Trials@uspto.gov
`571-272-7822
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` Paper 40
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` Entered: September 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
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`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
` Paper 40
`
`
`
` Entered: September 19, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
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`Case IPR2016-01520
`Patent 8,559,635 B1
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`
`I. INTRODUCTION
`Patent Owner filed a Request for Rehearing (Paper 39, “Reh’g Req.”
`or “Rehearing Request”) alleging that the Final Written Decision (Paper 38,
`“FWD”) “misapprehended and overlooked arguments and evidence
`presented by the Patent Owner.” Reh’g Req. 1. More specifically, Patent
`Owner argues:
`First, the Board determination that U.S. Patent No. 4,694,490
`(the “’490 Patent”) fails to support priority for the term
`“programming” in U.S. Patent No. 8,559,635 (the “‘635
`Patent”) overrules three prior decisions of the Board on
`precisely the same issue. Second, the Board applied a legally
`incorrect test for priority based on comparing claim term
`definitions between specifications instead of comparing the
`claimed invention to the disclosure of the earlier specification.
`Third, the Board’s finding that the ‘490 Patent specification
`fails to support priority because its disclosure is limited to a
`single passage in the specification is an improper sub silentio
`application of the doctrine of specification disclaimer. . . .
`[Fourth], the Board’s priority determination for the limitation
`“encrypted digital information transmission is unaccompanied
`by any non-digital information” relied on speculation contrary
`to the explicit disclosure of the ‘490 Patent. . . . [and]
`disregards controlling law on negative limitations when it finds
`[the ‘490 Patent’s French Chef example] to be insufficient
`because it does not go on to state that analog information is
`“prohibited.”
`Reh’g Req. 1–2. In that Final Written Decision, we determined that
`claims 3, 18, 20, 32, and 33 (“instituted claims”) of U.S. Patent No.
`8,559,635 B1 (Ex. 1003, “the ’635 Patent”) were unpatentable. FWD 2, 66.
`We dismissed consideration of claims 4, 7, and 13. FWD 2, 3–4. Patent
`Owner “asks that the Board grant this Request, vacate the Decision and issue
`a new or supplemental Final Written Decision correcting the priority
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`determinations and confirming the affected claims as patentable.” Reh’g
`Req. 1.
`Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision
`should be modified lies with the party challenging the decision. The request
`must specifically identify all matters the party believes we misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, opposition, or a reply.”
`For the reasons provided below, we deny Patent Owner’s Rehearing
`Request.
`
`II. ANALYSIS
`A. The Board’s Priority Determination with respect to “Programming“
`In the Final Written Decision, we determined “that Patent Owner has
`failed to sufficiently rebut Petitioner’s contention that the 1981 ’490 Patent
`does not support at least claim 3 of the ’635 Patent and that the earliest
`effective priority date for this claim is no earlier than that of the ’825 Patent1
`on September 11, 1987.” FWD 13. In making our determination, we
`considered, among other things, the Federal Circuit’s PowerOasis2 decision
`in “determining if claim terms have different meanings based on different
`specifications, and determining whether support exists in the earliest,
`original application for a variation on that claim term.” Id. Accordingly, we
`explained “that Patent Owner impermissibly broadened the scope of the
`claim term ‘programming’ in the ’635 Patent, relative to the disclosure of the
`
`
`1 U.S. Patent No. 4,965,825 (“the ’825 Patent”). The ’635 Patent is a
`straight continuation of the ’825 Patent. See Ex. 1003, Cover Page (Related
`U.S. Application Data).
`2 PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008).
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`term in the ancestor 1981 ’490 patent” such that the term had a different
`meaning in each of the Specifications. Id. at 11, see id. at 11–12.
`Patent Owner argues the Board’s priority determination improperly
`overrules three previous Board decisions on the very same issue—“whether
`the term ‘programming’ finds written description support in the ’490 Patent
`to establish 1981 priority” (Reh’g Req. 3). See id. at 3–5. Patent Owner
`explains that even though “the Board does not consider itself to be a tribunal
`that is subject to general principles of stare decisis. . . , basic principles of
`fairness and due process, as well as the mandate to provide ‘just, speedy, and
`inexpensive resolution’ (37 C.F.R. § 42.1(b)), are compromised when the
`Board issues conflicting decisions on identical issues for the same Patent
`Owner.” Id. at 4.
