Paper No. 14
`
`Trials@uspto.gov
`Filed: September 20, 2016
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`
`
`Case IPR2016-00755
`Patent 8,191,091
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`Case IPR2016-00755
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`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition requesting an inter partes
`review of claims 13–16, 18, 20, 21, 23, 24, 26, 27, and 30 (“the challenged
`claims”) of U.S. Patent No. 8,191,091 (Ex. 1003, “the ’091 patent”). Paper
`1 (“Pet.”). Patent Owner, Personalized Media Communications, LLC, filed
`a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`The ’091 patent claims effective continuation-in-part (CIP) status to
`U.S. Pat. No. 4,696,490 (Ex. 1009) (the “’490 patent” (filed Nov. 3, 1981)).
`Addressing a priority date issue involving the challenged claims of the ’490
`patent raised during a teleconference with the panel, Petitioner filed a
`Preliminary Reply to Patent Owner’s Preliminary Response (Paper 10 (“Pet.
`Prelim. Reply”)) and Patent Owner filed a Sur-Reply in Response to
`Petitioner’s Preliminary Reply on Priority Date (Paper 12 (“PO Sur-
`Reply”)). See Paper 8 (Order Authorizing Pet. Prelim. Rep. and PO Sur-
`Reply); Ex. 1041 (Transcript). Petitioner relies on the Declaration of
`Anthony J. Wechselberger. Ex. 1001 (“Wechselberger Declaration”).
`Patent Owner relies on the Declaration of Alfred C. Weaver, Ph.D. Ex.
`2001 (“Weaver Declaration”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless the Director determines . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” We determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the unpatentability of at least one claim
`and institute inter partes review of the challenged claims.
`
`
`
`2
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`A. Related Proceedings
`Petitioner states that the ’091 patent is involved in Case No. 2:15-cv-
`01366-JRG-RSP (E.D. Tex. filed July 30, 2015). Pet. 58. Petitioner also
`lists a number of related patents involved in district court cases, and other
`related patents involved in inter partes reviews. Id. at 58–59.
`B. The ’091 Patent (Ex. 1007)
`The ’091 patent provides a conventional scrambled broadcast program
`containing digital signal information. Ex. 1003, 18:41–62. For example,
`“[t]he present invention employs signals embedded in programming.” Id. at
`7:50–51. The invention seeks to overcome alleged deficiencies in the prior
`art: “The prior art . . . . has no capacity for . . . controlling the decryption of
`said programming, let alone doing so on the basis of signals that are
`embedded in said programming that contain keys for the decryption of said
`programming.” Id. at 5:15–23. “It has no capacity for decrypting combined
`media programming.” Id. at 5:38–39.
`The ’091 patent describes “programming” broadly: “The term
`‘programming’ refers to everything that is transmitted electronically to
`entertain, instruct or inform, including television, radio, broadcast print, and
`computer programming was well as combined medium programming.” Id.
`at 6:31–34 (emphasis added).
`
`
`
`
`
`
`
`3
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`Figure 2A of the ’091 patent follows:
`
`
`
`Figure 2A depicts conventional amplitude demodulator 32 for
`receiving standard television signals having embedded digital information
`therein:
`
`In FIG. 2A, . . . [t]he television channel signal . . . passes
`to a standard amplitude demodulator, which uses standard
`demodulator techniques, well known in the art, to define the
`television baseband signal. . . . [A] digital detector, 34, . . . acts
`to detect the digital signal information embedded in the [overall
`video transmission], using standard detection techniques well
`known in the art, and inputs detected signal information to
`controller, 29, . . . .
`Ex. 1003, 18:41–62; see also id. at 159:54–61 (describing “conventional
`analog television” receivers using descramblers “that descramble analog
`television transmissions and are actuated by receiving digital key
`information”).
