UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`
`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`For: Signal Processing Apparatus and Methods
`
`PATENT OWNER’S
`REQUEST FOR REHEARING
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`
`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`For: Signal Processing Apparatus and Methods
`
`PATENT OWNER’S
`REQUEST FOR REHEARING
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`LEGAL STANDARDS AND BACKGROUND ............................................ 2
`II.
`III. ARGUMENTS ................................................................................................ 3
`A.
`The Board Overlooked Evidence Demonstrating Clear
`Written Description Support for “Receiving At Least
`One Encrypted Digital Information Transmission
`[That] Is Unaccompanied By Any Non-Digital
`Information Transmission” ................................................................... 3
`The ’490 Patent’s Disclosure of “Programming” is
`Commensurate With the Scope of “Programming” in
`the 1987 Specification and There is No Evidence of
`Record Demonstrating Any Differences ............................................... 8
`IV. CONCLUSION .............................................................................................. 15
`
`B.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .............................................................. 5
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .............................................................. 2
`
`Cutsforth, Inc. v. MotivePower, Inc.,
`No. 2016-1316 (Fed. Cir. 2016) ........................................................... 14
`
`PowerOasis Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ...................................................... 2, 8, 9
`
`Therma-Tru Corp. v. Peachtree Doors Inc.,
`44 F.3d 988 (Fed. Cir. 1995) .................................................................. 3
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ........................................................ 5, 15
`
`Regulations
`
`37 C.F.R. § 42.71 ....................................................................................... 2
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Personalized Media Communications LLC (“PMC”) requests
`
`rehearing of the Board’s February 16, 2016 decision authorizing inter partes
`
`review of U.S. Pat. 8,559,635 (the “’635 Patent”) (Paper 7, “Institution Decision,”
`
`“Dec.”). PMC respectfully requests that the Board reconsider its decision
`
`regarding the priority date of Claims 3, 4, 7, 18, 20, 32 and 33. These claims are
`
`entitled to a priority date of November 3, 1981, the filing date of the parent
`
`application. Accordingly, the post-1981 cited references do not constitute prior art.
`
`First, the Board’s holding that Claims 18, 20, 32 and 33 are not entitled to
`
`the 1981 priority date was grounded upon a failure to consider all relevant
`
`embodiments in the ’490 Patent regarding the limitation at issue (“receiving at
`
`least one encrypted digital information transmission [that] is unaccompanied by
`
`any non-digital information transmission” (the “all-digital transmission”
`
`limitation)). For example, the Board did not recognize that Figure 1 of the ’490
`
`Patent discloses the reception of all-digital information transmissions over a
`
`telephone link (see ’490 Patent, Fig. 1: connection 22 to telephone link). Yet,
`
`Petitioner and its declarant agreed that data transmissions over such telephone links
`
`are “all digital” and “unaccompanied by any non-digital information,” which is
`
`totally at odds with the Board’s failure to credit Figure 1 with those characteristics.
`
`Second, the Board’s finding that Claims 3, 4 and 7 are not entitled to priority
`
`1
`
`
`
`because of the term “programming” is founded upon a legally-incorrect analysis of
`
`the ’490 Patent’s disclosure that violates the framework set forth in PowerOasis
`
`Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008). While the Board held
`
`that the 1987 Specification “expanded” the meaning of “programming”, the
`
`evidence of record is clearly to the contrary: The ’490 Patent, like the 1987
`
`Specification, describes that “programming” includes everything that is transmitted
`
`electronically to entertain, instruct or inform. The “programming” disclosed in the
`
`’490 Patent is not limited to “single channel, single medium presentations” as the
`
`Board concluded, but, rather, also includes “other electronic transmissions,” and
`
`“other programing previously transmitted and recorded, or processed in other
`
`fashions,” i.e., “everything … that is transmitted electronically,” no different from
`
`the 1987 Specification’s disclosure of “programming.” Notably, the Institution
`
`Decision does not identify any specific “programming” that lacks written
`
`description support in the ’490 Patent.
