Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 38
`Entered: February 15, 2018
`
`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.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 38
`Entered: February 15, 2018
`
`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.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(b), and this Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`that Petitioner has shown by a preponderance of the evidence that claims 3,
`18, 20, 32, and 33, of the instituted claims of U.S. Patent No. 8,559,635 B1
`(Ex. 1003, “the ’635 Patent”), are unpatentable. We dismiss consideration of
`claims 4, 7, and 13, as discussed below. We also determine that the
`proposed substitute claims in Patent Owner’s Motion to Amend do not meet
`the requirements of 37 C.F.R. § 42.121, and they are not patentable over the
`art of record, and thus, we deny the Motion to Amend.
`
`A. Procedural History
`Apple Inc. (“Petitioner”) filed a petition to institute an inter partes
`review of claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent.
`Paper 1 (“Pet.”). Personalized Media Communications LLC (“Patent
`Owner”) filed a preliminary response. Paper 5 (“Prelim. Resp.”). Pursuant
`to 35 U.S.C. § 314(a), we instituted an inter partes review on four grounds:
`(1) Claims 13, 18, 20, and 32 under 35 U.S.C. § 102 as anticipated by
`Chandra,1 (2) Claim 33 under 35 U.S.C. § 103(a) as unpatentable in view of
`Chandra and Nachbar, 2 (3) Claims 4 and 7 under 35 U.S.C. § 102 as
`
`
`1 US Patent No. 4,817,140, filed Nov. 5, 1986 (Ex. 1041) (“Chandra”).
`2 Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-
`13, 1986 (Ex. 1042) (“Nachbar”).
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`anticipated by Seth-Smith,3 and (4) Claim 3 under 35 U.S.C. § 103(a) as
`unpatentable Campbell.4 See Paper 7 (“Dec. to Inst.”), 58.
`After institution of trial, Patent Owner then filed a Patent Owner
`Response (Paper 17, “PO Resp.”), to which Petitioner filed a Reply (Paper
`26, “Pet. Reply”). In addition, Patent Owner also filed a Contingent Motion
`to Amend (Paper 16, “Mot. Amend.”), to which Petitioner filed an
`Opposition (Paper 25, “Opp.”). Patent Owner then filed a Reply (Paper 30,
`“PO Reply”) to Petitioner’s Opposition to the Contingent Motion, and
`Petitioner filed a Sur-Reply (Paper 36, “Sur-Reply”) supporting the
`Opposition.
`An oral argument was held on October 26, 2017. A transcript of the
`oral argument is included in the record. Paper 37 (“Tr.”).
`
`B. Additional Proceedings; Dismissal of Claims
`Petitioner informs us that the ’635 Patent is the subject of a lawsuit:
`Personalized Media Communications, LLC v. Amazon.com, Inc., No. 2:15-
`cv-1366-JRG–RSP (E.D. Tex. filed July 30, 2015). Pet. 61. We note that
`Petitioner filed a first petition challenging the ’635 Patent, for which we
`determined certain claims, specifically claims 4, 7, 13, 21, and 28–30, as
`being unpatentable on September 19, 2017. Apple, Inc. v. Personalized
`Media Comm. LLC, IPR2016-00754, slip op. at 72 (PTAB Sept. 19, 2017)
`(Paper 41). Patent Owner has sought rehearing of that latter decision, which
`is being determined concurrently. Petitioner also lists a number of related
`
`
`3 US Patent No. 4,886,770, filed Aug. 14, 1986 (Ex. 1043) (“Seth-Smith”).
`4 US Patent No. 4,536,791, PCT filed Mar. 31, 1981 (Ex. 1044)
`(“Campbell”).
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`patents involved in district court cases and other related patents involved in
`inter partes reviews. Pet. 61–62.