`
`
`4
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`
`information
`
`C. Illustrative Claim
`Petitioner challenges independent claims 13, 20, and 26. Claims 14,
`15, 18, 23, 24, 27, and 30 depend directly or indirectly from claims 13, 20,
`or 26. Claim 13 follows:
`13. A method of decrypting programming at a receiver station,
`said method comprising the steps of:
`
`[a]
`receiving
`an
`encrypted digital
`transmission including encrypted information;
`
`[b] detecting in said encrypted digital information
`transmission the presence of an instruct-to-enable signal;
`
`[c] passing said instruct-to-enable signal to a processor;
`determining a fashion in which said receiver station locates a first
`decryption key by processing said instruct-to-enable signal;
`
`[d] locating said first decryption key based on said step of
`determining;
`
`[e] decrypting said encrypted information using said first
`decryption key; and
`
`[f] outputting said programming based on said step of
`decrypting.
`
`Ex. 1003, 285:61–286:9 ([a]–[f] nomenclature added).
`D. Asserted Grounds of Unpatentability
`Petitioner asserts unpatentability of the challenged claims under the
`following sections of 35 U.S.C.:
`Reference(s)
`Claim(s) Challenged
`Basis
`13–15, 18, 20, 23, and 24 § 102(a) Gilhousen (Ex. 1004)1
`13–15, 18, 20, 23, and 24 § 102(e) Mason (Ex. 1005)2
`26 and 30
`§ 102(e) Frezza (Ex. 1006)3
`
`1 Gilhousen et al., U.S. Patent No. 4,613,901 (filed May 27, 1983, issued
`September 23, 1986).
`2 Mason, U.S. Patent No. 4,736,422 (filed July 2, 1984, issued April 5,
`1988).
`3 Frezza et al., U.S. Patent No. 4,712,239 (filed June 16, 1986, issued Dec. 8,
`1987).
`
`5
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`26 and 30
`16 and 21
`16 and 21
`27
`27
`Pet. 2–3.
`
`§ 103(a) Kelly (Ex. 1007)4
`§ 103(a) Mason and Block (Ex. 1008)5
`§ 103(a) Gilhousen and Block
`§ 103(a) Kelly and Block
`§ 103(a) Frezza and Block
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, the Board construes claims by applying the
`broadest reasonable interpretation in light of the specification. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016). Under this standard, absent any special definitions, claim terms and
`phrases carry their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art, in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner and Patent Owner dispute several claim terms that require
`construction. Most of the terms do not appear to be in controversy and 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 this preliminary record, the issues
`presented show that the following terms or phrases require express
`construction.
`
`
`4 Kelly et al., U.S. Patent No. 4,503,462 (filed Oct. 16, 1981, issued Mar. 5,
`1985).
`5 Block et al., U.S. Patent No. 4,484,217 (filed May 11, 1982, issued Nov.
`20, 1984).
`
`
`6
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`1. “receiving an encrypted digital information
`transmission including encrypted information”
`
`Independent claims 13 and 26 recite the above-listed phrase.
`Petitioner contends that the phrase means “an information transmission that
`is partially or entirely digital, at least a portion of which is encrypted.” Pet.
`5. According to Petitioner, the term “including encrypted information”
`informs a plain meaning such that an “encrypted digital information
`transmission” includes not only encrypted digital information, but may
`additionally include non-encrypted information or non-digital information.
`See Pet. 5–6. Petitioner contends that “when the patentee wanted to specify
`that ‘an encrypted digital information transmission’ included only digital
`information (in a related patent having the same specification as the ’091
`patent), it added language expressly excluding non-digital information from
`the transmission in certain claims.” Pet. 7 (citing Ex. 10[30], claim 18).
`Cited claim 18 of the related patent, U.S. Patent No. 8,559,635 (the “’635
`patent”), which shares a common specification with the ’091 patent,
`supports Petitioner. The claim recites “receiving at least one encrypted
`digital information transmission, wherein the at least one encrypted digital
`information transmission is unaccompanied by any non-digital information
`transmission.” Ex. 1030, 288:13–16 (emphasis added).
