UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No.: 8,559,635
`
`
`PETITIONER’S BRIEF ON REMAND
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`IPR2016-00754
`IPR2016-01520
`U.S. Patent No.: 8,559,635
`
`
`PETITIONER’S BRIEF ON REMAND
`
`
`
`
`
`
`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`The Federal Circuit’s Decision ..................................................................... 1
`The Federal Circuit’s Construction Of The Disputed Claim Term
`In The ’091 Patent Does Not Affect Any Of The Grounds Of
`Unpatentability For The Challenged Claims of the ’635 Patent ............... 5
`A.
`Claims 18, 20, 32, 33 Already Have An All-Digital
`Requirement, And The Prior Art Asserted Against These
`Claims Is All-Digital ............................................................................. 7
`1.
`The construction of these claims already includes that the
`“transmission” be all-digital ....................................................... 7
`The prior art asserted against these claims includes an
`“all-digital” transmission ............................................................ 8
`Claims 3, 4, 7, 13, 21, and 28-30 Are Not Implicated By The
`Federal Circuit’s Construction Of The “Disputed Term” ................... 10
`1.
`Claims 3, 4, 7, 13, 21, and 28-30 Do Not Include The
`“Disputed Term” Construed By The Federal Circuit ............... 10
`The Federal Circuit’s Opinion Does Not Require Any
`Change To The Constructions Of The
`“Encrypt”/“Decrypt” Terms ...................................................... 12
`Claims 4, 7, 13, 21, and 28-30 Are Invalid Even Under
`Patent Owner’s Rejected Constructions Of The
`“Encrypt”/”Decrypt” Terms ...................................................... 13
`III. Conclusion .................................................................................................... 18
`
`
`2.
`
`B.
`
`2.
`
`3.
`
`i
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`The Director granted review so that the Board could “address its claim
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`construction for the terms ‘encrypted’ and ‘decrypted’ in light of the Federal
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`Circuit’s decision in” Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d
`
`1336 (Fed. Cir. 2020) (“PMC ’091”), regarding U.S. Patent No. 8,191,091 (“the ’091
`
`patent”), a patent related to U.S. Patent No. 8,559,635 (“the ’635 patent”), at issue
`
`in these proceedings. IPR2016-00754, Paper 50 at 3; IPR2016-01520, Paper 47 at
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`3. Contrary to Patent Owner’s arguments to the Director, however, the Federal
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`Circuit expressly did not re-construe “encrypted” and “decrypted” in PMC ’091, or
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`find any error in the Board’s construction of those general terms.
`
`The holding and logic underlying the PMC ’091 opinion not only refutes
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`Patent Owner’s suggestion that it compels a different result here, it actually confirms
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`the correctness of the Board’s claim constructions and invalidity conclusions in its
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`Final Written Decisions in IPR2016-00754 (Paper 41, “FWD-754”) and IPR2016-
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`01520 (Paper 38, “FWD-1520”). As explained further below, all of the grounds of
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`unpatentability set forth in FWD-754 and FWD-1520 are still applicable and should
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`not be disturbed. See IPR2016-00754, Paper 51 at 3-4; IPR2016-1520, Paper 48 at
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`3-4.
`
`I.
`
`THE FEDERAL CIRCUIT’S DECISION
`In PMC ’091, the Federal Circuit construed the claim term “an encrypted
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`digital information transmission including encrypted information,” appearing in
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`1
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`independent claims 13 and 20 of the ’091 patent. PMC ’091, 952 F.3d at 1339. The
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`Federal Circuit found “the applicant’s repeated and consistent statements during
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`prosecution, along with its amendment to the same effect, are decisive as to the
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`meaning of the disputed claim term,” and held “that the disputed claim term is
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`limited to all-digital signals.” Id. at 1346. Because the grounds of unpatentability
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`for the claims that include the “disputed claim term” included a transmission of
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`mixed digital and analog signals, the Federal Circuit reversed the Board’s
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`unpatentability determination for those claims. Id.
