Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 8
`Entered: September 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00754
`Patent 8,559,635 B1
`_______________
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 1
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 8
`Entered: September 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00754
`Patent 8,559,635 B1
`_______________
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 1
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`I.INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a petition to institute an inter partes
`review of claims 1–4, 7, 13, 18, 20, 21, 28–30, 32 and 33 (“challenged
`claims”) of U.S. Patent No. 8,559,635 B1 (Ex. 1003, “the ’635 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Personalized Media
`Communications LLC (“Patent Owner”) filed a preliminary response.
`Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude Petitioner has
`established a reasonable likelihood it would prevail with respect to at least
`one of the challenged claims. Accordingly, for the reasons that follow, we
`institute an inter partes review.
`
`B. Additional Proceedings
`Petitioner informs us that the ’635 patent is the subject of a lawsuit:
`Personalized Media Communications, LLC v. Amazon.com, Inc., No. 2:15-
`cv-1366-JRG–RSP (E.D. Tex. filed July 30, 2015). Pet. 59. Petitioner also
`lists a number of related patents involved in district court cases and other
`related patents involved in inter partes reviews. Id. at 59.
`
`
`
`
`
`2
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 2
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`C. The ’635 Patent
`The ’635 patent is titled “Signal Processing Apparatus and Methods”
`and generally relates to a unified system of programming communication.
`Ex. 1003, Abstr. The challenged claims relate to methods of controlling the
`decryption of programming at a subscriber station or receiver station.
`Claim 2 is reproduced below:
`2. A method for controlling the decryption of programming at a
`subscriber station, said method comprising the steps of:
`receiving programming, said programming having a first
`encrypted digital control signal portion and an encrypted digital
`information portion;
`detecting said first encrypted digital control signal portion of said
`programming;
`passing said first encrypted digital control signal portion of said
`programming to a first decryptor at said subscriber station;
`decrypting said first encrypted digital control signal portion of
`said programming using said first decryptor at said subscriber
`station;
`passing said encrypted digital information portion of said
`programming and the decrypted control signal portion to a
`second decryptor at said subscriber station;
`decrypting said encrypted digital information portion of said
`programming using said second decryptor at said subscriber
`station based on the decrypted control signal portion; and
`presenting said programming.
`Id. at 286:7–28.
`The ’635 patent describes access control to transmitted content at a
`receiver station. Ex. 1003, Abstr. Figure 4 of the ’635 patent, reproduced
`below, illustrates a receiver station:
`
`3
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 3
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`
`
`As shown above in Figure 4, the ’635 patent discloses a receiver station
`having signal processor 200 to control tuners 214, 215, and 223, the
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`230. Id. at 148:30–35. In one example described in the Specification, the
`“Wall Street Week” program is transmitted to the receiver station by a cable
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`end “encrypts the digital audio information of said transmission, in a fashion
`well known in the art, using particular cipher algorithm C and cipher key Ca,
`then transmits the information of said program on cable channel 13.” Id. at
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`local-cable-enabling-message (#7), is transmitted with instructions that
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`the instructions causes controller 20 to receive the cable channel
`transmission, select the information of a cipher key Ca from among the
`
`4
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 4
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`information portion, and transfer the cipher key to decryptor 107. Id. at
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`decryptor 107 then decrypts “using said key information and selected
`decryption cipher algorithm C, and output[s] the decrypted information of
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`152:48–51.
`Subsequently, a second SPAM message that consists of an “01”
`header provides “1st-stage-enable-WSW-program” instructions as the
`information segment information. Id. at 153:38–43. Executing the “1st-
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`first stage of decrypting the video information of the “Wall Street Week”
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`received information using decryption cipher key Ba and decryption cipher
`algorithm B. Id. at 154:28–33.
`A third SPAM message provides “2nd-WSW-program enabling-
`message” instructions, causing the controller to affect a second stage of
`decrypting the digital video information of “Wall Street Week.” Id. at
`156:62–157:5. The second stage of decrypting the video information of the
`“Wall Street Week” program transmission is completed using the decryption
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`station to commence the transfer of the decrypted television information of
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`Id. at 159:55–59.