`
`II.
`
`LEGAL STANDARDS AND BACKGROUND
`
`The Board reviews requests for rehearing under an “abuse of discretion”
`
`standard. 37 C.F.R. § 42.71. An abuse of discretion occurs when the Board
`
`“exercises its discretion ‘based upon an error of law or clearly erroneous factual
`
`findings’ or commits ‘a clear error of judgment in weighing relevant factors.’”
`
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1336 (Fed. Cir. 2013).
`
`2
`
`
`
`The prior art status of the patents and publications identified in the petition
`
`hinges on the effective priority date for the ’635 Patent with respect to support for
`
`the challenged claims. The ’635 Patent claims priority back to the filing of the
`
`original U.S. Patent Appl. No. 06/317,510, which ultimately issued as the ’490
`
`Patent (the “’490 Patent”). See ’635 Patent, Cover. As PMC and its declarant, Dr.
`
`Alfred Weaver, explained in the Preliminary Response, the ’490 Patent provides
`
`written description support for the challenged claims and, therefore, the claims are
`
`entitled to the November 3, 1981 priority date. Paper 5 at 7-29; Therma-Tru Corp.
`
`v. Peachtree Doors Inc., 44 F.3d 988, 992 (Fed. Cir. 1995). The Board’s
`
`Institution Decision, however, held that the earliest effective priority date for the
`
`challenged claims is the filing date of U.S. Patent No. 4,965,825 on September 11,
`
`1987 (the “1987 Specification”). Dec. at 7-19.
`
`III. ARGUMENTS
`
`A.
`
`The Board Overlooked Evidence Demonstrating Clear Written
`Description Support for “Receiving At Least One Encrypted
`Digital Information Transmission [That] Is Unaccompanied By
`Any Non-Digital Information Transmission”
`
`The Board’s holding that Claims 18, 20, 32, and 33 are not entitled to the
`
`November 3, 1981 priority date overlooked critical written description evidence in
`
`the ’490 Patent for the step 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.” The ’490
`
`3
`
`
`
`Patent describes multiple embodiments that involve the reception of an encrypted
`
`digital information transmission that does not include analog information. Paper 5
`
`at 23-26; Ex. 2001 ¶¶ 109-113.
`
`In one overlooked example, the ’490 Patent describes that the receiver
`
`stations receive, via telephone link 22, one or more all-digital information
`
`transmissions that include digital instructions and information. See, e.g., Ex. 1004,
`
`8:50-55; 15:20-25; Fig. 5 (Signal processor 130 directly connected to “telephone or
`
`other data transfer network”); Fig. 6F (same); Paper 5 at 24-25; Ex. 2001 ¶ 109.
`
`The ’490 Patent, for example, describes that the receiver stations may “operate in a
`
`predetermined fashion and telephone a remote site to get an additional signal or
`
`signals necessary for the proper decryption and/or transfer of incoming programing
`
`transmissions.” Ex. 1004, 15:20-25. Examples of signals or signals necessary for
`
`decryption include signal words, which are described by the ’490 Patent as all-
`
`digital. Id. at 3:5-6 (a signal word is “a string of one or more digital data bits”);
`
`20: 38-43 (signal words are decrypted and “serve as the code upon which
`
`decrypter, 224, will decrypt the incoming encrypted recipe”); 8:39-40. Thus, as in
`
`the ’635 Patent’s claims at issue, the ’490 Patent describes that the receiver station
`
`receives an all-digital information transmission that includes digital signals that
`
`control devices. Id.; see also, e.g., Claim 20. This embodiment does not disclose
`
`or suggest any analog information in the all-digital information transmission.
`
`4
`
`
`
`The Petitioner and its expert, in fact, do not dispute that a telephone
`
`transmission containing digital data constitutes “at least one encrypted digital
`
`information transmission, wherein the at least one encrypted digital information
`
`transmission is unaccompanied by any non-digital information transmission.”
