UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`
`
`Patent Owner.
`
`
`
`Inter Partes Review No. IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`
`
`Patent Owner.
`
`
`
`Inter Partes Review No. IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`
`
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................................... 1
`
`BACKGROUND ...................................................................................................... 2
`
`ARGUMENT ............................................................................................................ 4
`
`I.
`
`II.
`
`Remand to the Board is necessary due to intervening Federal
`Circuit precedent rejecting the Board’s construction of
`materially identical terms in a related patent. ...................................... 4
`
`Remand to the Board is necessary given a conflict between the
`Board’s decision and a district court’s construction of
`materially identical claim terms in the ’091 patent. ........................... 10
`
`III.
`
`PMC’s request must be considered by a principal officer ................. 15
`
`CONCLUSION ....................................................................................................... 15
`
`
`
`
`
`i
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) ............................................................................ 3
`
`Iancu v. Luoma,
`141 S. Ct. 2845 (2021) .......................................................................................... 4
`
`Personalized Media Commc’ns, LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. 2020) ...................................................................passim
`
`Personalized Media Commc’ns, LLC v. Apple Inc.,
`No. 15-cv-1366, 2021 WL 2697846 (E.D. Tex. Mar. 14, 2021) .......... 2, 3, 11, 13
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 15
`
`Proppant Express Invs., LLC v. Oren Techs., LLC,
`IPR2018-00733, Paper 95 (Nov. 18, 2021) ............................................ 2, 5, 9, 10
`
`United States v. Arthrex,
`141 S. Ct. 1970 (2021) ...................................................................................... 1, 4
`
`United States v. Eaton,
`169 U.S. 331 (1898) ............................................................................................ 15
`
`Statutes
`
`5 U.S.C. § 3345(a)(3) ............................................................................................... 15
`
`35 U.S.C. § 3(b)(2)(A) ............................................................................................. 15
`
`
`
`ii
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`INTRODUCTION
`
`Patent Owner Personalized Media Communications, LLC (“PMC”)
`
`respectfully requests the Director’s review of the Board’s final written decision in
`
`this matter, which has been remanded from the Federal Circuit in light of United
`
`States v. Arthrex, 141 S. Ct. 1970 (2021). Vacatur of the Board’s decision is
`
`warranted based on intervening precedent, including precedent from the Federal
`
`Circuit, that is irreconcilable with the Board’s invalidity determination.
`
`First, and most importantly, intervening precedent from the Federal Circuit
`
`rejected the same Board panel’s construction of materially identical terms in a
`
`related patent. In Personalized Media Communications, LLC v. Apple Inc., 952 F.3d
`
`1336 (Fed. Cir. 2020) (“PMC ’091”), the Board had construed the term “encrypted”
`
`in U.S. Patent Number 8,191,091 (the ’091 patent) to encompass non-digital
`
`information. Id. at 1339. The Federal Circuit reversed because the Board had
`
`erroneously failed to consider the applicant’s “repeated and consistent remarks
`
`during prosecution,” which established that “encryption and decryption require a
`
`digital process in the context of the ’091 patent.” Id. at 1345. In this proceeding,
`
`the same Board panel adopted the same broad construction of “encrypted” in a
`
`related patent with the same specification. As in the decision the Federal Circuit
`
`reversed in PMC ’091, the Board refused to consider statements the applicant made
`
`during prosecution—statements that are materially identical to the ones at issue in
`
`1
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`PMC ’091 and that make it equally clear that encryption requires a digital process.
`
`In Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00733, Paper 95, at
`
`3 (Nov. 18, 2021), Director review resulted in a remand to the Board where the
`
`Board’s decision was “substantially similar” to one that the Federal Circuit had
`
`reversed. Vacatur and remand is equally warranted here.
`
`Second, the Board’s analysis of the priority date of claims 18, 20, 32, and 33
`
`rests on a construction of the phrase “unaccompanied by any non-digital information
`
`transmission” that is irreconcilable with the district court’s construction of a
`
`materially identical term in the ’091 patent. Personalized Media Commc’ns, LLC v.
`
`Apple Inc., No. 15-cv-1366, 2021 WL 2697846, at *3 (E.D. Tex. Mar. 14, 2021).