`
`5
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 5
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–4, 7, 13, 18, 20, 21,
`28–30, 32 and 33 of the ’635 patent based on the following grounds:
`Reference(s)
`Basis
`Claims Challenged
`Guillou1
`§ 102 1–3, 7, 21, and 29
`Guillou
`§ 103 4, 13, 18, 20, 28, 30, 32, and 33
`Aminetzah2
`§ 103 3, 21, and 28–30
`Aminetzah in view of Bitzer3
`§ 103 1, 2, 4, 7, 18, 20, and 33
`
`
`II. ANALYSIS
`
`A. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,4 the Board will interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the
`Specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews).
`Petitioner and Patent Owner dispute several claim terms that require
`construction. Most of the terms do not require express construction at this
`stage. 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). On
`
`
`1 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”).
`2 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Block”).
`3 US Patent No. 3,743,767, issued July 3, 1973 (Ex. 1009) (“Bitzer”).
`4 Pub. L. No. 112-29,125 Stat. 284 (2011).
`
`6
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 6
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`this preliminary record, the issues presented show that the following terms
`or phrases require express construction.
`1. “decrypt”
`Patent Owner argues that the term “decrypt” should be construed to
`exclude descrambling of an analog television transmission. Prelim. Resp. 8
`(citing Ex. 2001 ¶ 47). Petitioner argues to the contrary that a person of
`ordinary skill in the art would have understood “decrypt” and “descramble”
`as interchangeable terms that would apply to both analog and digital data.
`Pet. 4 (citing Ex. 1001 ¶¶ 62–65). Petitioner notes that in the previous and
`related inter partes review proceedings, the Board rejected Patent Owner’s
`similar proposals to construe “decrypting” to exclude descrambling. Pet. 3
`(citing. Ex. 1011, IPR2014-01533, Decision on Institution, Paper 7, 7–11;
`Ex. 1013, IPR2014-01532, Decision on Institution, Paper 8, 25–26).
`Additionally, Petitioner notes that the District Court for the Eastern District
`of Texas rejected Patent Owner’s argument that decrypting excludes
`descrambling. Pet. 4 (citing Ex. 1017, Personalized Media Communication,
`LLC v. Motorola, Inc., No. 2:08-cv-70, 2011 WL 4591898 (E.D. Tex. Sept.
`30, 2011), 29).
`The parties have proffered these same arguments in many of the
`previous proceedings, and we have determined consistently that the term
`“decryptor” includes a descrambler. See e.g., Amazon.com, Inc. v.
`Personalized Media Communication, LLC, Case No. IPR2014-01532 (“the
`’1532 IPR”), slip op. at 7–10 (PTAB March 29, 2016) (Paper 57) (“’1532
`Final Decision”). We see no reason to depart from that conclusion in this
`case. Our analysis primarily rest upon the passage from the specification of
`the ’635 patent reproduced below:
`
`7
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 7
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`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, 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, 160:45–55 (emphasis added). Contrary to Patent Owner’s
`argument, the ’635 patent describes that even the analog television
`transmission can be actuated by receiving digital key information. See id.
`Despite Patent Owner’s many citations to related patents and related
`litigation, Patent Owner fails to cite to any evidence in the record directed
`specifically to the ’635 patent of a disavowal or waiver of the express
`statement in specification of the ’635 patent that decryptors may be
`descramblers. Accordingly, we construe the term “decrypt” with respect to
`the ’635 patent to include descrambling.
`2. “processor”
`Petitioner argues that in the ’1532 IPR, the Board correctly construed
`“processor” to mean “a device that operates on data.” Pet. 5 (citing Ex.
`1013, 7–8). On the other hand, Patent Owner argues that term processor
`should mean “a digital electronic device that processes information by
`operating on data according to instructions.” Prelim. Resp. 13. Patent
`Owner’s arguments are similar to those previously made and dismissed by
`the Board in the related inter partes review proceedings. See e.g., Prelim.
`Resp. 13–15; ’1532 Final Decision, 11–12.