`As noted above, of the challenged claims, claims 4, 7, and 13 were
`found to be unpatentable. Under 35 U.S.C. § 315(e)(1), Petitioner may not
`maintain a proceeding before the Office with respect to those claims
`previously found to be unpatentable, since they were found to be
`unpatentable in the prior final written decision. As discussed at Oral
`Hearing, both parties agreed that claims 4, 7, and 13 should be dismissed
`from the instant proceeding, and those claims were not discussed during that
`oral hearing. See Tr. 3–6. Given the instant facts, we need not entertain a
`motion to dismiss those claims 4, 7, and 13, because we sua sponte dismiss
`them from consideration in the instant proceeding. Given this dismissal, we
`need not consider the anticipation ground over Seth-Smith, applied against
`claims 4 and 7, and we also need not consider the anticipation ground over
`Chandra with respect to claim 13.
`
`C. The ’635 Patent
`The ’635 Patent is titled “Signal Processing Apparatus and Methods”
`and generally relates to a unified system of programming communication.
`Ex. 1003, Abstr. The challenged claims relate to methods of controlling the
`decryption of programming at a subscriber station or a receiver station.
`Independent claims 3 and 18 are considered representative and are
`reproduced below:
`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:
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`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 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.
`Id. at 286:29–53.
`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
`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
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`passing said decrypted portion of said at least one encrypted
`digital information transmission to one of said processor and an
`output device.
`Id. at 288:10–25.
`The ’635 Patent describes access control to transmitted content at a
`receiver station. Ex. 1003, Abstr. Figure 4 of the ’635 Patent, reproduced
`below, illustrates a receiver station:
`
`
`
`As shown above in Figure 4, the ’635 Patent discloses a receiver station
`having signal processor 200 to control tuners 214, 215, and 223, the
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`230. Id. at 148:30–35. In one example described in the Specification, the
`“Wall Street Week” program is transmitted to the receiver station by a cable
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`end “encrypts the digital audio information of said transmission, in a fashion
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`well known in the art, using particular cipher algorithm C and cipher key Ca,
`then transmits the information of said program on cable channel 13.” Id. at
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`local-cable-enabling-message (#7), is transmitted with instructions that
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`the instructions causes controller 20 to receive the cable channel
`transmission, select the information of a cipher key Ca from among the
`information portion, and transfer the cipher key to decryptor 107. Id. at
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`decryptor 107 then decrypts “using said key information and selected
`decryption cipher algorithm C, and output[s] the decrypted information of
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`152:48–51.
`Subsequently, a second SPAM message that consists of an “01”
`header provides “1st-stage-enable-WSW-program” instructions as the
`information segment information. Id. at 153:38–43. Executing the “1st-
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`first stage of decrypting the video information of the “Wall Street Week”
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`received information using decryption cipher key Ba and decryption cipher
`algorithm B. Id. at 154:28–33.
`A third SPAM message provides “2nd-WSW-program enabling-
`message” instructions, causing the controller to affect a second stage of
`decrypting the digital video information of “Wall Street Week.” Id. at
`
`7
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`156:62–157:5. The second stage of decrypting the video information of the
`“Wall Street Week” program transmission is completed using the decryption
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`station to commence the transfer of the decrypted television information of
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`Id. at 159:55–59.
`
`
`II. DISCUSSION
`
`A. Priority Date for the Challenged Claims of the ’635 Patent
`Patent Owner argues that all of the prior art references cited by the
`Petitioner were filed or published after November 3, 1981, the priority date
`which Patent Owner argues is applicable to claims of the ’635 Patent; thus,
`Patent Owner argues that the references do no constitute prior art and cannot
`render each of the challenged claims unpatentable. PO Resp. 4–42.
`Petitioner responds that the challenged claims are not entitled to the earlier
`priority date. Pet. Reply 1–17. We address the parties’ contentions below.
`The prior art status of the prior art hinges on the effective priority date
`for the ’635 patent with respect to support for the challenged claims.
`Petitioner contends that the earliest effective priority date for the challenged
`claims of the ’635 patent (through a series of continuation patents) is the
`filing date of U.S. Patent No. 4,965,825 (“’825 patent”) on September 11,
`1987. See Pet. 5. The ’635 patent claims Continuation-in-Part (“CIP”)
`status from September 11, 1987 to a chain of continuing applications
`purportedly having a priority date of November 3, 1981––the filing date of
`the earliest-filed ancestor patent in the chain, U.S. Patent No. 4,694,490
`(“’490 patent”). See Ex. 1003, [63]. Patent Owner contends that the
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`effective priority date of the challenged claims of the ’635 patent is the filing
`date of the ’490 patent on November 3, 1981. PO Resp. 1, 4–5.