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`The Federal Circuit’s decision that the “disputed claim term”—“an encrypted
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`digital information transmission including encrypted information”—was limited to
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`all-digital signals expressly did not extend to the terms “encrypt” and “decrypt”
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`generally. Indeed, the Federal Circuit agreed with the Board that “the ordinary
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`meaning of ‘encrypted’ does not impart a more precise understanding of the claim
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`limitation” because “the meaning of ‘encryption’—and particularly whether it
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`applied to analog or digital data—was ‘in flux’ in the 1980s.” Id. at 1341 n.3. The
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`Federal Circuit also agreed that the passages in the specification that Patent Owner
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`used to argue that “encrypted” and “decrypted” were limited to digital processes
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`“fall far short of defining the relevant terms through repeated and consistent use.”
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`Id. at 1343. Rather, “the Board’s construction is plausible in view of the
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`specification, which expressly contemplates that mixed digital and analog systems
`
`
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`2
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`are within the ‘spirit of the invention’ and the ‘Wall Street Week’ embodiment.” Id.
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`The Board’s construction was also “plausible in view of the claim language.” Id. at
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`1342.
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`The Federal Circuit in fact affirmed the Board’s invalidity finding for claims
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`26, 27, and 30 of the ’091 patent, which include the “encrypt” and “decrypt” terms,
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`but not the longer phrase “an encrypted digital information transmission including
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`encrypted information” contained in the claims meriting reversal. Claim 26 of the
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`’091 patent “recites ‘an information transmission including encrypted information,’
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`without the ‘digital’ modifier.” Id. at 1342. In its Final Written Decision regarding
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`claim 26 of the ’091 patent, the Board found that the prior art relied upon by
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`Petitioner disclosed decrypting “encrypted information” in the form of an analog
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`“scrambled video signal.” Apple Inc. v. Personalized Media Commc’ns, LLC,
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`IPR2016-00755, Paper 42 at 104-105. The Board stated “[t]he structure of the
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`challenged claims further shows … that encrypting and decrypting respectively
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`include scrambling and descrambling. In essence, Patent Owner’s argument that ‘it
`
`is [not] necessary to distinguish ‘encrypted digital information’ from ‘encrypted’
`
`information,’’ underlies the problem with Patent Owner’s claim construction
`
`argument—i.e., challenged claim 13 itself makes the distinction that Patent Owner
`
`urges must be ignored.” Id. at 105.
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`
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`3
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`The Federal Circuit affirmed the Board’s decision regarding claim 26,
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`endorsing the logic underlying that unpatentability decision. Although the
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`transmission of claim 26 includes “encrypted information,” the Federal Circuit held
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`that “the prosecution history statements and amendments that we found decisive
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`to the interpretation of ‘encrypted digital information transmission’ do not apply” to
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`the claims including the phrase “encrypted information.” PMC ’091, 952 F.3d at
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`1346.1 After drawing this distinction and refusing to extend the narrower
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`construction to these claims reciting “an information transmission including
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`encrypted information” and not an “encrypted digital information transmission
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`including encrypted information,” the Federal Circuit affirmed the Board’s
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`unpatentability decision with regard to claim 26 and its challenged dependent claims.
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`Id.
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`Thus, the Federal Circuit was clear that it was “the disputed claim term”—“an
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`encrypted digital information transmission including encrypted information”—and
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`not the basic terms or concepts of encryption and decryption more broadly, that was
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`“limited to all-digital signals.” Id. The Federal Circuit explicitly did not limit the
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`basic concepts of “encryption” and “decryption” to digital-only operations—as PMC
`
`
`1 All emphasis added unless otherwise noted.
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`
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`4
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`has previously urged to the Board and the Federal Circuit, and now does again on
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`remand—or otherwise alter the Board’s constructions of those terms.
`
`II. THE FEDERAL CIRCUIT’S CONSTRUCTION OF THE DISPUTED
`CLAIM TERM IN THE ’091 PATENT DOES NOT AFFECT ANY OF
`THE GROUNDS OF UNPATENTABILITY FOR THE CHALLENGED
`CLAIMS OF THE ’635 PATENT
`The Federal Circuit’s narrowed construction of the phrase “encrypted digital
`
`information transmission including encrypted information” in PMC ’091 does not
`
`necessitate any changes to the Board’s construction of terms found in claims 3, 4, 7,
`
`13, 18, 20, 21, 28-30, and 32-33 (“Challenged Claims”) of the ’635 patent, or to the
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`Board’s holding that the Challenged Claims are unpatentable as set forth in FWD-
`
`754 and FWD-1520. Indeed, changing the constructions of the “encrypt”/”decrypt”
`
`terms in these ‘635 FWDs would be flatly inconsistent with the Federal Circuit’s
`
`holding and reasoning set forth in PMC ’091.