`Patent Owner does not address Petitioner’s argument about claim 18
`of the related ’635 patent. Patent Owner, however, responds that the plain
`meaning of the disputed phrase is “entirely encrypted and entirely digital,”
`but Patentee (i.e., Patent Owner during prosecution) acted as a lexicographer
`so that the phrase means “an information transmission carrying entirely
`digital content at least a portion of which is encrypted.” Prelim. Resp. 25–
`
`7
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`26. In other words, Patent Owner contends that the term includes non-
`encrypted information but excludes non-digital information (e.g., analog
`information). Patent Owner explains that “acting as their own
`lexicographer, the inventors noted an exception to the meaning of the
`modifier ‘encrypted’ in the two patents: ‘Encrypted transmissions may be
`only partially encrypted.’” Prelim. Resp. 25 (citing Ex. 1009, 13:68, 14:2;
`Ex. 1003, 160:19–20 (“a transmission of conventional rerecorded
`programming that has been encrypted (either fully or partially)”) (emphasis
`added by Patent Owner).)
`Patent Owner adds that
`[t]he inventors’ intent to only cover an information transmission
`with all digital content was further confirmed during prosecution
`[of a related patent] when [Patentee, on November 21, 2011,]
`amended
`the
`previously-recited
`phrase
`“information
`transmission” to “encrypted digital information transmission”
`and, in the same office action response, argued that the examiner-
`cited reference does not teach “an entire digital signal
`transmission.”
`Prelim. Resp. 26 (citing Ex. 1039, 10). According to Patent Owner, the
`Examiner agreed with Patentee’s prosecution argument and allowed the
`claims. Id. (citing Ex. 1040, 3–4).
`
`The record does not support Patent Owner’s arguments. The phrase
`“receiving an encrypted digital information transmission including encrypted
`information” specifically requires it to include encrypted information, which
`may or may not be digital information, because the preceding phrase
`distinguishes between “encrypted digital information” and “encrypted
`information.” Similarly, reciting “encrypted information” in claim 26, and
`reciting “encrypted digital information” in claim 13, Patent Owner indicates
`that encryption need not require digital information. Nothing in the plain
`
`8
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`language of claim 13 implies an “entire” digital or “entire” encrypted
`transmission. Patentee did not act as a lexicographer in noting that
`“[e]ncrypted transmissions may be only partially encrypted. For example,
`only the video portion may remain encrypted.” Prelim. Resp. 25 (quoting
`Ex. 1009, 14:1–3).6 The quoted disclosure does not deal with the claim
`phrase, “encrypted digital information transmission including encrypted
`information.” Furthermore, the quoted disclosure merely describes what
`
`
`6 The ’490 patent indicates that the referenced video portion refers to a
`normal analog television transmission into which digital signals are
`embedded. See Ex. 1009, 9:31–33 (“A digital signal is embedded by
`conventional generating and encoding means and transmitted in television,
`radio, or other transmission.”); see also 7:23–49 (describing reception of
`standard TV and decryption); 4:5–6 (embedding signals in programs);
`accord Ex. 1001 ¶ 46 (“[A] person of ordinary skill in 1981 or 1987 would
`have considered ‘digital television,’ ‘digital video,’ or ‘digital programming’
`to be fundamentally comprised of an analog video signal that contained
`embedded digital content such as teletext or videotex.”). Figure 4B of the
`’091 patent describes what appears to be decrypting examples: 1)
`decrypting via the “PROGRAMMING DECRYTPOR OR INTERUPT
`MEANS” 104 signifying (descrambling)––especially where this was “well
`known in the art” (Ex. 1009, 13:5–8); and 2) decrypting by signal processor
`100 of encoded digital signals embedded in the video or audio. The
`’490 patent explains that signal processor 100 “possibly decrypts” signals to
`decryptor/interrupter 101, to inform the latter “how to decrypt or interrupt
`the programming.” Id. at 13:27–32 (“The signal or signals may transmit a
`code or codes necessary for the decryption of the transmission.”). Further,
`Mr. Wechselberger testifies that before the mid-1980s (i.e., after the filing of
`the ’490 patent), skilled artisans interchanged the terms “encrypted” and
`“scrambled.” See Ex. 1001 ¶¶ 62–65. The ’490 patent, and other references
`of record, corroborate the testimony, by describing decryption of normal
`programming: “The signals that enable the decrypt[o]r/interrupter, 101, to
`decrypt and/or transfer program[m]ing uninterrupted may be embedded in
`the program[m]ing or may be elsewhere.” Ex. 1009, 13:17–20 (emphasis
`added).