`We are not persuaded by these arguments. First, the Board is not
`subject to the general principles of stare decisis. See, e.g., In the Matter of
`Certain NAND Flash Memory Circuits & Prod. Containing Same, Inv.
`No. 337-TA-526, USITC Pub. 3970 (Dec. 2007) (Final) (citing
`Memorandum from the General Counsel to the Commission, “The Status of
`An Unreviewed Initial Determination,” GC-G-306, 1983 WL 2068656 (Nov.
`28, 1983) (“GC Memo”) (“There is no doctrine of stare decisis in
`administrative practice.”)). Rather, under 5 U.S.C. § 706(2)(A),(E),3 the
`Board “is free to change prior rulings and decisions so long as such action is
`not done capriciously or arbitrarily.” Id. (quoting 5 Jacob Stein,
`
`
`3 See Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307, 1313
`(Fed. Cir. 2016) (“Under 5 U.S.C. § 706(2)(A), (E), the Board’s actions here
`are to be set aside if ‘arbitrary, capricious, an abuse of discretion, or
`otherwise not in accordance with law’ or ‘unsupported by substantial
`evidence.’”).
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`Administrative Law, § 40.02 (2005)).4 As applied here, the mere fact that in
`three previous decisions the Board arrived at a different determination for
`the term “programming” is of no moment. In making our priority
`determination, we considered the record—including the Specifications of the
`’635 and ’490 Patents, as well as Petitioner’s and Patent Owner’s
`arguments—in accordance with current legal and regulatory precedent. See
`FWD 9–13. Moreover, we put the parties on notice as to our reasons for the
`difference in treatment of the issue—i.e., that our analysis now accounts for
`PowerOasis. See id. at 11–13. We also note Patent Owner has not alleged
`that our determination was unclear or incomprehensible, or that they lacked
`notice as the determination’s contents or meaning.
`Second, the three previous Board decisions cited by Patent Owner are
`unavailing for the following additional reasons. With respect to the
`Decision on Appeal in Reex. Nos. 90/006,563 and 90/006,698, as we stated
`in the Decision on Request for Rehearing in IPR2014-01527, which
`involved the same issue, “[t]he Board in that prior reexamination decision
`did not disagree with the examiner’s finding in its 2010 reexamination
`decision, it only disagreed ‘with the Examiner’s reasoning.’”
`IPR2014-01527, Paper 44, 20 (citing IPR2014-01527, Ex. 2003, 21). And
`although
`the Board conditioned the priority on the original relatively
`narrower disclosure in the ’490 Patent, reasoning that even if
`
`
`4 See also GC Memo (“It is [a] well-established principle of administrative
`law that while an agency may not depart from prior practice without
`explaining to the parties its reasons for the difference in treatment, an agency
`is not bound by its own prior determinations.”); NLRB v. J. Weingarten Co.,
`420 U.S. 251, 265 (1975) (“We agree that earlier precedents do not impair
`the validity of the Board’s construction [of a statutory provision].”).
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`the later-filed reexamined CIP patent provides a broader
`meaning to ‘programming,’ this ‘evolved’ scope would not
`show a lack of priority to the earlier-filed ’490 patent . . . [,] the
`Board’s reasoning in that 2010 reexamination decision does not
`account for the holding in Power[]Oasis.
`IPR2014-01527, Paper 44, 20. With regard to the Institution Decision in
`IPR2014-01533 (Ex. 1011, 11–12),
`the Board is not bound by any findings made in an Institution
`Decision. At that point, the Board is considering the matter
`preliminarily without the benefit of a full record. The Board is
`free to change its view of the merits after further development
`of the record, and should do so if convinced its initial
`inclinations were wrong. To conclude otherwise would
`collapse these two very different analyses into one, which we
`decline to do.
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). And as
`to the cited portion of the Final Written Decision for the ’749 Patent5 in
`IPR2014-01533 (Ex. 1030, 31–32), the earlier ’490 Patent (to which the
`’749 Patent claimed priority) was not even mentioned there. Rather, all that
`was stated was that support could be found for proposed substitute claims
`65–67 in the Original Specification of the ’749 Patent (see App.
`No. 08/485,283, filed 6/7/1995). Id. at 32.