`
`8
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 8
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`Petitioner points out that in related district court litigation, Patent
`Owner previously proposed construing the term “processor” as “any device
`capable of performing operations on data.” Pet. 5 (citing Ex. 1016, 12). The
`disclosures discussed above support Patent Owner’s district court
`construction. We also incorporate-by-reference our construction of processor
`in the ’1532 IPR, which relies on the same 1987 specification in a related
`patent. See ’1532 Final Decision, 11–12. Patent Owner fails to persuade us
`that there is any reason to depart from our previous construction of
`“processor.” Accordingly, consistent with our construction in the ’1532
`Final Decision, we determine that the broadest reasonable construction of
`“processor” is “a device that operates on data.”
`
`
`3. “at least one encrypted digital information transmission is
`unaccompanied by any non-digital information
`transmission”
`Petitioner proposes that the claim limitation “at least one encrypted
`digital information transmission is unaccompanied by any non-digital
`information transmission” recited in claim 18, and similarly in claims 20, 32,
`and 33, should be construed to mean “a digital information transmission,
`unaccompanied by any non-digital information transmission, at least a
`portion of which is encrypted.” Pet. 5. Patent Owner proposes that the
`limitation should be construed to mean “receiving information in at least one
`encrypted digital information transmission that does not include any analog
`component.” Prelim. Resp. 16 (citing Ex. 2001 ¶¶ 83–85).
`Patent Owner argues that that this limitation is not satisfied by the
`receiving of an analog transmission that includes digital signals, because
`such a transmission includes analog components. Id. (citing Ex. 2001 ¶ 84).
`
`9
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 9
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`Patent Owner also contends that it inserted this limitation during prosecution
`to distinguish the claimed invention from a prior art system that receives a
`composite analog/digital transmission. Id. (citing Ex. 2016, 1331).
`Specifically, Patent Owner argued during the prosecution of the ’635 patent
`that the prior art reference of Davidson failed to teach the claimed invention
`because Davidson’s “transmission is always a composite of analog and
`digital components.” Ex. 2016, 1331.
`In view of the plain language of the claim limitation, we determine
`that the “at least one encrypted digital information transmission” must not
`include any non-digital information in at least one transmission.
`Accordingly, we determine the broadest reasonable construction of the
`limitation “at least one encrypted digital information transmission is
`unaccompanied by any non-digital information transmission” recited in
`claim 18, and similarly in claims 29, 32, and 33 to mean “the at least one
`encrypted digital information transmission does not include non-digital
`information such as analog information.”
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`
`10
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 10
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 2016 WL 3974202, No. 2015-1300, slip
`op. at 25 (Fed. Cir. July 25, 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinations of prior
`art.
`
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`
`11
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 11
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`C. Level of Ordinary Skill in the Art
`According to Petitioner’s Declarant, Mr. Wechselberger, a person of
`ordinary skill in the art relevant to the ’635 patent would have “bachelor’s
`degree in electrical engineering, or equivalent experience, and two to four
`years of experience in the broadcast or cablecast television transmission
`fields.” Ex. 1001 ¶ 81. Similarly, Patent Owner’s Declarant Dr. Weaver
`defines a person of ordinary skill in the art relevant to the ’635 patent to
`have a “bachelor’s degree or equivalent in digital electronics, electrical
`engineering, computer engineering, computer science, or a related technical
`degree, with 2-5 years of post-degree work experience in system engineering
`(or equivalent).” Ex. 2001 ¶ 31.
`Based on our review of the ’635 patent, the types of problems and
`solutions described in the ’636 patent and cited prior art, and the testimony
`of Petitioner’s declarant and Patent Owner’s declarant, we adopt, for
`purposes of this decision, Patent Owner’s definition of a person of ordinary
`skill in the art at the time of the claimed invention. Based on the stated
`qualifications of Mr. Wechselberger (Ex. 1006 ¶¶ 9–24) and Dr. Weaver
`(Ex. 2001 ¶¶ 2–15), we determine Petitioner’s Declarant meets the
`requirements of this definition and Patent Owner’s Declarant meets the
`requirements of this definition. We note that the applied prior art also
`reflects the appropriate level of skill at the time of the claimed invention.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`
`
`
`
`12
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 12
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`D. Asserted Anticipation and Obviousness Ground Based on Guillou
`1. Overview of Guillou
`Guillou is titled “Text Video-Transmission System Provided With
`Means For Controlling Access To The Information” and describes a system
`having an information emitting center, including an encryption means using
`an operating key, and receiving stations, which provides a decryption means
`using the operating key. Ex. 1006, Abstr. Figure 7 of Guillou illustrates one
`embodiment of system, and is reproduced below:
`
`
`As shown above in Figure 7, Guillou discloses emitting center 2, including
`automatic encryption means 24, and receiving station 4, including automatic
`decryption means 38. Id. at 10:3–42. Guillou discloses that automatic
`decryption means 38 includes discriminator 42, adapted to distinguish
`
`13
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 13
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`among coded octets, and logic circuit 46 to output the decoded octets dj to
`display means 20. Id. at 10:41–56. Additionally, Guillou discloses restoring
`circuit 110 for restoring the operating key K from message Mi. Id. at 16:1–
`7. Message forming circuit 102 forms messages Mi using the subscriber’s
`keys Ci and the operating key K according to an algorithm, Mi = FCi(K). Id.