`
`Because the district court got the claim construction issue right, and because the
`
`issue is dispositive as to those claims, vacatur and remand is warranted.
`
`BACKGROUND
`
`The Board’s final written decision in this proceeding invalidated claims 3, 18,
`
`20, 32, and 33 of PMC’s U.S. Patent No. 8,559,635 (the ’635 patent).1 Paper 38, at
`
`66. A key issue was whether claim terms relating to “encryption” and “decryption”
`
`were limited to all-digital processes. The Board held that the claim terms were not
`
`
`1 The Board initially denied institution on claims 3, 18, 20, 32, and 33 in IPR2016-
`00754, but instituted review of those claims in this proceeding after Apple filed this
`second petition. PMC is also seeking Director review in IPR2016-00754.
`
`2
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`so limited, but could also encompass analog information. Id. at 20-27. The Board’s
`
`decision rested on its conclusion that the prosecution history was “unclear.” Id. at
`
`27. Based on that claim construction, the Board held that claims 3, 18, 20, 32, and
`
`33 of the ’635 patent are unpatentable on anticipation or obviousness grounds.
`
`After the Board’s denial of rehearing, the Federal Circuit decided Arthrex,
`
`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), which held that the
`
`Board’s structure violated the Constitution’s Appointments Clause and that Arthrex
`
`was entitled to a new hearing before a new Board panel. Id. at 1335, 1338-40.
`
`PMC appealed the final written decision to the Federal Circuit. While PMC’s
`
`appeal was pending, the Federal Circuit decided PMC ’091. That case arose from
`
`another of Apple’s IPR petitions, which was directed to PMC’s ’091 patent. That
`
`patent is related to, and shares the same specification as, the ’635 patent at issue
`
`here. The Board’s final written decision invalidated the reviewed claims of the ’091
`
`patent. On appeal, the Federal Circuit held that the Board misconstrued the claim
`
`term “an encrypted digital
`
`information
`
`transmission
`
`including encrypted
`
`information” because PMC’s prosecution statements made clear that “encryption
`
`and decryption require a digital process in the context of the ’091 patent.” PMC
`
`’091, 952 F.3d at 1344-46. The Court reversed the Board’s decision as to all claims
`
`containing that term, because all the asserted grounds of unpatentability relied on
`
`prior art that used mixed digital and analog signals. Id. at 1346.
`
`3
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`PMC moved the Federal Circuit to vacate and remand in light of both Arthrex
`
`and PMC ’091. The Federal Circuit vacated the Board’s decision, ordered a new
`
`hearing, and added that, “[o]n remand, the Board may also consider this court’s
`
`decision in [PMC ’091].” Fed Cir. No. 20-1198, ECF No. 32 (May 21, 2020).
`
`The Supreme Court then granted certiorari in Arthrex and vacated the Federal
`
`Circuit’s decision. Though it agreed that the Board’s structure violated the
`
`Constitution, it adopted a different remedy, holding that the statute must be read to
`
`permit the Director to review final Board decisions. Arthrex, 141 S. Ct. at 1987
`
`(plurality opinion); see id. at 1997 (Breyer, J., concurring in the judgment in relevant
`
`part). The Supreme Court then granted the government’s consolidated petition for
`
`certiorari in this case and many others, vacated the Federal Circuit’s prior ruling, and
`
`remanded to the Federal Circuit. Iancu v. Luoma, 141 S. Ct. 2845, 2847 (mem.)
`
`(2021). The Federal Circuit then remanded this case to allow PMC “to request
`
`Director rehearing of the final written decision[], including arguments concerning
`
`[PMC ’091].” Fed Cir. No. 20-1198, ECF No. 39 (Nov. 8, 2021).
`
`ARGUMENT
`
`I.
`
`Remand to the Board is necessary due to intervening Federal Circuit
`precedent rejecting the Board’s construction of materially identical
`terms in a related patent.
`
`The patent at issue in PMC ’091 was closely related to the patent at issue in
`
`this proceeding—it involved the same inventors and the same specification, and was
`
`4
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`in the same patent family. The claim terms at issue in PMC ’091—“encrypt” and
`
`“decrypt”—are the same ones at issue in this proceeding. See Paper 38, at 20-27.
