`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
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`APPLE INC.,
`
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`
`Patent Owner.
`
`—————
`
`Case IPR2016-01520
`Patent 8,559,635
`
`—————
`
`
`
`
`
`
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`NOTICE OF APPEAL TO THE FEDERAL CIRCUIT
`
`IPR2016-01520
`Patent 8,559,635
`
`
`Notice is hereby given, pursuant to 35 U.S.C. §§ 141 and 142 and 37 C.F.R.
`
`§ 90.2, that Patent Owner Personalized Media Communications, LLC hereby
`
`appeals to the United States Court of Appeals for the Federal Circuit from the Final
`
`Written Decision (FWD) entered on February 15, 2018 (Paper 38), the Decision on
`
`Request for Rehearing (RfR) entered on September 19, 2019 (Paper 40), and from
`
`all underlying orders, decisions, rulings, and opinions, regarding claims 3, 18, 20,
`
`32, and 331 (“Challenged Claims”) of U.S. Pat. No. 8,559,635 (“the ’635 Patent”).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner further states
`
`that the issues on appeal include, but are not limited to:
`
`(1) Whether the Board erred in finding that the Challenged Claims were
`
`not entitled to the claimed priority under 35 U.S.C. § 120 to the November 3, 1981
`
`filing date of application No. 06/317,510 leading to U.S. Pat. No. 4,694,490 (“the
`
`’490 Patent” or “1981 Specification”).
`
`(2) Whether the Board erred in finding that the limitation in claims 18,
`
`20, 32, and 33 for “receiving at least one encrypted digital information
`
`transmission … unaccompanied by any non-digital information transmission”
`
`
`1 At the oral hearing before the Board, the parties agreed that claims 4, 7 and 18 of
`the ’635 Patent could be dismissed from this IPR. The Board dismissed said
`claims from this proceeding sua sponte.
`
`1
`
`
`
`lacks written description support in the 1981 Specification pursuant to 35 U.S.C.
`
`IPR2016-01520
`Patent 8,559,635
`
`
`§ 112.
`
`(3) Whether the Board erred in finding that the term “programming” in
`
`claim 3 lacks written description support in the 1981 Specification pursuant to 35
`
`U.S.C. § 112.
`
`(4) Whether the Board erred as a matter of law in finding that
`
`PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008), requires
`
`that the priority determination under 35 U.S.C. §§ 120 and 112 be conducted by
`
`comparing the definition and/or scope of a claim term in the earlier specification to
`
`the definition and/or scope of that claim term in the later specification, rather than
`
`by evaluating whether the claim term as defined in the later specification finds
`
`written description support in the earlier application pursuant to 35 U.S.C. §112.
`
`(5) Whether the Board erred in that its priority determination regarding
`
`the term “programming” in claim 3 is contrary to three prior Board decisions on
`
`the same issue, where the Board reasons that it “is not subject to the general
`
`principles of stare decisis,” “is free to change prior rulings and decisions so long as
`
`such action is not done capriciously or arbitrarily,” and here “the mere fact that in
`
`three previous decisions the Board arrived at a different determination for the term
`
`‘programming’ is of no moment.”
`
`(6) Whether the Board erred as a matter of law in construing “decrypt” as
`
`2
`
`
`
`IPR2016-01520
`Patent 8,559,635
`
`encompassing deciphering through the descrambling of analog information such as
`
`analog television signals, rather than being limited exclusively to the deciphering
`
`of digital information signals.
`
`(7) Whether the Board incorrectly held that claims 13, 18, 20, and 32 are
`
`anticipated by U.S. Pat. No. 4,817,140 (“Chandra”).
`
`(8) Whether the Board incorrectly held that claim 33 is obvious based on
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`Chandra further in view of the publication entitled “When Network File Systems
`
`Aren’t Enough: Automatic Software Distribution Revisited” (“Nachbar”).
`
`(9) Whether the Board incorrectly held that claim 3 is obvious based on
`
`U.S. Pat. No. 4,536,791 (“Campbell”).
`
`(10) Whether, in arriving at its decision, the Board acted in a manner that
`
`was arbitrary, capricious, an abuse of discretion, or otherwise not in accordance
`
`with law or was based on findings unsupported by substantial evidence.
`
`(11) Whether the appointment of the Administrative Patent Judges (APJs)
`
`who presided over the inter partes review was unconstitutional, requiring at a
`
`minimum vacatur of that panel’s rulings and decisions and remand to a new panel
`
`of APJs pursuant to Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed.
`
`Cir. Oct. 31, 2019).
`
`Concurrently with this submission, a copy of this Notice of Appeal is being
`
`filed with the Patent Trial and Appeal Board, and a copy is being filed
`
`3
`
`
`
`IPR2016-01520
`Patent 8,559,635
`
`electronically with the United States Court of Appeals for the Federal Circuit along
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`with the requisite filing fee. No fees are believed to be due to the United States
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`Patent and Trademark Office in connection with this filing, but authorization is
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`hereby given for any required fees to be charged to Deposit Account No. 50-6989.
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`Dated: November 19, 2019
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`Respectfully submitted,
`
`
`
`
`
`
`/Douglas J. Kline/
`
`By:
`
`Douglas J. Kline
`GOODWIN PROCTER LLP
`100 Northern Ave.
`Boston, MA 02210
`(617) 570-1000
`
`Ce Li
`GOODWIN PROCTER LLP
`1900 N Street, NW
`Washington, DC 20036
`(202) 346-4000
`
`Attorneys for Patent Owner
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-01520
`Patent 8,559,635
`
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was served on
`
`November 19, 2019, via email, to attorneys for Petitioner:
`
`
`
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory Arovas
`KIRKLAND & ELLIS LLP
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`greg.arovas@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`The undersigned certifies that, in addition to being filed electronically
`
`
`
`through the Patent Trial and Appeal Board End to End (PTAB E2E) system on
`
`November 19, 2019, a true and correct copy of the foregoing PATENT
`
`OWNER’S NOTICE OF APPEAL was served November 19, 2019, on the
`
`Director of the United States Patent and Trademark Office at the following
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`address:
`
`
`
`
`
`
`
`The undersigned also certifies that a true and correct copy of the foregoing
`
`IPR2016-01520
`Patent 8,559,635
`
`
`PATENT OWNER’S NOTICE OF APPEAL was filed electronically on
`
`November 19, 2019, with the United States Court of Appeals for the Federal
`
`Circuit.
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Douglas J. Kline/
`
`
`
`Douglas J. Kline
`GOODWIN PROCTER LLP
`100 Northern Ave.
`Boston, MA 02210
`(617) 570-1000
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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