`at 15:51–57. Additionally, restoring circuit 110 in receiving station 4
`receives the messages Mi and relies upon an algorithm, K = GCi(Mi), to
`restore the signal corresponding to the operating key K used in the emitting
`station. Id. at 16:1–10. Guillou also discloses that “[a]s soon as a
`distribution centre generates a new operating key K, it calculates, for each
`current subscribers’ key in use Ci for this service, a message Mi by means of
`an algorithm Mi = FCi(K), with the keys Ci acting as parameters.” Id. at
`8:44–48.
`
`
`2. Analysis of Asserted Anticipation by Guillou and Obviousness
`over Guillou
`Petitioner argues that claims 1–3, 7, 21, and 29 are anticipated by
`Guillou. Pet. 11–40. Petitioner also argues that claims 4, 13, 18, 20, 28, 30,
`32, and 33 would have been obvious over Guillou. Pet. 11–40.
`
`
`a. Alleged Anticipation of Claims 1 and 2
`Petitioner contends that for many of the same reasons Guillou
`anticipates claims 1 and 2. Pet. 9–16, 17–18. As the Petitioner focuses its
`analysis on claim 2, we will begin with an analysis of claim 2. Generally,
`Petitioner argues that claim 2 of the ’635 patent is virtually identical to claim
`1 of ’304 patent previously at issue in the ’1532 IPR. Id. at 11. In the ’1532
`Final Decision, we determined that claim 1 of ’304 patent had been shown
`
`14
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 14
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`by Petitioner to be unpatentable as obvious in view of Guillou. See ’1532
`Final Decision, 64. Petitioner argues that the only element of claim 1 of
`’304 patent that Patent Owner previously disputed was whether Guillou
`disclosed two decryptors instead of the claimed single decryptor, and
`Petitioner argues that claim 2 in the ’635 patent here recites the use of a first
`and second decryptor. Pet. 11 (citing Ex. 1010, 52; Ex. 1001 ¶ 114).
`Petitioner argues that Guillou discloses the method recited in claim 2
`by disclosing a method for controlling the decryption of programming (i.e.,
`teletext programming) at a subscriber station (i.e., receiving station 4),
`including a video transmission system that uses a “double-key” encryption
`scheme to control access to teletext programming at a receiver. Pet. 11
`(citing Ex. 1001 ¶¶ 115, 100–102; Ex 1006, Abstract, 1:7–12, 8:15–9:12,
`9:48–10:66, 15:42–16:17). Petitioner argues that the claimed “receiving
`programming, said programming having a first encrypted digital control
`signal portion and an encrypted digital information portion” is met by the
`disclosure of Guillou’s message Mi and encrypted teletext data Dj. Pet. 12
`(citing Ex. 1001 ¶¶ 116, 103–106). Specifically, Petitioner argues that
`Guillou discloses that teletext data dj is encrypted using operating key K at
`emitting center 2 to form encrypted teletext data Dj and operating key K is
`encrypted using each subscriber key Ci to form a set of encrypted messages
`Mi. Pet. 12 (citing Ex. 1006, 5:30–57, 8:39–48, 14:20–31, 15:42–64, Fig. 7;
`Ex. 1001 ¶¶ 104, 106).