`In view of the foregoing, we find that our determination, albeit
`different from three prior Board decisions, did not amount to an arbitrary
`and capricious action, but instead followed the basic principles of fairness
`and due process towards a “just, speedy, and inexpensive resolution.”
`37 C.F.R. § 42.1(b).
`
`
`5 U.S. Patent No. 7,805,749 B1 (“the ’749 Patent”).
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`B. PowerOasis
`In determining that the ’635 Patent’s “programming” term did not
`have written description support in the earlier ’490 Patent, we accounted for,
`among other things, the PowerOasis decision. See FWD 9–13. Similarly, in
`that decision, “the Federal Circuit considered both the original application
`and a continuation-in-part application . . . , and ultimately determined that
`support did not exist in the original application for a variation of the
`customer interface later introduced in the continuation-in-part application.”
`Id. at 11–12 (citing PowerOasis, 522 F.3d at 1310). Patent Owner had
`asserted that PowerOasis was inapplicable because “the proper inquiry in
`determining priority is whether the earlier filed application alone provides
`written description support for the claim in question and that it is legally
`improper to compare two specifications.” Id. at 11 (citing PO Resp. 14–15);
`see also PO Resp. 19 (“Whether additional examples of ‘programming’ were
`known or developed after November 3, 1981 is not relevant to the priority
`analysis under Section 120.”). But we rejected this assertion and stated, to
`the contrary, that “[u]nder PowerOasis, we are charged with determining if
`claim terms have different meanings based on different specifications and
`determining whether support exists in the earliest, original application for a
`variation on that claim term.” FWD 13.
`Patent Owner now argues that we misconstrued PowerOasis as
`changing existing law and establishing a new test for priority. Reh’g
`Req. 13. We do not agree. As Patent Owner admits, the test for priority—
`“whether the claim of the later patent was supported by the disclosure of the
`earlier patent”—“was undisturbed by PowerOasis.” Id. at 6 (citing
`Technology Licensing, Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed.
`
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`Cir. 2008). Accordingly, within the confines of this test, we determined—
`just as the Federal Circuit had in PowerOasis—whether the term at issue had
`different meanings in the different specifications under review. See
`FWD 11–13. Put another way, in keeping with the spirit of the law, we used
`the approach in PowerOasis not as a new test, but merely as an example or
`roadmap for applying the existing test, thereby determining that the claim
`term “programming” in the ’635 Patent lacked written description support in
`the ’490 Patent. See id.
`For the foregoing reasons, and contrary to Patent Owner’s assertions,
`we did not misconstrue PowerOasis.
`C. “Programming” in the ’490 Patent
` The term at issue here—“programming”—is recited, for example, in
`challenged claim 3 of the ‘635 Patent, which reads as follows:
`3.
`A method of controlling a remote transmitter
`station to communicate program material to a subscriber station
`and controlling said subscriber station to process or output a
`unit of programming, said method comprising the steps of:
`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;
`receiving a code or datum identifying a unit of
`programming to be transmitted by the remote transmitter
`station, said remote transmitter station transferring said unit of
`programming to a transmitter;
`receiving at said remote transmitter station one or more
`second instruct signals which operate at the subscriber station to
`identify and decrypt said unit of programming or said one or
`more first instruct signals, said remote transmitter station
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`transferring said one or more second instruct signals to said
`transmitter; and
`transmitting from said remote transmitter station an
`information transmission comprising said unit of programming,
`said one or more first instruct signals, and said one or more
`second instruct signals, said one or more first instruct signals
`being transmitted in accordance with said control signal.
`Ex. 1003, 286:29–53.
`Patent Owner argues that we disregarded disclosures in the ’490
`Patent supporting the term “programming” as disclosed in the ’635 Patent.
`Reh’g Req. 7–9. In particular, Patent Owner argues that we “surreptitiously
`advanced a theory of Specification disclaimer” by restricting the ’490 Patent
`disclosure to “single channel, single medium” programming and reading out
`various disclosures of programming in the ’490 Patent that allegedly
`disclose more than merely “single channel, single medium” programming.
`Id. at 7–10.