`
`The same Board panel construed those terms in a materially identical way in PMC
`
`’091 and this proceeding, concluding that those terms could cover both digital and
`
`analog information. Id. at 27; PMC ’091, 952 F.3d at 1339. The panel’s reasoning
`
`was also identical in PMC ’091 and this proceeding: Most importantly, the panel
`
`refused to meaningfully consider the applicant’s statements during prosecution
`
`because they did not “rise to the level of disclaimer.” PMC ’091, 952 F.3d at 1345;
`
`see Paper 38, at 27. The Federal Circuit rejected the Board’s decision in PMC ’091,
`
`concluding that “encrypt” and “decrypt” are limited to digital information based on
`
`the “decisive” nature of statements during the prosecution of the ’091 patent—
`
`statements that are materially identical to statements in the ’635 prosecution history.
`
`PMC ’091, 952 F.3d at 1345-46; see also Ex. 2012, at 1018, 1090, 1156, 1158-59,
`
`1231, 1294, 1330. The Federal Circuit’s decision in PMC ’091 thus requires vacatur
`
`of the “substantially similar” Board decision here, and a remand for reconsideration
`
`in light of PMC ’091. Proppant, IPR2018-00733, Paper 95, at 3.
`
`In PMC ’091, the Board construed the phrase “an encrypted digital
`
`information transmission including encrypted information” in a related PMC patent.
`
`952 F.3d at 1340. In concluding that “encryption” could apply to both digital and
`
`analog information, the Board relied heavily on the fact that encryption could be
`
`5
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`applied to “programming,” which can consist of either analog or digital information
`
`(or both). Id. at 1341-42. The Board then refused to meaningfully consider the
`
`applicants’ statements, during prosecution, that encryption was limited to digital
`
`information. Id. at 1345. According to the Board, these statements were too
`
`“murky” to rise to the level of disclaimer. Id.
`
`The Federal Circuit reversed. It first rejected the Board’s reliance on the
`
`application of encryption to “programming.” Id. at 1341. The fact that
`
`“‘programming’ can encompass” both digital and analog transmissions, the Court
`
`explained, “does not mean
`
`that ‘decrypting’ or ‘encrypted
`
`information’
`
`encompasses” analog transmissions. Id. at 1341-42. A reference to encrypted
`
`programming can refer to the type of programming that is, in fact, transmitted
`
`digitally.
`
`The Federal Circuit then rejected the Board’s dismissal of the applicant’s
`
`statements during prosecution. Id. at 1345. The court held that “[a]n applicant’s
`
`repeated and consistent remarks during prosecution can define a claim term,” even
`
`if they “were inadequate to give rise to a disclaimer.” Id. at 1346. The applicant in
`
`the ’091 prosecution had “repeatedly and consistently voiced its position that
`
`encryption and decryption require a digital process in the context of the ’091 patent.”
`
`Id. at 1345. These statements, the court held, “are decisive” in establishing that
`
`“encryption” and “decryption” require digital, not analog, information in that patent.
`
`6
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`Id. at 1346. The court therefore reversed the Board’s claim construction and related
`
`invalidity rulings.
`
`In this case, the Board construed the same terms in the ’635 patent against the
`
`background of a materially identical intrinsic record. And the Board’s decision
`
`rested on exactly the same flawed reasoning that the Federal Circuit rejected in PMC
`
`’091. First, the Board relied heavily on the fact that encryption is applied to
`
`“programming,” which can include (but is not limited to) “analog” signals. Paper
`
`38, at 21-22. The Federal Circuit rejected this exact reasoning: Just because
`
`programming can be analog does not mean that the programming being “encrypted”
`
`or “decrypted” is analog (as opposed to digital). PMC ’091, 952 F.3d at 1341-42.
`
`Second, the Board refused to consider the applicant’s prosecution statements. Just
`
`as the Board had dismissed the statements in PMC ’091 as too “murky” to support
`
`disclaimer, 952 F.3d at 1345, the Board here dismissed the statements as too
`
`“unclear” to support disclaimer, Paper 38, at 27. This is precisely the “legal analysis
`
`and conclusion” the Federal Circuit rejected in PMC ’091. 952 F.3d at 1345-46.