`Patent Owner contends “[t]he sufficiency of the written-description
`requirement for priority must be judged as of the filing date of the earlier
`application based on what the language of the specification would have
`meant to one of ordinary skill in the art as of the filing date of the earlier
`application.” PO Resp. 5 (citing Ariad Pharmaceuticals, Inc. v. Eli Lilly and
`Co., 598 F.3d 1336, 1355–57 (Fed. Cir. 2010); PowerOasis, Inc. v. T–
`Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Vas–Cath Inc. v.
`Mahurkar, 935 F.2d 1555, 1563–64, 66 (Fed. Cir. 1991)). As a preliminary
`matter, Patent Owner disputes the propriety of the analysis of Mr.
`Wechselberger, Petitioner’s declarant. Id. at 6–9. Even accepting,
`arguendo, that Mr. Wechselberger’s analysis was conducted from the wrong
`viewpoint, i.e., from the perspective of one of ordinary skill in the art in
`1987, instead of 1981, we are not convinced that Petitioner’s case against the
`earlier priority date rests solely on their declarant’s testimony. We disagree
`that the testimony should be “given no weight” (id. at 9), and we review the
`testimony, along with other arguments presented by Petitioner, as well as the
`testimony and arguments of Patent Owner, in determining the proper priority
`for the claims.
`1. “programming”
`Claim 3 of the ’635 Patent recites the term “programming.” The ’490
`patent discloses “provid[ing] techniques whereby, automatically, single
`channel, single medium transmissions, presentations, be they radio, or other
`electronic transmissions, [which] may be recorded, [and] co-ordinated in
`time with other programing previously transmitted and recorded.” Ex. 1004,
`
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`3:51–56 (emphasis added). On the other hand, the later-filed ’635 patent
`states that “[t]he 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 (emphasis added).
`Therefore, the broad disclosure in the ’635 patent potentially includes
`not only “combined medium programming” and “computer programming,”
`it also includes “everything . . . transmitted electronically” (subject to the
`quoted qualifiers) at the time of filing of the ’635 patent (i.e., assuming for
`the sake of argument written description exists for “everything” so
`transmitted). The earlier disclosure, however, in context, only includes
`“other electronic transmissions”––i.e., in context, those “other”
`transmissions that were similar to conventional “single channel, single
`medium,” “television” or “radio” transmissions at the time of filing of the
`’490 patent. Compare Ex. 1003, 6:31–34, with Ex. 1004, 3:51–56, 10:48–
`49.
`
`Petitioner argues that the broader 1987 definition of “programming”
`expands the scope of the subject matter; thus, claim 3 is not entitled to the
`1981 priority date. Pet. 12. More particularly, Petitioner argues the Federal
`Circuit instructed in PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299
`(Fed. Cir. 2008) that “where a claim term would receive a broader or more
`inclusive claim construction in view of the later specification, the claim is
`not entitled to the benefit of the earlier filing date.” Pet. 12 (citing
`PowerOasis, 522 F.3d at 1310–11).
`We acknowledge that Patent Owner and its declarant, Dr. Alfred
`Weaver, point out where claim 3 finds support in the ’490 patent. PO Resp.
`
`10
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`10–13 (citing Ex. 2023 ¶¶ 105–37; Ex. 1004). As discussed above, the
`change in the meaning of “programming,” in the contexts of the different
`specifications, constitutes a change sufficient such that the 1981
`Specification does not provide proper written description support, as we
`determined in the Institution Decision. See Dec. to Inst. 10. 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 noted, the 1987
`’635 patent Specification broadened the meaning of programming to
`encompass “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 (emphasis added). Even considering Patent Owner’s arguments,
`discussed below, we continue to determine that claim 3 cannot correctly
`claim priority to the 1981 priority date.
`Patent Owner argues that PowerOasis is 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. PO Resp. 14–15 (citing
`Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1333–34 (Fed.