`
`9
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`appears to be a typical situation in which part of a transmission may be
`encrypted. See Ex. 1009, 14:1–3; Ex. 1001 ¶¶ 41–49 (describing known
`digital systems that were only partly digital); supra note 6.
`
`Further evidencing mixed analog and digital signals as typical, as
`Petitioner contends, claim 18 in the cited and related ’635 patent implies that
`an “encrypted digital information transmission” may include non-digital
`information, because claim 18 specifically recites that such a transmission
`must be “unaccompanied by any non-digital information transmission.” See
`Ex. 1030, 288:14–16. This latter claim phrase in Patent Owner’s claim
`would be rendered superfluous under Patent Owner’s construction.
`
`Regarding the prosecution history, Patentee made several arguments,
`one of which was that “Mason teaches encrypted elements as part of its
`analog information transmission. But it does not teach the encryption of an
`entire digital signal transmission.” Ex. 1039, 10. This argument lacks
`sufficient clarity to amount to the alleged disclaimer. In contrast to Patent
`Owner’s characterization, Patentee did not argue that Mason does not
`disclose an entirely digital transmission that is devoid of analog information.
`Prelim. Resp. 26. Rather, Patentee argued that Mason does not teach
`“encryption of an entire digital signal transmission”––i.e., the argument
`appears to allege that Mason does not teach encrypting all of the digital
`information sent during a given transmission (which may or may not include
`analog information). See Ex. 1039, 10 (emphasis added). In support of this
`view, as discussed above, the ’091 patent, like the ’490 patent, discloses
`embodiments that involve mixtures of digital and analog information, with
`digital information embedded in analog television video lines. See Ex. 1003,
`
`10
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`10:40–47, 11:50–61, Fig. 1; 159:57–61 (“Wall Street Week” example using
`descramblers); 1009, 4:5–6, 9:31–33, 4:18–30; supra note 6.
`Patentee also did not argue during prosecution that claims challenged
`here exclude the “Wall Street Week” embodiment highlighted in the ’091
`patent in several places. See, e.g., Ex. 1003, 11:23–61, 12:1–12, 159:57–61.
`In addition, Patent Owner argues now that an analog television embodiment
`(which includes digital information) is within the scope of the claims. For
`example, in a related argument alleging support in the ’490 patent for
`“receiving an encrypted digital information transmission including encrypted
`information,” Patent Owner relies on “the incoming programming” of “‘The
`French Chef’ TV program.” See Prelim. Resp. 9–10 (citing Ex. 1009,
`20:12–50; 20:60–68). This conventional TV program includes analog
`information, which includes an encrypted recipe “in encoded digital form in
`the programing transmission received by TV set, 202,” which processor 200
`eventually decrypts. Ex. 1009, 20:60–68.7 In addition, claim 26 specifically
`recites “wherein said encrypted information includes television
`programming,” further indicating that encrypted information may include
`analog information, because programming, as discussed further below, and
`as noted above, is a broad term. Ex. 1003, 6:31–34; supra Section I.B. For
`example, programming covers embodiments exemplified by the “Wall Street
`Week” and “The French Chef” analog television shows.
`
`
`7 This ’490 patent does not disclose the recipe specifically as digital video
`television; rather, in one embodiment, the recipe appears to be digital textual
`information that the system transmits to a user on a cable television channel
`that is distinct from the channel transmitting the “The French Chef.” See Ex.
`1009, 20:18–19, 32–37. In another embodiment, the system embeds the
`encrypted digital recipe in “The French Chef” program. See id. at 20:6–63.