`
`In fact, the applicant’s statements during prosecution in this case are
`
`materially identical to—and equally “decisive” as—the statements at issue in PMC
`
`’091. 952 F.3d at 1346. In both cases, the statements concerned the applicants’
`
`efforts to avoid or traverse rejections based on prior art that involved hybrid digital
`
`and analog information (as opposed to pure digital information). And in both cases,
`
`7
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`the applicants, citing an earlier Board reexamination decision involving a different
`
`PMC patent (the “’536 reexamination”), explained that the reference to encryption
`
`and decryption avoided the prior art by limiting the claims to purely digital
`
`information. See Paper 38, at 17-18 (discussing PMC’s statements and its reliance
`
`on the ’536 reexamination).
`
`Specifically, the applicant in the ’635 prosecution at issue here repeatedly
`
`emphasized that each of the relevant claims “involves the use of digital signals either
`
`through reference to ‘digital’ signals or through reference to ‘encryption’ and
`
`‘decryption,’” terms the Board had made clear in the ’536 reexamination “are not
`
`broad enough to read on [analog] scrambling and unscrambling.” Ex. 2012, at 1018
`
`(emphasis added); compare PMC ’091, 952 F.3d at 1344 (relying on nearly identical
`
`statements). After the examiner rejected these claims based on prior art concerning
`
`scrambled analog information, the applicant again made clear that, because
`
`“encryption requires a digital signal,” “each of the claims involves the use of digital
`
`signals either through reference to ‘digital’ signals or through reference to
`
`‘decryption’ and ‘encryption.’” Ex. 2012, at 1090; compare PMC ’091, 952 F.3d at
`
`1344 (relying on nearly identical statements). When the examiner remained
`
`unconvinced, the applicant again distinguished the prior art, which involved analog
`
`scrambling, because it did not involve “encryption as encryption is a digital process.”
`
`Ex. 2012, at 1156. And applicants proposed amendments intended to “clarify that
`
`8
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`the information transmission received is an encrypted digital information
`
`transmission”—in contrast to the prior art, which does not “teach the encryption of
`
`an entire digital signal transmission.” Id. at 1158-59; compare PMC ’091, 952 F.3d
`
`at 1344-1345 (relying on a nearly identical amendment and accompanying
`
`statements). The applicant continued to make similar statements—never backing
`
`down—until the claims were ultimately issued. E.g., Ex. 2012, at 1231
`
`(distinguishing prior art that allowed for hybrid analog-digital information because
`
`“encryption and decryption require a digital signal”), 1294 (same), 1330 (same).
`
`Thus, just as the applicant in PMC ’091 “repeatedly and consistently voiced its
`
`position that encryption and decryption require a digital process in the context of the
`
`’091 patent,” 952 F.3d at 1345, the applicant here “repeatedly and consistently”
`
`made clear that encryption and decryption require a digital process in the context of
`
`the ’635 patent at issue in this proceeding.
`
`There is, in sum, no way to reconcile the Board’s decision in this case with
`
`the Federal Circuit’s decision in PMC ’091. As in Proppant, IPR2018-00733, Paper
`
`95, at 3, the proper course is to vacate the Board’s decision and remand for the Board
`
`to reconsider its invalidity determinations in light of a claim construction that
`
`comports with PMC ’091.
`
`9
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`II. Remand to the Board is necessary given a conflict between the Board’s
`decision and a district court’s construction of materially identical claim
`terms in the ’091 patent.
`
`Another key issue before the Board was the priority date for the relevant
`
`claims: PMC argued that the relevant priority date was November 3, 1981 (the filing
`
`date of the earliest-filed predecessor, U.S. Patent Number 4,694,490 (the ’490
`
`patent)); Apple argued that the ’490 application did not provide written description
`
`support for the challenged claims, and that the priority date was thus September 11,
`
`1987 (the filing date of a continuation-in-part application). Paper 38, at 8-9. That
`
`dispute was crucial because Apple’s prior art post-dated 1981. Id. at 8.