`
`Contrary to Patent Owner’s assertions, we did not restrict (either
`explicitly or implicitly) the ’490 Patent disclosure to single channel, single
`medium programming. Rather, we merely determined that the earliest
`priority date for claim 3 of the ’635 Patent was 1987 rather than 1981 by
`comparing the ’635 Patent’s Specification (having an effective filing date of
`1987) with that of the ’490 Patent (filed in 1981). FWD 10–11. We
`understood this comparison to show that the ‘635 Patent had a broader and
`more inclusive description of “programming” (“everything that is
`transmitted electronically to entertain, instruct or inform, including
`television, radio, broadcast print, and computer programming as well as
`combined medium programming”6) such that the ‘490 Patent’s narrower
`
`6 Ex. 1003, 6:31–34.
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`description of “programming” (“single channel, single medium
`presentations, be they television, radio, or other electronic transmissions”7)
`did not provide proper written description support. Id. at 10–11, see also id.
`at 11 (“We continue to determine that whatever the term ‘programming’
`meant in 1987, it meant something different in 1987 than it did in 1981,
`because it grew to encompass many different types of known analog and
`digital programming not contemplated in 1981 according to the ’490
`patent”). As discussed in more detail below, this determination holds true
`whether or not the ’490 Patent’s Specification is limited to single channel or
`single medium programming.
`We also did not ignore or disregard any disclosures of the ’490 Patent.
`In making our priority determination, we considered the Specifications of
`both the ’490 Patent and the ’635 Patent in their entirety. We are aware of
`the ’490 Patent’s additional disclosures of multi-channel and multimedia
`cable transmissions or presentations and transmissions using means other
`than standard TV and radio frequencies, such as broadcast, hard-wire,
`manual means, microwave or cablecast transmissions. See, e.g., Ex. 1004,
`3:3–41, 48–60, 7:22–30, 19:30–20:7, 20:16–59, Figs. 6C–D. But even if
`these disclosures were construed as broadening the ’490 Patent’s definition
`of “programming,” that definition would still be narrower than the term as
`defined and described in the ’635 Patent Specification. At bottom, Patent
`Owner has not persuaded us as to how these or any other disclosures in the
`’490 Patent provide sufficient written description support for the term
`“programming” as more broadly defined in the ’635 Patent. In other words,
`the record lacks sufficient evidence that the ’490 Patent defines the term
`
`
`7 Ex. 1004, 3:52–54.
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`“programming” as commensurate with the ’635 Patent’s definition of the
`term, encompassing not only broadcast print, computer programming, and
`combined medium programming, but “everything . . transmitted
`electronically.” See Pet. Reply 3–4.
`Patent Owner also disputes as “legally defective and factually
`unsupported” the statement in the Final Written Decision that “the term
`‘programming’ . . . meant something different in 1987 than it did in 1981,
`because it grew to encompass many different types of . . . programming not
`contemplated in 1981” because it relies on the conventional understanding,
`or ordinary and customary meaning, of the term “programming” in 1987.
`Reh’g Req. 8. Patent Owner’s argument is unpersuasive because it
`misinterprets the Final Written Decision. As discussed above, we examined
`the term ‘programming’ as described in the ’635 Patent and compared that to
`the description of “programming” in the earlier ’490 Patent. The disputed
`statement merely explains the results of this analysis. It does not rely on,
`nor is it a commentary on, the conventional understanding, or ordinary and
`customary meaning, of the term “programming” in 1987.
`D. “Unaccompanied by Any Non-Digital Information Transmission”
`in the ’490 Patent
`The limitation at issue here—“at least one encrypted digital information
`transmission . . . unaccompanied by any non-digital information
`transmission”—is recited, for example, in challenged claim 18 of
`the ’635 Patent, which reads as follows:
`18. A method of processing signals at a receiver
`station comprising the steps of:
`receiving at least one encrypted digital information
`transmission, wherein the at least one encrypted digital
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`information transmission is unaccompanied by any non-digital
`information transmission;
`locating code;
`passing said code to a processor;
`controlling a decryptor that decrypts encrypted digital
`data to decrypt in a specific fashion on the basis of said code;
`decrypting a portion of said at least one information
`transmission in said specific fashion; and
`passing said decrypted portion of said at least one
`encrypted digital information transmission to one of said
`processor and an output device.
`Ex. 1003, 288:10–25.