`
`The Challenged Claims of the ’635 patent that include the phrase “encrypted
`
`digital information transmission”—a phrase that is part of the “disputed claim term”
`
`in the ’091 patent subject to the Federal Circuit’s narrowed construction—were
`
`already construed narrowly by the Board due to the presence of other language in
`
`the claim that made clear the digital-only requirement. These claims (18, 20, 32, 33)
`
`include not only an “encrypted digital information transmission,” but also further
`
`specify that the “encrypted digital information transmission … is unaccompanied by
`
`any non-digital information transmission.” Ex. 1003 at claims 18, 20, 32-33. In
`
`
`
`5
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`view of this plain language, the Board thus already construed those claims to be
`
`limited to all-digital signals. FWD-1520 at 27-28. And the Board found that the
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`specific prior art relied upon by Petitioner for those claims met the all-digital
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`requirement. FWD-1520 at 30-44.
`
`Patent Owner’s arguments on remand thus must necessarily relate to one of
`
`the other Challenged Claims, but none of the other claims include the “disputed
`
`claim term”—an “encrypted digital information transmission including encrypted
`
`information.” Ex. 1003 at claims 3, 4, 7, 13, 21, 28-30. These other claims only use
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`the “encryption”/”decryption” terms more generally. As explained above, the
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`reasoning behind the Federal Circuit’s opinion in PMC ’091 confirms that those
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`claims do not merit a narrow construction that would limit those claims to all-digital
`
`signals. See supra Section I. The Federal Circuit’s decision in PMC ’091 does not
`
`warrant changing any of Board’s claim constructions for the Challenged Claims—
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`and by extension, does not warrant any change in the analysis of the prior art.
`
`
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`6
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`A. Claims 18, 20, 32, 33 Already Have An All-Digital Requirement,
`And The Prior Art Asserted Against These Claims Is All-Digital2
`1.
`The construction of these claims already includes that the
`“transmission” be all-digital
`Only four of the Challenged Claims include a limitation requiring receipt of
`
`an “encrypted digital information transmission.” Ex. 1003 at 18, 20, 32, 33. In each
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`of those claims, however, the limitation goes on to state the “encrypted digital
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`information transmission” is “unaccompanied by any non-digital information
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`transmission.” Id. In other words, the “all-digital signals” requirement of the
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`Federal Circuit’s construction of “encrypted digital information transmission
`
`including encrypted information” in PMC ’091 was made express in the ’635
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`patent—as the Federal Circuit recognized when it discussed that claim term. PMC
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`’091, 952 F.3d at 1342. Like claims 13 and 20 of the ’091 patent, claims 18, 20, 32,
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`and 33 were amended during prosecution to specify that the transmission was an
`
`“encrypted digital information transmission,” and also amended to add the
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`“unaccompanied by any non-digital information transmission” requirement.
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`Compare Ex. 2012 at 1012-16 (application claims 40, 42, 55 (claims 18, 20, 32))
`
`and 1081 (application claim 56 (claims 33)) with Ex. 1003 at claims 18, 20, 32, 33.
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`The Board’s construction of this limitation was consistent with the Federal Circuit’s
`
`
`2 All citations in this section are to Papers and Exhibits in IPR2016-01520.
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`
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`7
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`holding in PMC ’091, as it held these claims to mean “the at least one encrypted
`
`digital information transmission does not include non-digital information such as
`
`analog information.” FWD-1520 at 27-28. Thus, nothing in PMC ’091 requires any
`
`change to the Board’s construction of this claim term, nor does it implicate the
`
`construction of any other term in these claims.
`
`2.
`
`The prior art asserted against these claims includes an “all-
`digital” transmission
`The Board has already found that the specific prior art relied upon by
`
`Petitioner for these claims meets the “all digital” requirement imposed by the plain
`
`language and the Board’s construction.