`Cir. 2008)). Patent Owner’s argument contradicts the holding of Power
`Oasis, as the Federal Circuit considered both the original application and a
`continuation-in-part application in that case, 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.
`
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`PowerOasis, 522 F.3d at 1310 (“Because none of this support was present in
`the Original Application and because the Original Application did not
`disclose a customer interface apart from the vending machine, the asserted
`claims are only entitled to the 2000 CIP Application filing date of June 15,
`2000.”). Accordingly, notwithstanding Patent Owner’s characterization of
`the holding of PowerOasis, 522 F.3d at 1306, we determine Patent Owner
`impermissibly broadened the scope of the claim term “programming” in the
`’635 patent, relative to the disclosure of the term in the ancestor 1981 ’490
`patent.
`Patent Owner also argues that “the ’490 Patent discloses the same
`type of ‘programming’ as described in the 1987 Specification.” PO Resp.
`25. Patent Owner argues that the meaning of “programming,” in the ’490
`patent is not limited to a single channel or medium and can include
`everything that is transmitted electronically. Id. at 15–16 (citing Ex. 2023
`¶¶ 112–31). It is telling, however, that the citations to the ’490 Patent (Ex.
`1004, 3:3–41, 48–60, 10:15–39) do not recite “everything that is transmitted
`electronically,” but rather discloses coordination, delivery, channels, and
`media of transmission, while still detailing programming to be used with a
`single channel and a single medium. The 1987 Specification clearly
`contemplates known analog and digital programming, whereas the 1981
`Specification does not. Compare Ex. 1003, 235:33–38, with Ex. 1004 (with
`the former disclosing “digital television transmissions,” and no equivalent in
`the latter). This example is further buttressed by Petitioner, pointing out that
`Patent Owner’s declarant acknowledges that the transmission of digital
`television signals were “experimental” in 1981. Pet. Reply 5 (citing Ex.
`1049, 42:18–43:11, 77:21–79:5, 88:11–15). Although the term
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`“programming” is used in both specifications, the meaning of that term
`changed over the course of time.
`Patent Owner also argues that “[w]hether additional examples of
`‘programming’ were known or developed after November 3, 1981 is not
`relevant to the priority analysis under Section 120.” PO Resp. 19. We do
`not agree. Under 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. It is not the case that the instant claims utilize
`“programming” as it would have been understood in the context of
`ordinarily skilled artisans in 1981.
`Although Petitioner raised additional support issues of claim 3 (see
`Pet. 13), we need not reach those arguments based on the conclusions made
`herein. Therefore, we determine 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 patent on September 11, 1987.
`2. “unaccompanied by any non-digital information
`transmission”
`Claim 18 of the ’635 Patent 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” (claims 20, 32, and 33 provide similar recitations) (emphasis
`added). As discussed below, we have previously determined with respect to
`the ’635 Patent that the broadest reasonable construction of the limitation “at
`least one encrypted digital information transmission is unaccompanied by
`any non-digital information transmission” means “the at least one encrypted
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`digital information transmission does not include non-digital information
`such as analog information.” Apple Inc., v. Personalized Media
`Communications LLC, Case No. IPR2016-00754 (“the ’754 IPR”), slip. op.
`at 10 (PTAB Sept. 21, 2016) (Paper 8) (“’754 Inst. Dec.”). We do not
`deviate from the construction, as described below. Petitioner argues that the
`negative limitation that transmissions are “unaccompanied by any non-
`digital information transmission” is never described in the 1981 ’490 patent.
`Pet. 6 (citing Ex. 1001 ¶¶ 83–87).
`Petitioner’s declarant, Mr. Wechselberger, states that the 1981
`’490 patent describes receiving a “recipe in encoded digital form,” but this
`recipe is received via a cable television channel. Ex. 1001 ¶ 84 (citing
`Ex. 1004, 20:28–37). Mr. Wechselberger states that the 1981 ’490 patent
`explains that these signals are embedded into programs and “lie outside the
`range of the television picture displayed on a normally tuned television set.”