`Patent Owner argues the Board applies an incorrect legal standard for
`negative limitations in determining that the ’490 Patent’s French Chef
`example (’490 Patent, 20:32–38, Fig. 6D) fails to provide written description
`support for the limitation at issue. Reh’g Req. 9–10. In particular, Patent
`Owner takes issue with the Board’s purported statement that “we continue to
`determine that the ’490 Patent fails to describe, expressly or inherently [that]
`any non-digital information is prohibited from that transmission” because
`“the case law does not require the specification to ‘prohibit’ subject matter
`in order to provide § 112 support for a negative limitation.” Reh’g Req. 10
`(citing FWD 14).
`Patent Owner’s argument is unavailing. As an initial matter, Patent
`Owner’s altered quote of the Final Written Decision does not fairly
`characterize our determination. The full quote in question reads as follows:
`“As we determined in the Institution Decision, we continue to determine that
`the 1981 ’490 patent fails to describe or indicate, expressly or inherently,
`support for the limitation of ‘at least one encrypted digital information
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`transmission,’ where any non-digital information is prohibited from that
`transmission.” FWD 14. The phrase “where any non-digital information is
`prohibited from that transmission” is not referring to a standard or
`requirement for negative limitation support, but rather is merely stating that
`Patent Owner had not pointed to a passage in the ’490 Patent that would
`conclusively provide such support.
`We agree with Patent Owner that written description support may be
`satisfied “if the specification discloses alternative features or suggests a
`reason to exclude.” Reh’g Req. 10. More specifically, “[n]egative claim
`limitations are adequately supported when the specification describes a
`reason to exclude the relevant limitation,” and “properly describing
`alternative features—without articulating advantages or disadvantages of
`each feature—can constitute a ‘reason to exclude.’” Inphi Corp. v. Netlist,
`Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Santarus, Inc. v. Par
`Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).
`But contrary to Patent Owner’s assertions, in considering the record
`before us throughout this proceeding, we did apply the principles of Inphi
`(and Santarus) in determining that the negative limitation at issue did not
`have adequate written description support in the ’490 Patent. For example,
`in the Petition, Petitioner quotes and applies the holding in Santarus in
`arguing that the negative limitation at issue lacked written description
`support in the ’490 Patent—a position which we determined that Patent
`Owner failed to rebut. Pet. 6 (citing Santarus, 694 F.3d at 1351); Dec. to
`Inst. 10–15, see id. at 15 (“Therefore, based on this record and for purposes
`of this Decision, we determine that Patent Owner fails to rebut sufficiently
`Petitioner’s contention that the 1981 ’490 patent does not support at least
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`claims 18, 20, 32, and 33 of the ’635 patent, and that the earliest effective
`priority date for these claims is no earlier than that of the ’825 patent on
`September 11, 1987.”). Additionally, we took under consideration, without
`objection, Patent Owner’s offering of Inphi’s holding on negative limitations
`during the oral hearing (Paper 37, 36), and we also cited Inphi explicitly
`within our Final Written Description. See, e.g., FWD 61.
`For emphasis, we note that the ’490 Patent satisfies neither of the
`above requirements set forth in Inphi; that is, it does not “disclose[]
`alternative features or suggest[] a reason to exclude” the negative limitation,
`“unaccompanied by any non-digital transmission information.” Patent
`Owner has not presented us with—nor do we discern—a disclosure in the
`’490 Patent that excludes, or provides a reason to exclude, non-digital (e.g.,
`analog) information from a digital information transmission. As discussed
`in the Final Written Decision, the examples within the ’490 Patent that
`Patent Owner cites as showing written description support for the negative
`limitation do not provide clarity on this issue. See FWD 15–19. For
`example, as shown in Figure 6C of the ’490 Patent, the microcomputer may
`receive directly, by means of a digital information channel, all closing stock
`prices for that day. Ex. 1004, Fig. 6C, 19:31–20:7. Additionally, the
`microcomputer may receive a “Wall Street Week” programming
`transmission including several instruction signals for overlaying a studio
`generate graphic video. Id. at 19:35–41. In another example about a French
`Chef program, a recipe encoded in digital form is received by tuning to an
`appropriate channel or in a programming transmission. Id. at Fig. 6D,
`20:16–63. But neither of these examples describes, nor is it clear, the
`format(s) of these information transmissions, whether digital, non-digital, or
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`some combination of the two (e.g., digital information embedded in an
`analog transmission). And even if digital information were being received
`in one of the above transmissions, the ’490 Patent does not exclude or
`provide a reason to exclude analog information or some other non-digital
`information from accompanying that transmission. Nor does it clearly
`describe alternative features for such a transmission (e.g, all-digital
`transmission, digital and analog transmission, or all-analog transmission).