`
`Petitioner challenged claims 18, 20, and 32 as unpatentable as anticipated by
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`U.S. Patent No. 4,817,140 (“Chandra”), and claim 33 as unpatentable as obvious in
`
`view of Chandra and a 1986 article authored by Daniel Nachbar (“Nachbar”).3 Paper
`
`
`3 The Board agreed with Petitioner in IPR2016-01520 that claims 3, 4, 7, 13, 18,
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`20, 32, and 33 were not entitled to claim priority to the 1981 specification, and
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`thus the cited references were prior art to those claims. Paper 1 at 4-13; Paper 7
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`at 7-19; FWD-1520 at 8-19; Paper 40. Nothing in PMC ’091—a claim
`
`construction opinion—affects the Board’s priority analysis for any claims. And
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`Patent Owner argued in its Request for Director Review that the priority date
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`
`
`8
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`
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`1 at 15. Petitioner demonstrated that Chandra teaches the claim limitation receiving
`
`an “encrypted digital information transmission” that is “unaccompanied by any non-
`
`digital information transmission” in claims 18, 20, 32, and 33 because it discloses
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`receiving a transmission over a telephone connection that is all-digital. Paper 1 at
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`30, 42; Ex. 1001 ¶¶ 115-16, 143; Ex. 1041 at 8:14-19, 12:26-28, 14:15-41, 23:1-9,
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`25:13-19, 26:28-32. Patent Owner did not dispute that the signals Petitioner
`
`identified as part of the “encrypted digital information transmission” were digital, or
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`that Chandra teaches “decrypting,” even under Patent Owner’s proposed
`
`construction limiting it to a process applied to digital data. Paper 17 at 45-47, 59-
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`64. Patent Owner only disputed whether Petitioner had sufficiently demonstrated
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`that the “encrypted digital information transmission” was unaccompanied by any
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`non-digital information, but Patent Owner’s expert conceded that in Chandra’s
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`embodiment where information is transmitted over a telephone connection, “such a
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`transmission would be unaccompanied by any non-digital information.” Paper 17 at
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`60, 63; Paper 26 at 21 (quoting Ex. 1051 at 118:1-6).
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`The Board agreed that Chandra disclosed an “encrypted digital information
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`transmission … unaccompanied by any non-digital information transmission,”
`
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`issue be reconsidered for claims 3, 18, 20, 32, and 33, but that request was denied.
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`Compare Paper 45 at 10-15 with Paper 47 at 2-3.
`
`
`
`9
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`rejecting Patent Owner’s argument. FWD-1520 at 32-44. Nothing in the Federal
`
`Circuit’s PMC ’091 decision would require a different analysis of the prior art or a
`
`different outcome. And even under Patent Owner’s rejected constructions of the
`
`“encrypt”/“decrypt” terms, Chandra or Chandra in view of Nachbar render claims
`
`18, 20, 32, and 33 unpatentable. The decrypted signals in those claims are part of
`
`the all-digital transmission, and thus the decryption is done on digital data. Id.
`
`B. Claims 3, 4, 7, 13, 21, and 28-30 Are Not Implicated By The
`Federal Circuit’s Construction Of The “Disputed Term”
`1.
`Claims 3, 4, 7, 13, 21, and 28-30 Do Not Include The
`“Disputed Term” Construed By The Federal Circuit
`None of the other claims challenged in these proceedings require receiving an
`
`“encrypted digital information transmission,” and so none are implicated by the
`
`Federal Circuit’s construction of this “disputed term.”
`
`Nor do these claims include any similar language. To the contrary, the
`
`language of claims 13 (“receiving at least one information transmission”) and claims
`
`21 and 28-30 (“receiving a transmission comprising encrypted materials”) (Ex. 1003
`
`at claims 13, 21, 28-30) is far more similar to the language of claims 26, 27, and 30
`
`of the ’091 patent (“an information transmission including encrypted information”),
`
`which the Federal Circuit found to “include mixed digital and analog signals within
`
`their scope.” PMC ’091, 952 F.3d at 1346. Likewise, claims 4 and 7 recite
`
`“receiving programming, said programming having a first encrypted digital control
`
`
`
`10
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`signal portion and an encrypted digital information portion,” but do not include any
`
`positive or negative limitations that require the programming, or any transmission in
`
`which it is received, to be “limited to all-digital signals.” Ex. 1003 at claims 2, 4, 7.
`
`And claim 3 merely requires receiving at a remote transmitter station “a control
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`signal,” “one or more first instruct signals,” “one or more second instruct signals,”
`
`and “a code or datum,” and “transmitting from said remote transmitter station an
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`information transmission comprising said unit of programming, said one or more
`
`first instruct signals, and said one or more second instruct signals,” again with no
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`positive or negative limitations about whether the signals received or transmitted
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`must be all-digital signals. Id. at claim 3.