`Id. (citing Ex. 1004, 4:5–6, 4:18–22). Mr. Wechselberger testifies that
`person of ordinary skill in the art would have understood, in view of this
`disclosure, that the transmission of the recipe is accompanied by
`conventional analog programming. Id. Accordingly, Petitioner argues that
`the 1981 ’490 patent fails to support the claim recitation that the
`transmissions are “unaccompanied by any non-digital information
`transmission.” Pet. 7.
`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 transmission,” where any non-digital information is prohibited
`from that transmission. See Dec. to Inst. 15.
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`In response, Patent Owner argues that certain embodiments in the
`1981 ’490 patent support the negative limitation. PO Resp. 29–42. For
`example, Patent Owner points to information transmitted via a telephone
`link, citing the statement that a signal processor may “telephone a remote
`site to get an additional signal or signals necessary for the proper decryption
`and/or transfer of incoming programing transmissions.” Id. at 29–31 (citing
`Ex. 1004, 15:20–25). Patent Owner continues that those signals are made of
`“signal words,” described as being all-digital, and that “a receiver station
`could make a connection via the telephone line to receive an all-digital
`information transmission made up of digital signal words used for proper
`decryption of an incoming programming transmission.” Id. at 29–30 (citing
`Ex. 1004, 3:6–7, 20:38–43, 8:39–40; Ex. 2023 ¶¶ 172–77). We do not
`agree.
`As Petitioner counters, the limitation in question is of “at least one
`encrypted digital information transmission,” and Patent Owner’s discussion
`of encryption refers to encryption of cable television transmissions, and not
`telephone transmissions. Pet. Reply 9 (citing PO Resp. 30–31) (emphasis
`added). Even if the “signal words” are used for encryption or decryption, it
`does not necessarily follow that those “signal words” themselves would be
`encrypted, in order to support the claim limitations. Further, Patent Owner’s
`assertion that “a receiver station could make a connection” speaks to
`probabilities and possibilities without relevant context, rather than
`demonstrating proper written description support.
`Patent Owner also argues that Petitioner’s position is undercut by its
`citation to Chandra, in the unpatentability ground, which is said to disclose
`receiving a transmission via a telephone line. PO Resp. 30 (citing Pet. 30).
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`We are convinced, however, per the discussion in later sections, that
`Chandra describes transmitting encrypted data over a telephone line, in
`distinction with the 1981 ’490 patent that does not specify that data
`transmitted over the telephone line are encrypted. As such, we are
`convinced that the explicit disclosure in Chandra informs one of transmitting
`encrypted data over a telephone line, but the 1981 ’490 patent does not.
`Patent Owner also argues that Figures 6C and 6D of the ’490 patent
`(Ex. 1004) provide examples of the claimed limitation. PO Resp. 31–37.
`Those figures, annotated by Patent Owner, are reproduced below:
`
`
`Patent Owner asserts that the Wall Street Week example (Fig. 6C) and
`the Julia Child example (Fig. 6D) illustrate support for “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.” Id. Patent Owner argues that news
`services “transmit news on different channels carried on the multi-channel
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`cable transmission to converter boxes, 222 and 201, and to signal processor,
`200,” and that the receiver station receives multiple channels of data, at least
`one of which is a digital data channel with stock information. Id. at 31–32
`(citing Ex. 1004, 18:43–68, Fig. 6C; Ex. 2023 ¶¶ 178–187). With respect to
`the other example, Patent Owner argues that the cable converter box 222
`tunes to one channel of several available channels to receive a transmission
`that only contains an encrypted “recipe in encoded digital form,” which is
`separate from any cable television transmission. Id. at 35–36 (citing Ex.
`1004, 20:35–37, Fig. 6D; Ex. 2023 ¶¶ 184–185). We do not agree with
`Patent Owner’s assessment.
`As Petitioner counters, the multi-channel cable transmission, in Figure
`6C, is made up of multiple channels, and Patent Owner acknowledges that it
`is “one channel of several available channels” received by the receiver
`station together. Pet. Reply 10–11 (citing PO Resp. 35; Ex. 1049, 48:19–
`49:8). Petitioner points out that conventional analog television
`programming and signals are included in the received channels, and thus the
`digital data channel with stock information will be accompanied by non-
`digital information. Id. at 11–12. Petitioner also points out that nothing in
`the 1981 ’490 patent details that the stock information is encrypted, such that
`the digital data channel cannot provide support for the subject limitation of
`claims 18, 20, 32, and 33.
