).)
`
`Addressing the controversial sentence specifically, the district court finds: “The
`
`intrinsic record shows that descramblers and decryptors are different and that in
`
`analog situations, instead of decrypting, descrambling may be used.” (Ex. 2023,
`
`17.) Accordingly, the district court concluded that “decrypting” and “decryption”
`
`means “a method that uses a digital key in conjunction with an associated
`
`algorithm to decipher (render intelligible or usable) digital data.” Id at 17.
`
`PMC respectfully urges the Board to re-read the controversial sentence
`
`along with the surrounding passage to appreciate its true meaning.
`
`Notably, the priority document, which is the ’490 Patent specification, does
`
`not even contain the passage that is linchpin of Petitioner’s position. The ’490
`
`Patent is devoid of any discussion regarding scrambling, and describes decryption
`
`entirely in terms of deciphering digital data using digital keys and digital codes.
`
`
`
`13
`
`
`
`

`
`The claim construction inquiry requires consultation of the ’490 Patent
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`specification in addition to the ’091 Patent specification.
`
`3.
`
`“Mixed Analog/Digital Embodiments” & “Decrypting
`Programming”
`
`The Board alleges: “Patent Owner does not argue that the challenged claims
`
`do not encompass the ‘Wall Street Week’ embodiment that includes analog
`
`television signals mixed with digital signals.” (Dec., 15.) The Board also alleges:
`
`“If the claims cover such mixed analog/digital embodiments, then ‘the decryptors
`
`... may be conventional descramblers’ …” (Id.) The Board further points to the
`
`recitation of “decrypting programming” as proof that “decrypting” is broad enough
`
`to cover both analog and digital programming. (Id., 16-18.)
`
`PMC respectfully submits that it is improper to use the broad disclosures in
`
`the specifications of mixed analog/digital programming to enlarge the scope of
`
`“programming” beyond what its surrounding claim language calls for. It is settled
`
`law that a claim need not “be interpreted to cover each and every embodiment.”
`
`PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 747, 755
`
`(Fed. Cir. 2016), citing Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316
`
`(Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”).
`
`For example, the term “decrypting programming” is supported by the decryption of
`
`a digitally encoded recipe provided on its own channel separate from a television
`
`
`
`14
`
`
`
`

`
`program as disclosed in the 1981 specification. (Ex. 1009, 20:32-43.) Under
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`PMC’s construction of “decrypting,” “decrypting programming” is necessarily
`
`limited to the decryption of digital programming.3
`
`Unequivocal Statements During Prosecution
`
`4.
`In addition to the overwhelming support in the specifications, PMC also
`
`repeatedly and consistently confirmed, during all prosecution, reexamination, and
`
`litigation proceedings, that the “decrypting” terms are limited to a digital context.
`
`During prosecution of the ’091 Patent, PMC unequivocally argued, citing
`
`prior BPAI decisions, that “encryption requires a digital signal” and that
`
`“encryption and decryption … are not broad enough to read on scrambling and
`
`unscrambling.” (Ex. 1035, 10-11; Ex. 1037, 10-11; Ex. 1039, 10.) Even
`
`Petitioner’s own summary of the prosecution history (Pet., 9-11) confirms PMC’s
`
`unmistakable exclusion of analog scrambling/descrambling from the scope of
`
`encryption/decryption.
`
`In addition to the statements made during prosecution of the ’091 Patent,
`
`PMC also expressly limited the scope of encryption/decryption to digital signals
`
`while excluding scrambling/descrambling in other proceedings on related patents
`
`
`3 PMC notes that the Board appeared to have implicitly limited “programming” to
`
`television programming despite the broader description in the specifications.
`
`
`
`15
`
`
`
`

`
`or applications. See Ex. 2004, 30 (“Scrambling and encryption are different
`
`IPR2016-00755
`Patent No. 8,191,091
`
`
`terms in the art. In parti