`
`There is nothing in the file history of the ’635 patent that would justify
`
`importing an “all-digital” limitation into these claims either. Unlike claims 13 and
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`20 of the ’091 patent, claims 3, 4, 7, 13, 21, and 28-30 were never amended to specify
`
`that the transmissions of information or programming were encrypted digital
`
`information transmissions. Compare IPR2016-01520, Ex. 2012 at 1008-15
`
`(application claims 23-25, 28, 34, 43, 50-52 (claims 2-4, 7, 13, 21, 28-30)) with Ex.
`
`1003 at claims 3, 4, 7, 13, 21, 28-30.
`
`
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`11
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`2.
`
`The Federal Circuit’s Opinion Does Not Require Any
`Change To The Constructions Of The “Encrypt”/“Decrypt”
`Terms
`Absent any express or implied requirement in claims 3, 4, 7, 13, 21, and 28-
`
`30 that any transmission is “limited to all-digital signals,” Patent Owner argues that
`
`the Board erred by adopting erroneous claim constructions for “encrypted” and
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`“decrypted,” and that these terms should have been “limited to all-digital processes.”
`
`IPR2016-00754, Paper 48 at 4–9; IPR2016-01520, Paper 45 at 4-9. But, as
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`discussed above, the Federal Circuit rejected this argument, and expressly affirmed
`
`the Board’s finding that claims 26 and 28-30 of the ’091 patent, requiring “an
`
`information transmission including encrypted information,” were invalid over prior
`
`art that disclosed descrambling analog video signals. See supra Section I. Thus, the
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`Federal Circuit’s decision in PMC ’091 does not warrant changing any of Board’s
`
`claim constructions for claims 3, 4, 7, 13, 21, and 28-30.
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`Because no change to any claim construction is warranted, there is no need
`
`for the Board to revisit its analysis of the prior art that it found to anticipate these
`
`claims or render them obvious. Instead, the Board should reaffirm its previous
`
`determinations that these claims are unpatentable. And as the Board recognized in
`
`its Order, “because both Decisions have now been vacated, all prior grounds of
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`unpatentability previously set forth by Petitioner remain viable.” IPR2016-00754,
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`Paper 51 at 2-3; IPR2016-01520, Paper 48 at 2-3. The Board instituted review of
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`
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`12
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`claims 4 and 7 as anticipated by U.S. Patent No. 4,886,770 (“Seth-Smith”) and claim
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`13 as anticipated by Chandra, but did not consider those arguments in FWD-1520
`
`because it had already found these claims invalid in FWD-754. FWD-1520 at 3-4.
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`For the reasons set forth in the Petition, Institution Decision, and Petitioner’s Reply,
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`the Board should further hold that claims 4, 7 and 13 are unpatentable on these
`
`grounds too.
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`3.
`
`Claims 4, 7, 13, 21, and 28-30 Are Invalid Even Under
`Patent Owner’s Rejected Constructions Of The
`“Encrypt”/”Decrypt” Terms
`As discussed above, there is nothing in the Federal Circuit’s PMC ’091
`
`decision that requires the Board to re-construe any terms in these claims or to
`
`reevaluate the prior art references relied upon by Petitioner. But even if the Board
`
`did adopt Patent Owner’s rejected constructions of the “encrypt”/“decrypt” terms—
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`which it should not do—claims 4, 7, 13, 21, and 28-30 (as well as claims 18, 20, 32,
`
`and 33, as discussed in Section II.A.2) would still be invalid in view of U.S. Patent
`
`No. 4,337,483 (“Guillou”) (IPR2016-00754 Grounds 1 and 2), Chandra (IPR2016-
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`01520 Ground 1), and Seth-Smith (IPR2016-01520 Ground 3).
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`13
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
`
`a.
`
`Claims 4, 7, 13, 21, and 28-30 Are Anticipated By Or
`Obvious Over Guillou4
`Claims 4, 7, 13, 21, and 28-30 would still be invalid over Guillou, even under
`
`Patent Owner’s rejected constructions of the “encrypt”/“decrypt” terms.