`
`For purposes of most of the relevant claims (specifically claims 18, 20, 32,
`
`and 33), that priority-date dispute turned on whether the ’490 application described
`
`the italicized limitation from claim 18: “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.” Paper
`
`38, at 13-19. And that written description dispute turned largely on what that
`
`italicized language means. PMC argued that it only limited the format of the
`
`encrypted information itself, such that the claim would read on a digital transmission
`
`that included analog signals like modulation, sync pulses, or analog framing signals.
`
`The Board, however, construed the limitation to mean that “any non-digital
`
`information is prohibited from th[e] transmission,” even if it is not a part of the
`
`10
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`“encrypted digital information transmission” at issue. Paper 38, at 13-14. The Board
`
`did not find written description support for its narrower reading of the claim in the
`
`’490 patent.
`
`After the Board’s final written decision, however, a district court adopted
`
`PMC’s construction of a materially identical limitation in the ’091 patent. In
`
`considering whether that limitation meant that “analog synchronization signals
`
`transmitted along with digital content caused the transmission to fall outside the
`
`scope of the claim,” the court agreed with PMC that the “unaccompanied by any
`
`non-digital information transmission” limitation did not preclude the presence of
`
`“analog synchronization signals.” Personalized Media Commc’ns, 2021 WL
`
`2697846, at *3-4. Only the “information that has been encrypted” must be “all-
`
`digital”; “non-information overhead” can be analog. Id. at *1, *4.
`
`Further consideration of this issue by the Board is warranted both because the
`
`district court’s decision was correct and the issue is almost certainly outcome-
`
`determinative as to nearly all of the relevant claims. On the merits, the limitation’s
`
`text does not require that the “at least one encrypted digital information
`
`transmission” be unaccompanied by any non-digital transmission, but only by any
`
`“non-digital information transmission.” The limitation thus limits the format only
`
`of the encrypted information itself, not any “non-information overhead” that may be
`
`transmitted along with the “information.” Id. at *1. This straightforward reading of
`
`11
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`the claim text is supported by the prosecution history. The limitation was added
`
`during prosecution to overcome a rejection based on prior art that discloses a
`
`standard television transmission comprising scrambled analog video and digital
`
`audio. Ex. 2012, at 1330-31. The amendment overcame that objection by clarifying
`
`the encrypted information itself must be entirely digital, but it does not prohibit non-
`
`information analog signaling.
`
`Under the district court’s construction, the ’490 patent provides written
`
`description support for the limitation at issue, and the 1981 priority date is thus
`
`warranted. The “French Chef” example using Figure 6D is a good example. Figure
`
`6D shows a cable transmission going through a cable converter box 222 and output
`
`directly to decrypter 224, then directly to printer 221. Ex. 1004, Fig. 6D. The cable
`
`converter box 222 has no other output; therefore, cable converter box 222 cannot
`
`provide any “non-digital information.” The specification uses “The French Chef”
`
`example to show how this works: The system allows a user to request that a recipe
`
`transmitted, “in encoded digital form,” to the converter box, be decrypted by the
`
`decrypter and then printed by the printer. Ex. 1004, 20:16-59. The relevant
`
`“information”—i.e., the recipe—is entirely digital, and that digital information is not
`
`accompanied by any “non-digital information transmission.”
`
`The Board’s conclusion that this figure and example did not provide adequate
`
`support depended entirely on its faulty construction of the “unaccompanied by any
`
`12
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`non-digital information transmission” limitation. The Board concluded that, while
`
`the recipe is all digital, nothing prevented the channel in which the recipe is
`
`transmitted from also encompassing non-digital material. Paper 38, at 17-18. But
`
`it is clear from Figure 6D that the information ultimately transmitted to the printer
`
`must be digital: Its only path is through a “decrypter,” and decrypters (at least in the
`
`context of this patent) only operate on digital information, for the reasons explained
`
`above. So, to the extent the Board was right that analog information could be
`
`transmitted along with the digital information, that analog information must be the
`
`type of analog “non-information overhead” that the Board thought was precluded by
`
`the claims, but the district court correctly held was not. Personalized Media
`
`Commc’ns, 2021 WL 2697846, at *1, *4.
