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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner
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`IPR2016-01520
`Patent No. 8,559,635 B1
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
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`Pursuant to 35 U.S.C. §§ 141-144 and 319, and 37 C.F.R. §§ 90.2 and 90.3,
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`notice is hereby given that Patent Owner Personalized Media Communications
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`LLC appeals to the United States Court of Appeals for the Federal Circuit from the
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`Final Written Decision entered September 8, 2022 (Paper 53) in IPR2016-01520
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`(Exhibit A), and all prior and interlocutory rulings related thereto or subsumed
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`therein, to the extent they are adverse to Patent Owner. Patent Owner is also filing
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`today a notice of appeal in IPR2016-00754, which the Board resolved in the same
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`Final Written Decision and which addresses claims from the same patent.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner further indicates
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`that the issues on appeal include, but are not limited to:
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`(1) whether the Board erred in holding that claims 3, 18, 20, 32, and 33 are
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`not entitled to a priority date of November 3, 1981, the date of filing of the
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`application for U.S. Patent No. 4,694,490 (the “’490 application”), including, but
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`not limited to, (a) whether the Board erred by construing the term “unaccompanied
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`by any non-digital information transmission” in claim 18, and similar limitations in
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`claims 20, 32, and 33, to exclude non-information analog signals; (b) whether the
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`Board erred by concluding that the ’490 application does not provide written
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`description support for the “unaccompanied by any non-digital information
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`transmission” limitation in claim 18, and similar limitations in claims 20, 32, and
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
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`33, properly construed; (c) whether the Board erred as a matter of law in holding
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`that PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008),
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`requires that the priority determination under 35 U.S.C. §§ 120 and 112 be
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`conducted by comparing the definition and/or scope of a claim term in the earlier
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`specification to the definition and/or scope of that claim term in the later
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`specification, rather than by evaluating whether the claim term as defined in the
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`later specification finds written description support in the earlier application
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`pursuant to 35 U.S.C. §112; and (d) whether the Board erred by concluding that the
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`’490 application does not provide written description support for the
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`“programming” limitation in claim 3;
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`(2) whether the Board erred in holding that claims 13, 18, 20, and 32 are
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`anticipated by U.S. Patent No. 4,817,140 (“Chandra”), including, but not limited
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`to, (a) whether the Board erred in concluding that Chandra qualifies as prior art
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`against claims 18, 20, and 32; (b) whether the Board erred in construing “changing
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`a decryption technique” in claim 13 to encompass changing a decryption key and
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`(c) whether, in construing “changing a decryption technique” in that way, the
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`Board failed to adequately account for the applicant’s statements made during
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`prosecution;
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
`
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`(3) whether the Board erred in holding that claim 33 is obvious based on
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`Chandra and the publication entitled “When Network File Systems Aren’t Enough:
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`Automatic Software Distribution Revisited” (“Nachbar”), including, but not
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`limited to, whether the Board erred in concluding that Chandra and Nachbar
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`qualify as prior art against claim 33;
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`(4) whether the Board erred in holding that claims 4 and 7 are anticipated by
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`U.S. Patent No. 4,886,770 (“Seth-Smith”);
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`(5) whether, in arriving at its decision, the Board acted in a manner that was
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`arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with
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`law, or based on factual findings unsupported by substantial evidence; and
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`(6) whether the Board erred in any finding or determination supporting or
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`related to those issues, as well as all other issues decided adversely to Patent
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`Owner in any orders, decisions, rulings, and opinions.
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`filed within 63 days after the date of the Final Written Decision.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), a copy of this Notice of
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`Appeal is being filed simultaneously with the Patent Trial and Appeal Board, the
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`Clerk’s Office for the United States Court of Appeals for the Federal Circuit, and
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`the Director of the Patent and Trademark Office.
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`Dated: November 10, 2022
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
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`Respectfully submitted,
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`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210-1980
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
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`Counsel for Patent Owner
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
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`CERTIFICATE OF FILING AND SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`P-TACTS system, a true and correct original version of the foregoing PATENT
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`OWNER’S NOTICE OF APPEAL is being filed by hand delivery on November
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`10, 2022, with the Director of the United States Patent and Trademark Office, at
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`the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22313
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`Pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`Rule 52(a), (e), I hereby certify that a true and correct copy of the foregoing
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`PATENT OWNER’S NOTICE OF APPEAL is being filed in the United States
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`Court of Appeals for the Federal Circuit on this day, November 10, 2022, and that
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`the filing fee is being paid electronically using pay.gov.
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`I further certify that the foregoing PATENT OWNER’S NOTICE OF
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`APPEAL was served electronically via e-mail, as agreed to by counsel, on
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`November 10, 2022, on the following counsel for Petitioner:
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`Marcus Sernel
`Joel Merkin
`Eugene Goryunov
`Gregory Arovas
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`msernel@kirkland.com
`jmerkin@kirkland.com
`egoryunov@kirkland.com
`garovas@kirkland.com
`arabinowitz@kirkland.com
`Apple-PMC-PTAB@kirkland.com
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`IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner’s Notice of Appeal
`
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
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