`
`There is no dispute that Guillou discloses decrypting encrypted digital
`
`information and encrypted digital signals. Nor can than there be, because Guillou
`
`expressly discloses the decryption of encrypted digital teletext data and associated
`
`digital control signals. Paper 1 at 12, 29; Ex. 1001 ¶¶ 41, 43, 103-06, 116, 150, 192;
`
`Ex. 1006 at 5:30-57, 8:15-9:12, 14:20-31, 15:42-16:17, 19:55-20:5, Fig. 7. Thus,
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`Patent Owner did not dispute that Guillou discloses “programming having a first
`
`encrypted digital control signal portion and an encrypted digital information
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`portion,” “decrypting said first encrypted digital control signal portion …,” or
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`“decrypting said encrypted digital information portion …,” as recited in claims 4 and
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`7. See Paper 15 at 49-63; see also Paper 23 at 9-17. Patent Owner did not dispute
`
`that Guillou discloses “receiving at least one information transmission,” “changing
`
`a decryption technique …,” or “decrypting a second of said plurality of signals on
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`the basis of said changed decryption technique,” as recited in claim 13. Id. And
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`Patent Owner did not dispute that Guillou discloses “receiving a transmission
`
`comprising encrypted materials,” “decrypting … a first portion of said encrypted
`
`
`4 All citations in this section are to Papers and Exhibits in IPR2016-00754.
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`
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`14
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`materials in said transmission,” or “decrypting … a second portion of said encrypted
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`materials,” as recited in claims 21 and 28-30. Id. Instead, all of the disputes raised
`
`by Patent Owner pertained to other elements of the claims that would not be
`
`impacted by any change in the constructions of the “encrypt”/“decrypt” terms. Id.
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`As such, to the extent that the Board revisits its analysis of claims 4, 7, 13, 21,
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`and 28-30 under Patent Owner’s rejected constructions, it should still reach the same
`
`conclusions that it did previously, and find these claims unpatentable in view of
`
`Guillou. FWD-754 at 25-45.
`
`b.
`Claim 7 Is Anticipated By Seth-Smith5
`
`In addition to being unpatentable over Guillou, Claim 7 is also anticipated by
`
`Seth-Smith, even under Patent Owner’s
`
`rejected constructions of
`
`the
`
`“encrypt”/“decrypt”
`
`terms.
`
` As Petitioner explained, Seth-Smith discloses
`
`“receiving both an encrypted digital control signal (i.e., encrypted system/service
`
`key) and encrypted digital information (i.e., encrypted teletext) on various lines of a
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`television programming signal.” Paper 1 at 46-47; Ex. 1001 ¶¶ 173-75; Ex. 1043 at
`
`5:41-44, 9:56-10:11, 12:17-31, 13:55-64, 14:17-18, 17:30-33, 30:35-37, 40:46-47.
`
`And again, as with the Guillou reference, Patent Owner did not dispute that Seth-
`
`Smith discloses “programming having a first encrypted digital control signal portion
`
`
`5 All citations in this section are to Papers and Exhibits in IPR2016-01520.
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`
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`15
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
`
`and an encrypted digital information portion,” “decrypting said first encrypted
`
`digital control signal portion …,” “decrypting said encrypted digital information
`
`portion …,” or any other element recited in claim 7. Paper 17 at 57-59. Instead,
`
`Patent Owner argued only that “Seth-Smith … is not prior art” (id.), which is an
`
`argument that the Board resolved in Petitioner’s favor when it determined that claim
`
`7 is not entitled to claim priority to the 1981 specification (Paper 7 at 7-10, 18-19).
`
`As discussed above, the Board instituted review of claim 7 as anticipated by
`
`Seth-Smith, but did not reach a final decision on this ground of unpatentability
`
`because claim 7 was already found to be unpatentable in IPR2016-00754. FWD-
`
`1520 at 3-4. Because FWD-1520 has been vacated and “all prior grounds of
`
`unpatentability previously set forth by Petitioner remain viable” (Paper 48 at 2-3),
`
`the Board should now reach a final determination that this claim is unpatentable in
`
`view of Seth-Smith, even if it revisits its analysis of claim 7 under Patent Owner’s
`
`rejected constructions.
`
`c.
`Claim 13 Is Anticipated By Chandra6
`In addition to being unpatentable over Guillou, Claim 13 is also anticipated
`
`by Chandra, even under Patent Owner’s rejected constructions of
`
`the
`
`“encrypt”/“decrypt” terms.