`With respect to the Figure 6D example, we also agree with Petitioner
`that nothing in the 1981 ’490 patent specifies that an appropriate channel to
`receive the encrypted recipe must be a separate, all-digital data channel. Id.
`at 13 (citing Ex. 1004, 20:11–68). The “alternative method” describes
`receiving the recipe utilizing the same channel that the French Chef is
`
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`Patent 8,559,635 B1
`
`broadcast, such that the “primary embodiment” would utilize a separate
`channel, but there is no suggestion in the 1981 ’490 patent that this should
`be an all-digital data channel. More likely, as Petitioner suggests (id.), the
`recipe would be received on a conventional cable television channel, albeit
`different from the one on which the television program is received. As such,
`we determine that the encrypted recipe in encoded digital form cannot
`provide support for the subject limitation of claims 18, 20, 32, and 33.
`Patent Owner also argues that Figure 6E, directed to the “How to
`Grow Grass” example in the ’490 patent, illustrates support for the subject
`negative limitation. PO Resp. 37–42. Patent Owner argues that the receiver
`station in the 1981 ’490 patent can receive all-digital information from laser
`videodisc system 232, in order to print out the contents of a digital book. Id.
`at 37 (citing Ex. 1004, 21:1–22:4; Ex. 2023 ¶¶ 188–198). Patent Owner
`continues that signal words are received from the videodisc player, and are
`used to decode the book information, and that the specification does not
`disclose the existence of any analog information in the videodisc player’s
`signal. Id. at 38 (citing Ex. 1004, 21:20–51; Ex. 2023 ¶ 191). We do not
`agree with Patent Owner’s interpretation.
`The specific embodiment uses “conventional laser videodisc
`equipment and techniques, well known in the art.” Ex. 1004, 21:10–12. The
`1981 ’490 patent does not specify that the output of the videodisc player
`only contains digital information. Patent Owner argues that videodisc
`systems could store “all-digital information” in “bit-oriented optical digital
`disc” by “us[ing] one recorded pit for each bit of information.” PO Resp. 39
`(citing Ex. 1047, 13–14; Ex. 2023 ¶¶ 192–195). We agree with Petitioner,
`however, that the cited section in Exhibit 1047 refers to “optical digital disc
`
`18
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`IPR2016-01520
`Patent 8,559,635 B1
`
`technology,” which is not necessarily the same as conventional videodisc
`systems, especially in the context of 1981. Pet. Reply 16 (citing Ex. 1051,
`77:8–12, 80:25–81:4; Ex. 1047, 7–14; Ex. 1053 ¶ 9). We are persuaded that
`conventional, consumer videodisc systems, in 1981, need not output digital-
`only information. See id. As such, we determine that the output of the laser
`videodisc system in the 1981 ’490 patent cannot provide support for the
`subject limitation of claims 18, 20, 32, and 33.
`In addition, even if the relied-upon prior art system at Figure 6E
`pertains to locally stored digital information, such a prior art system simply
`transmits information from one local piece of equipment to another in an
`entirely local transmission within the same receiver station. This does not
`provide support for the full range of the challenged claims, which read on
`receiving transmissions from larger distances and include all manner of
`digital modulation types not contemplated by the 1981 ’490 patent.
`Accordingly, we determine Patent Owner fails to describe sufficiently
`how the embodiments in the 1981 ’490 patent provide support for the
`limitations in claim 18, and similar recited limitations in claims 20, 32, and
`33. Therefore, we determine that Patent Owner fails to rebut sufficiently
`Petitioner’s contention that the 1981 ’490 patent does not support at least
`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.
`3. Conclusions Regarding Priority Date of Challenged Claims
`In view of the above, we determine Petitioner shows by a
`preponderance of evidence that Chandra, Nachbar, and Campbell qualify as
`prior art against challenged claims 3, 18, 20, 32 and 33 of the ’635 Patent.
`
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`B. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,5 the Board will interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the
`Specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpret
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