`Furthermore, Petitioner argues that the claimed “detecting said first
`encrypted digital control signal portion of said programming” is met by the
`disclosure of Guillou’s of video-data separator 142, selection circuit 143,
`and decoding circuit 145 detecting and extracting encrypted message Mi and
`
`15
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 15
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`encrypted teletext data Dj. Pet. 13 (citing Ex. 1006, 15:64–16:10, 19:4–15,
`19:55–20:17, 20:42–52, Fig. 9; Ex. 1001 ¶¶ 107–108). Petitioner argues that
`the claimed “passing said first encrypted digital control signal portion of said
`programming to a first decryptor at said subscriber station” is met by
`Guillou’s disclosure of passing encrypted message Mi to a first decryptor, K
`restoring circuit 110 at the subscriber station. Pet. 13 (citing Ex. 1006,
`15:64–16:10, 19:55–20:17, 20:40–52, Fig. 10; Ex. 1001 ¶ 109). Petitioner
`also argues that the claimed “decrypting said first encrypted digital control
`signal portion of said programming using said first decryptor at said
`subscriber station,” is met by Guillou’s disclosure that K restoring circuit
`110 decrypts the appropriate message Mi using the subscriber’s key Ci to
`restore operating key K. Pet. 13–14 (citing Ex. 1006, 15:64–16:10, 20:53–
`21:14, Fig. 10; Ex. 1001 ¶ 110).
`Petitioner relies upon Guillou’s disclosure of passing the encrypted
`teletext data Dj and the operating key K to the second decryptor, including
`decoding octet generator 26’, discriminator 42, and XOR gate 46 for the
`limitation of “passing said encrypted digital information portion of said
`programming and the decrypted control signal portion to a second decryptor
`at said subscriber station” recited in claim 2. Pet. 14 (citing Ex. 1006 10:41–
`56, 20:29–39, Fig. 10; Ex. 1001 ¶¶ 120–121). Petitioner argues that the
`second decryptor in Guillou, including decoding octet generator 26’,
`discriminator 42, and XOR gate 46, performs the claimed step of
`“decrypting said encrypted digital information portion of said programming
`using said second decryptor.” Pet. 15 (citing Ex. 1006, 10:41–56, 20:29–39,
`Fig. 10; Ex. 1001 ¶¶ 122, 111–112). Finally, Petitioner argues that Guillou’s
`disclosure regarding presenting the teletext to the subscriber via display
`
`16
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 16
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`means 20 meets the claimed limitation of “presenting said programming.”
`Pet. 16 (citing Ex. 1006, 1:7–12, 18:61–19:3, Fig. 7; Ex. 1001 ¶¶ 123, 113).
`Patent Owner does not present separate arguments specifically
`directed at Petitioner’s challenges that Guillou anticipates claims 1 and 2.
`Based on the foregoing discussion and preliminary record, Petitioner
`establishes a reasonable likelihood of prevailing in showing that Guillou
`anticipates claims 1 and 2.
`
`
`b. Alleged Obviousness of Claim 3
`Claim 3 recites “receiving a control signal which operates at the
`remote transmitter station to control the communication of a unit of
`programming and one or more first instruct signals and communicating said
`control signal to said remote transmitter station.” With respect to claim 3,
`Petitioner argues that Guillou discloses the claimed method of controlling a
`remote transmitter station (emitting center 2) to communicate program
`material (encrypted teletext data) to a subscriber station (receiving station 4)
`and controlling the subscriber station to process or output a unit of
`programming (teletext programming). Pet. 36–37 (citing Ex. 1001 ¶¶ 124–
`126). Petitioner argues that Guillou discloses these claim limitations by
`disclosing a control signal (operating key K) which operates at the remote
`transmitting station (emitting center 2) to control the communication of a
`unit of programming (teletext programming) and a first instruct signal
`(encrypted messages Mi) and communicating the control signal to the remote
`transmitter station. Pet. 37 (citing Ex. 1001 ¶¶ 127–131).