`
`
`6 All citations in this section are to Papers and Exhibits in IPR2016-01520.
`
`
`
`16
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`
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`There is no dispute that Chandra discloses decrypting encrypted digital
`
`signals. Nor can than there be, because as discussed above with respect to claims
`
`18, 20, 32, and 33, Chandra discloses decrypting portions of an all-digital
`
`information transmission that is received over a telephone connection. Paper 1 at
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`30, 42; Ex. 1001 ¶¶ 115-16, 143; Ex. 1041 at 8:14-19, 12:26-28, 14:15-41, 23:1-9,
`
`25:13-19, 26:28-32. Thus, Patent Owner did not dispute that Chandra discloses
`
`“receiving at least one information transmission,” “changing a decryption technique
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`…” or “decrypting a second of said plurality of signals on the basis of said changed
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`decryption technique …,” as recited in claim 13. Paper 17 at 62-64.
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`Rather, the only substantive dispute that Patent Owner raised with respect to
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`Chandra’s disclosures pertains to the “passing” limitation of claim 13, id. at 63-64,
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`which is not impacted by the Federal Circuit’s construction, nor would it be impacted
`
`by any change in the construction of the “encrypt”/“decrypt” terms. And as
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`Petitioner explained in its Reply, Patent Owner’s argument with respect to the
`
`passing limitation is predicated on a misunderstanding or mischaracterization of
`
`Petitioner’s position. Paper 26 at 21-22. Patent Owner also argued that “Chandra is
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`not prior art under the 1981 priority date” (Paper 17 at 62), which is an argument
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`that the Board resolved in Petitioner’s favor when it determined that claim 13 is not
`
`entitled to claim priority to the 1981 specification (Paper 7 at 15-16, 18-19).
`
`
`
`17
`
`
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
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`As discussed above, the Board instituted review of claim 13 as anticipated by
`
`Chandra, but did not reach a final decision on this ground of unpatentability because
`
`claim 13 was already found to be unpatentable in IPR2016-00754. FWD-1520 at 3-
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`4. Because FWD-1520 has been vacated and “all prior grounds of unpatentability
`
`previously set forth by Petitioner remain viable” (Paper 48 at 2-3), the Board should
`
`now reach a final determination that this claim is unpatentable in view of Chandra,
`
`even if it revisits its analysis of claim 13 under Patent Owner’s rejected
`
`constructions.
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`III. CONCLUSION
`Nothing in PMC ’091 warrants a change to the construction of the limitations
`
`of the Challenged Claims, or a change to the Board’s analysis of the prior art that it
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`previously found rendered the Challenged Claims unpatentable. Claims 18, 20, 32,
`
`and 33 already have been construed to include the “all-digital transmission”
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`requirement that the Federal Circuit placed on the “encrypted digital information
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`transmission” in claims 13 and 20 of the ’091 patent. If the remaining Challenged
`
`Claims are comparable to anything in PMC ’091, they are akin to claim 26 of the
`
`’091 patent—a claim the Federal Circuit affirmed was unpatentable over prior art
`
`that disclosed descrambling of analog video signals. The Board’s original decisions
`
`on unpatentability were correct and should be reinstated, and the Board should
`
`
`
`18
`
`
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
`
`further hold that the grounds of unpatentability for claims 4, 7, and 13 that the Board
`
`did not previously reach also render the claims unpatentable.
`
`Date: April 15, 2022
`
`Respectfully submitted,
`/s/ Marcus E. Sernel
`
`Marcus E. Sernel (Reg. No. 55,606)
`Gregory S. Arovas (Reg. No. 38,818)
`Alan Rabinowitz (Reg. No. 66,217)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`marc.sernel@kirkland.com
`garovas@kirkland.com
`arabinowitz@kirkland.com
`
`Attorneys For Petitioner
`
`19
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`
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`IPR2016-00745 and -01520: Petitioner’s Brief on Remand
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER’S
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`BRIEF ON REMAND was served on April 15, 2022 to the following attorneys of
`
`record by electronic transmission:
`
`Douglas Kline
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, Massachusetts 02110
`dkline@goodwinlaw.com
`
`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`Reston, Virginia
`tscott@pmcip.com
`
`Date: April 15, 2022
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel
`
`20
`
`
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