`
`11
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`In summary, the alleged disclaimer during prosecution of the ’091
`
`patent is not a sufficiently clear disavowal of claim scope. As discussed
`above, claim 18 of the related ’635 patent, the plain meaning of the phrase,
`and the ’091 patent Specification, indicate the phrase may include non-
`digital information. As also discussed above, Patent Owner and Petitioner
`agree it may include non-encrypted information. Patent Owner made a
`number of arguments during prosecution of the ’091 patent, but contrary to
`Patent Owner’s arguments here, the Examiner did not indicate that the
`claims were allowed based on the argument that the prior art does not teach
`an “entire digital signal transmission.” Compare Ex. 1039, 10–11
`(“assuming, arguendo, that Mason teaches an encrypted digital information
`transmission”), with Ex. 1040, 7–8 (relying on claim limitations without
`agreeing clearly to any specific argument advanced by Patentee).
`Furthermore, in related district court litigation, Patent Owner proposed
`construing “encrypted digital information transmission” more broadly, and
`as meaning “[s]ignals sent or passed from one location to another location to
`convey digital information which is in encrypted form.” See Pet. 18 (citing
`(Ex. 1015, 1).
`
`Accordingly, on this preliminary record, an “encrypted digital
`information transmission including encrypted information” includes at least
`some encrypted digital information, and does not preclude, with that
`transmission, non-encrypted information or scrambled analog information.
`2. “decrypting said encrypted information”
`Claims 13, 20, and 26 recite the phrase above. Citing passages from
`the ’091 patent, a related IPR decision, its Declarant, and a related district
`court case, Petitioner contends that decryption and encryption are not limited
`
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`to operations on digital information, but rather include descrambling and
`scrambling operations on analog information. See Pet. 4–5 (citing Ex. 1003,
`159:46–61; Ex. 1001 ¶¶ 63–65; Ex. 1011, 7–11; Ex. 1012, 2–5; Ex. 1013,
`25–26; Ex. 1014, 2–4; Ex. 1017, 29).
`Patent Owner, citing other evidence, including the ’091 patent, past
`testimony and an article by Petitioner’s Declarant, related patent
`reexaminations, and another district court case, contends that in line with
`convention, the ’091 patent makes a distinction between encryption and
`scrambling, with the former limited to digital data and the latter limited to
`analog data. See Prelim. Resp. 17–24 (citing Ex. 1003, 147:21–26, 148:13–
`20; Ex. 1009, 4:61–5:2; Ex. 1027, 4–5; Ex. 2001 ¶¶46–47; Ex. 2004, 30; Ex.
`2005, 41; Ex. 2006, 77; 2010 ¶¶ 18–20).
`Patent Owner’s arguments are not persuasive. Patent Owner’s
`arguments and evidence do not address what claims 13, 20, and 26 recite:
`“[a] method of decrypting programming” and “outputting said programming
`based on said step of decrypting.” Ex. 1003, 285:70, 286:8–9, 29, 46–47,
`63, 8–9. As noted above, the ’091 patent discloses that programming
`includes all manner of programming, including conventional analog
`television signals. Supra Section I.B. “The term ‘programming’ refers to
`everything that is transmitted electronically to entertain, instruct or inform,
`including television, radio, broadcast print, and computer programming as
`well as combined medium programming.” Ex. 1003, 6:31–34. Similar to
`the challenged claims, the ’091 patent describes decryptors as applying to
`programming. For example, “as regards decoders and decryptors, many
`different systems exist, at present, that enable programming suppliers to
`restrict the use of transmitted programming to only duly authorized
`
`13
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`subscribers.” Ex. 1003, 5:28–31. Similarly, “this prior art, too, is limited. It
`has no capacity for decrypting combined media programming.” Id. at 5:38–
`39 (emphasis added).
`
`In other words, notwithstanding Patent Owner’s evidence and
`arguments, the ’091 patent describes encrypting analog data, because the
`’091 patent encompasses decrypting general or conventional television
`programming, as also discussed above. Supra Sections I.A, II.A.1.
`Furthermore, by reciting “encrypted information” as a subset of an
`“encrypted digital information transmission” in claims 13 and 20, the
`challenged claims imply further that not all encrypted information must be
`digital.
`As Petitioner also notes, the ’091 patent states that “decrypt[o]rs . . .
`may be conventional descramblers, well, known in the art, that descramble
`analog television transmissions,” which supports Petitioner’s view by
`equating decryption and descrambling with respect to certain embodiments.