`As the Petition states, “the ’490 Patent never describes the negative
`limitation that transmissions are ‘unaccompanied by any non-digital
`information transmission’. . . . [n]or does it provide any reason why one
`would send or receive such a transmission.” Pet. 6.
`For at least the foregoing reasons, we are unpersuaded by Patent
`Owner’s further assertions that the Final Written Decision improperly relies
`on guesswork and speculation to make a determination on the negative
`limitation at issue.8 Reh’g Req. 10–11.
`E. The Board’s Understanding of the Term “Transmission”
`Patent Owner further argues that the Board’s finding is based on a
`misunderstanding of the term “transmission” as used in the ’490 and ’635
`Patents. Reh’g Req. 12–13. In particular, Patent Owner asserts that
`“transmissions are discrete and thus each transmission is a separate
`transmission.” Id. at 12 (citing Ex. 1004, Fig. 1, 4:22–30, 7:20–35, 18:49–
`
`
`8 We note that despite Patent Owner’s rebuke of using extrinsic, subjective
`conjecture or speculation about what one of ordinary skill in the art would
`have understood or done (Reh’g Req. 11), Patent Owner itself relies on
`conjecture or speculation in citing expert testimony to show that an
`encrypted digital recipe could not be received on a conventional cable
`television channel in the ’490 Patent. Id. at 11 n.2.
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`56). By contrast, according to Patent Owner, “[t]he collective transmissions
`[described in the ’490 Patent] do not comprise a single transmission, nor do
`the transmissions accompany one another as they are each transmitted on
`entirely different carrier frequencies.” Id.
`We are not persuaded by Patent Owner’s argument. First, Patent
`Owner’s proffered definition of “transmission” does not have adequate
`support in the ’490 Patent. We acknowledge that the ’490 Patent discloses
`the concepts of discrete units of programming, a discrete signal embedded in
`a transmission (i.e., a signal word), discrete specified frequencies for
`particular radio and television channels, and discrete bits of information
`conveyed to a recorder. See, e.g., Ex. 1004, 1:9–11, 3:4–5, 6:34–36, 11:21–
`25, 16:39–41. But neither a plain reading of the claim language, the above
`passages of the ’490 Patent, nor the passages identified by Patent Owner
`require a transmission as a whole to be discrete, nor do they preclude the
`concept of collective or accompanied transmissions.
`Second, even if the ’490 Patent were to provide written description
`support for a “transmission” that is discrete such that each transmission is
`separate,” for the reasons discussed above, there still would not be sufficient
`written description support in the ’490 Patent for the phrase “unaccompanied
`by any non-digital information transmission.” As we explained in the Final
`Written Decision, nothing in the ’490 Patent specifies that (1) the digital
`information channel that receives stock information or (2) the appropriate
`channel that receives a recipe in encoded digital form, must be an all-digital
`data channel devoid of non-digital (e.g., analog) information. See FWD 17–
`18.
`
`16
`
`
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`
`
`III. CONCLUSION
`Based on the foregoing, Patent Owner fails to show that the Final
`Written Decision misapprehended and overlooked arguments and evidence
`presented by the Patent Owner.
`
`
`
`
`IV. ORDER
`For the reasons given, it is ORDERED that the Patent Owner’s
`Rehearing Request is denied.
`
`
`
`17
`
`
`
`
`
`Case IPR2016-01520
`Patent 8,559,635 B1
`
`PETITIONER:
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory Arovas
`Alan Rabinowitz
`KIRKLAND &ELLIS LLP
`marc.sernel@kirkland.com
`jmerkin@kirkland.com
`egoryunov@kirkland.com
`greg.arovas@kirkland.com
`alan.rabinowitz@kirkland.com
`
`PATENT OWNER:
`Douglas J. Kline
`Jennifer Albert
`Stephen Schreiner
`Sarah Fink
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`sfink@goodwinlaw.com
`
`Thomas J. Scott, Jr.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`
`
`
`
`18
`
`
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