`Patent Owner argues that Guillou fails to disclose “receiving a control
`signal which operates at the remote transmitter station to control the
`
`17
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 17
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`communication of a unit of programming and one or more first instruct
`signals,” because operating key K does not operate at the emitting center 2
`to control the communication and programming of encrypted messages Mi
`(the alleged one or more first instruct signals). Prelim. Resp. 44 (citing
`Ex. 2001 ¶¶ 108–110). More particularly, Patent Owner argues that
`operating key K does not control Guillou’s emitting center to communicate
`the teletext programming and has no effect on the transmission of teletext
`programming. Prelim. Resp. 44. Patent Owner’s Declarant Dr. Weaver
`testifies that “Guillou’s emitting center transmits teletext programming in
`cycles, regardless of when the operating key K is generated.” Ex. 2001 ¶
`108 (citing Ex. 1006, 2:27–42 (emitting center transmits teletext “cyclically
`with a periodicity of 4 seconds.”)). Dr. Weaver further states that the
`generation of a new operating key K only causes the components of the
`emitting center to transmit an updated access control page to the receiver
`station and does not cause the transmitting of teletext. Id. Petitioner’s
`Declarant Dr. Wechselberger, however, opines that Guillou’s operating key
`K satisfies this claim 3 limitation because “[o]perating key K operates to
`control the communication of teletext data dj by controlling access to the
`data through encryption.” Ex. 1001 ¶ 130. Patent Owner’s Declarant
`Dr. Weaver disagrees and states “[c]ontrolling the receiver’s access to the
`data by encrypting the teletext data dj does not ‘control the communication’
`of teletext dj.,” because “the data dj is communicated to the subscriber
`stations irrespective of which operating key K is being used.” Ex. 2001 ¶
`109.
`
`We have reviewed the arguments from Petitioner and Patent Owner,
`as well as testimony of both Mr. Wechselberger and Dr. Weaver. Under
`
`18
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 18
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`Rule 37 CFR § 42.108(c), any genuine issues of material fact should be
`viewed in the light most favorable to the petitioner solely for purposes of
`deciding whether to institute an inter partes review. Even viewing
`Mr. Wechselberger’s testimony in the light most favorable to Petitioner, we
`determine Petitioner fails to sufficiently establish that Guillou discloses the
`claimed “receiving a control signal.” We are persuaded at this stage of the
`proceeding by Patent Owner’s contention, as supported by Dr. Weaver’s
`testimony, that the cited portion of Guillou fails to disclose the claimed
`“receiving a control signal” because Guillou describes that emitting center 2
`transmits teletext “cyclically with a periodicity of 4 seconds,” while the
`emitting center 2 generates and transmits an operating key K using a much
`longer interval, in the order of “a few minutes.” Ex. 1006, 2:27–42, 10:4–7.
`Thus, we are not persuaded, based on this record, that operating key K
`controls emitting center 2 to communicated teletext programming.
`Based on the record before us, and in view of these deficiencies in the
`application of Guillou to independent claim 3 in Petitioner’s challenge, we
`determine that Petitioner fails to demonstrate a reasonable likelihood of
`prevailing in its challenge to claim 3 as being anticipated by Guillou.
`
`
`c. Alleged Obviousness of Claim 4
`Claim 4 requires “said programming further includes encrypted
`video,” which Petitioner argues is taught by the disclosure in Guillou of a
`“video-transmission” system with encrypted teletext programming that
`includes text and simple graphics that may be non-static. Pet. 16 (citing Ex.
`1006, 1:7–62; Ex. 1001 ¶ 141). Patent Owner counters that Guillou’s
`disclosure of teletext does not teach the claim 4 requirement of “video”
`
`19
`
`PMC Exhibit 2032
`Apple v. PMC
`IPR2016-01520
`Page 19
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`because teletext is static, whereas video shows movement and changes
`within an image. Prelim. Resp. 60 (citing Ex. 2001 ¶ 122).
`Contrary to Patent Owner’s argument, Declarant Mr. Wechselberger
`states that it “was well known that [] digital programming services included
`text and/or graphics used to generate visuals for a variety of programming,
`including news programs, weather services, educational programs, etc.”
`Ex. 1001 ¶ 281. As Mr. Wechselberger describes “[s]uccessive frames of
`text and/or graphics presented on the display means 20 constitutes video.”
`Id. Accordingly, we are not persuaded by Patent Owner’s argument. Based
`on the foregoing discussion and preliminary record, Pet
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