`
`The Board’s
`
`faulty
`
`and
`
`judicially-rejected
`
`construction of
`
`the
`
`“unaccompanied by any non-digital information transmission” limitation also
`
`infected its treatment of multi-channel transmission disclosures. In multiple places,
`
`the ’490 patent discloses digital-only information channels as part of a multi-channel
`
`system. For example, Figure 2A teaches Path C is for processing a received
`
`transmission containing only digital information, whereas Path A and Path B are for
`
`transmissions with digital information embedded in a television video signal and a
`
`television audio signal, respectively. Ex. 1004, 6:42-7:5, Fig. 2. Similarly, Figure
`
`6C and the accompanying “Wall Street Week” example involve a “DIGITAL DATA
`
`13
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`CH.,” that undisputedly conveys only digital data, like stock information. Ex. 1004,
`
`18:44-68, Fig. 6C.
`
`The Board concluded that these disclosures were insufficient because other
`
`channels in the multi-channel systems were not purely digital. Paper 38, at 17. But
`
`that conclusion, again, rests on the Board’s faulty understanding that the presence of
`
`any analog information—whatever role it plays—brings a transmission outside the
`
`scope of the claim language. As discussed, the purpose of the claim limitation, as
`
`shown by its text and history, was to exclude a transmission that integrated digital
`
`and analog information—for instance, as in the prior art, scrambled analog video
`
`and digital audio. So, here, the relevant “information” for purposes of the claim is
`
`the digital channel itself—Path C in Figure 2A and the “DIGITAL DATA CH.” in
`
`Figure 6C. Ex. 1004, Fig. 2A, Fig. 6C. That information is “unaccompanied by any
`
`non-digital information transmission” because the information in the digital channel
`
`is all digital. Separate analog information transmitted in other channels does not
`
`accompany the information in the digital channel in the same way that analog signals
`
`that are not part of the relevant encrypted information do not accompany the
`
`information.
`
`14
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`Given the district court’s rejection of the Board’s prior construction, these
`
`issues, too, should be remanded to the panel for reconsideration.2
`
`III. PMC’s request must be considered by a principal officer
`
`The final decision in this IPR must be made by a “principal officer”—a
`
`Senate-confirmed Director. The official currently “performing the functions and
`
`duties” of Director, Mr. Hirshfeld, can begin the Director review process and order
`
`reconsideration by a Board panel. But a denial of relief by Mr. Hirshfeld would not
`
`be a final decision by a principal officer. See United States v. Eaton, 169 U.S. 331,
`
`343 (1898). Mr. Hirshfeld was not named by the President or confirmed by the
`
`Senate either to his permanent job, see 35 U.S.C. § 3(b)(2)(A), or to his temporary
`
`leadership role. Nor is Mr. Hirshfeld the “Acting Director” under 5 U.S.C.
`
`§ 3345(a)(3).
`
`CONCLUSION
`
`For the foregoing reasons, the Board’s final written decision should be
`
`vacated and remanded to the panel for reconsideration.
`
`
`2 The Board also erred by rejecting PMC’s argument that claim 3 is entitled to a 1981
`(as opposed to 1987) priority date—a decision that rested on the Board’s conclusion
`that “programming” had a broader meaning in 1987 than in 1981. Paper 38, at 9-13.
`The Board’s decision rests on a misreading of the 1981 specification as well as a
`misinterpretation of the Federal Circuit’s decision in PowerOasis, Inc. v. T-Mobile
`USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008). PMC thus reserves its right to challenge
`the Board’s priority-date ruling as to claim 3 in any remand.
`
`15
`
`
`
`December 8, 2021
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`
`Respectfully submitted.
`
`/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
`
`Counsel for Patent Owner
`
`16
`
`
`
`
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`CERTIFICATE OF COMPLIANCE WITH PAGE LIMITS
`
`I hereby certify that Patent Owner’s Request for Director Review complies
`
`with the page-count limitation of Arthrex Q&As No. A8, because it does not exceed
`
`fifteen pages, excluding the cover page, signature block, and the parts of the
`
`document exempted by 37 C.F.R. § 42.24(a)(1).
`
`
`
`December 8, 2021
`
`
`Respectfully submitted.
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01520
`U.S. Patent No. 8,559,635 B1
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing document was served
`
`electronically via e-mail on this December 8, 2021, as follows:
`
`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
`
`Counsel for Petitioner
`
`
`
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`
`
`
`
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