`Pet. 4 (citing Ex. 1013, 25–26; Ex. 1003, 159:46–61). In response, Patent
`Owner contends that Petitioner, the prior Board decision, and the district
`court, all interpret this particular disclosure out of context, because the
`passage refers to alternative embodiments, and “contrasts, rather than
`conflates, digital decryption with analog descrambling.” See Prelim. Resp.
`20–21 (citing Pet. 4–5; Ex. 1003, 159:46–61; Ex. 2012, 2); but see Ex. 1017,
`29 (“The court rejects PMC’s attempt to limit the encrypt/decrypt terms to
`digital data.”).
`
`Contrary to the arguments, the disputed passage in the ’091 patent
`specifically lists descramblers as one example of a type of decryptor
`“without . . . departing from the spirit of the invention.” Ex. 1003, 159:50–
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`51. As Patent Owner recognizes, the passage lists the “Wall Street Week”
`conventional analog television example as using descramblers. See id. at
`159:57–61; Prelim. Resp. 20–21. Nevertheless, 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. Rather, as discussed above, Patent Owner implies that the claims
`cover similar alternative preferred embodiments, such as the “‘The French
`Chef’ TV program.” See Prelim. Resp. 9–10 (citing Ex. 1004, 20:12–50;
`20:60–68), 20 (“Wall Street Week”). If the claims cover such mixed
`analog/digital embodiments, then “the decryptors . . . may be conventional
`descramblers,” as the ’091 patent indicates. Id. at 159:58–59. Also,
`decryption of digital signals may be performed by a processor according to
`the “The French Chef” embodiment disclosed above. See Ex. 1009, 20:18
`and 65–66.
`
`Patent Owner’s contentions that Petitioner’s expert, Mr.
`Wechselberger, supports Patent Owner based on an article he wrote, and
`according to his prior testimony, fail to account for the fact that the ’091
`patent and ’490 patent conflate the meaning of terms in the passage above,
`and in other places discussed the decrypting of programming. See Prelim.
`Resp. 21–24 (citing Ex. 2003, 135:2–8; Ex. 2010 ¶¶ 18–20, Ex. 1027, 4–5).
`Furthermore, on this preliminary record, contrary to Patent Owner’s
`characterizations, Mr. Wechselberger’s article and prior testimony cited by
`Patent Owner do not contradict his declaration testimony that he attempted
`to clarify confusion between use of the terms scrambling and encryption
`during the mid-1980s––the period between the filing of the 1981 ’490 patent
`and the 1987 ’091 patent. See Ex. 1001 ¶¶ 62–63 (describing confusion over
`
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`the terms encryption and scrambling and addressing his 1983 article (Ex.
`1027)); Ex. 2010 ¶ 18 & n.2 (noting that in 1987, “due to the evolution of
`the technology,” he would not be “surprised” to find scrambling used
`“incorrectly” in some references to refer to “hard encryption processes
`performed on digital signals”); Ex. 1027, 1 (“One major area of confusion
`lies in the technical differences between encryption and scrambling.”).
`If anything, the cited ’091 patent passage and other passages support
`Mr. Wechselberger’s testimony, because they refer to the Wall Street Week
`television program, which includes analog and digital information, without
`stating that the digital portions thereof were decrypted––the example
`specifically replaces decryptors with descramblers––thereby indicating that
`with respect to mixed analog and digital systems, the terms encryption and
`scrambling, or decryption and descrambling, were being used
`interchangeably––just as Mr. Wechselberger testifies in describing the
`industry during and/or prior to the mid-1980s. See Ex. 1001 ¶¶ 62–63; Ex.
`1003, 159:46–61.
`Similarly, Patent Owner’s arguments that rely on past Board decisions
`fail to acknowledge that the prior Board panels involving ex parte
`reexaminations did not have the benefit of this record evidence and
`specifically did not consider the cited passage in the ’091 patent regarding
`decryptors that may be descramblers, the specific claim language at issue
`that includes “decrypting programming,” and “encrypted digital information
`transmission including encrypted [general] information,” or the cited
`passages in the ’091 patent that specifically describe decrypting
`programming––a generic term that includes analog information. See Prelim.
`Resp. 23–24 (citing Ex. 2004, 30; 2005, 41; 2006, 77; 2008, 2 n.1; 2009, 53–
`
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`54); Ex. 1003, 5:38–39; see supra Section I.A, II.A.1; infra Section II.B.1
`(programming broadly encompasses analog information).
`In other words, the challenged claims here involve “decrypting
`programming,” as discussed above. Furthermore, in at least one cited
`reexamination proceeding (Reexam. Cont. No. 90/006,536, infra note 8),
`Patentee contended it was acting as a “lexicographer” so that “the inventor
`expressly advised the reader that by the terms encryption and decryption he
`means something beyond the conventional scrambling/descrambling relied
`upon by the Examiner, such as the use of a decryption key, which is not
`disclosed or suggested in any of the references relied upon by the
`Examiner.” Ex. 2005, 41 (emphases added); Prelim. Resp. 24.8 This
`reexamination argument contradicts Patent Owner’s arguments here (see id.
`at 18 (citing Ex. 1003, 143:20–30)), because a lexicographer’s definition
`necessarily departs from the plain meaning of a term, indicating that skilled
`artisans normally interchanged scrambling and encrypting (at least when
`scrambling employs some type of a decryption key). Patent Owner does not
`argue here that the ’091 patent sets forth a lexicographic definition of a
`decryption or encryption. Furthermore, Patentee’s reexamination argument
`shows that Patentee attempted to capture “conventional
`
`
`8 In this particular ex parte reexamination proceeding cited by Patent Owner
`(which Patent Owner notes a district court relied upon as evidencing a
`prosecution history disclaimer), the Board also noted that “in any case, the
`embedded digital signals in Aminetzah are not scrambled or encrypted.” Ex.
`2009, 54; see Ex. 2008, 2 n.2 (discussing Reexam. Cont. No. 90/006,536 at
`53–54 (i.e., Ex. 2009, 53–54)); Prelim. Resp. 24. In contrast, as discussed
`below, Mason and Gilhousen disclose encrypted digital signals, which our
`claim construction of an “encrypted digital information transmission
`including encrypted information” requires. Supra Section II.A.1.
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`scrambling/descrambling” that includes “the use of a decryption key.” See
`Ex. 2005, 41. At a minimum, the various arguments show that any
`purported disclaimer does not satisfy the legal requirement that a disclaimer
`must be clear and unequivocal.
`Accordingly, on this preliminary record, “decrypting said encrypted
`information” means “performing a process to decipher, decode, or
`descramble information that is either ciphered, encoded, or scrambled, using
`a key, algorithm, or some type of digital information.” See Ex. 1003,
`159:46–61.
`
`3. “processor” and “processor instructions”
`Claim 13 recites a processor and claim 20 recites processor
`instructions. Petitioner construes “processor” as “a device that operates on
`data,” and “processor instructions” as “instructions to a device that operates
`on data.” See Pet. 8. Patent Owner disputes the construction of “processor.”
`Prelim. Resp. 29 and 42 (citing Ex. 2001 ¶ 126). Patent Owner contends the
`“specifications consistently describe processors as devices that execute
`instructions or process data according to instructions.” Prelim. Resp. 28.
`Petitioner contends that the ’091 patent describes a variety of
`processors, including hardwired devices that process data. Pet. 7–8 (citing
`Ex. 1003, 134:27–31 (decoders 30 and 40 process information); 75:21–27
`(buffer/comparator 8 processes data). The ’490 patent describes “pass[ing] a
`signal word to signal processor, 200, which in a predetermined fashion,
`signal processor, 200, decrypts and transfers to decrypt[o]r, 224, to serve as
`the code upon which decrypt[o]r, 223, will decrypt the incoming encrypted
`recipe.” Ex. 1009, 20:39–43.
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`A “predetermined fashion” does not exclude a hardwired
`predetermination. Also, the quoted disclosure implies that a mere word
`signal constitutes a type of instruction because a