`
`Petitioner, for example, argues that the claim limitation “is met by Chandra’s
`
`disclosure of receiving a transmission via a communication link (telephone line,
`
`CATV, etc.).” Dec. at 26 (emphasis added). If Chandra meets the claim limitation
`
`by virtue of a digital information transmission over a telephone link, then the ’490
`
`Patent’s disclosure must meet the requirement for the same reason. Petitioner
`
`cannot have it both ways.
`
`Similarly, the Board’s assertion that there is a failure of written description
`
`support for the “unaccompanied” limitation unless the ’490 Patent includes an
`
`express statement that “prohibits” analog information is incorrect as a matter of
`
`law. See Dec. at 15 (The ’490 Patent does not “expressly or inherently indicate[]
`
`that any non-digital information is prohibited from this transmission.”). First, the
`
`standard for written description is whether the specification reasonably discloses
`
`what is the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–
`
`63 (Fed.Cir.1991). There is no requirement that the written description must
`
`disclose what is the claimed invention is not.1 The proper standard is met here
`
`1 Cf. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1345 (Fed. Cir. 2016)
`
`5
`
`
`
`because the ’490 Patent discloses an all-digital information transmission and does
`
`not describe any analog information in it. Second, the Board committed a separate
`
`legal error in finding that Chandra meets the all-digital claim limitation without
`
`requiring Chandra to include any statement—like that required by the Board for
`
`the ’490 Patent—that would “prohibit” analog information, Dec. at 26-27. The
`
`Board improperly applied a different standard when assessing the disclosure of
`
`Chandra as compared to the disclosure of the ’490 Patent.2 Indeed, both Petitioner
`
`(“[W]e have held that the exact terms appearing in the claim 'need not be used in
`
`haec verba.' We are therefore troubled by the fact that the Board did not cite any
`
`evidence other than the fact that the terms were not present in the specification to
`
`support its finding.”)
`
`2 The Board found a lack of written description support because the ’490 Patent
`
`did not state that analog information was “prohibited.” Dec. at 15. Yet, the Board
`
`found that Chandra meets the limitation using a completely different standard:
`
`“Neither Patent Owner nor its Declarant, however, identify any express or inherent
`
`disclosure in Chandra that would indicate that Chandra’s digital ‘software
`
`distribution set’ includes any non-digital information.” Id. at 30. This is not
`
`merely a disputed issue of fact. This is the application of inconsistent legal
`
`standards and burdens of proof that is an abuse of discretion—it is arbitrary,
`
`capricious, and an error of law and fact.
`
`6
`
`
`
`and PMC’s Declarants agreed that a POSITA would understand that a transmission
`
`containing digital data received via a telephone line constitutes an all-digital
`
`information transmission, as required by the claims. Ex. 1001 ¶¶ 115, 129, 135,
`
`143; Ex. 2001 ¶ 109. Petitioner’s Declarant, Mr. Wechselberger, for example,
`
`opined that Chandra transmits a software distribution set via a communication link
`
`(“telephone line”), which “is all digital” and is “unaccompanied by any non-digital
`
`information.” Dec. at 30 (citing Ex. 1001 ¶¶ 115–116). The ’490 Patent’s receiver
`
`station’s telephone link for receiving the digital signals or signals necessary for
`
`decryption is similarly “all digital” and is “unaccompanied by any non-digital
`
`information,” as the claim limitation requires. Paper 5 at 24-25; Ex. 2001 ¶ 109.
`
`In another example supporting the limitation, the ’490 Patent describes a
`
`news service station that transmits to a receiver station multiple channels of data, at
`
`least one of which is a “digital data channel” containing digital stock
`
`information. Ex. 1004, 18:49-52; Fig. 6C. For example, “[e]ach weekday,
`
`microcomputer, 205, receives, about 4:30 PM, by means of a digital information
`
`channel, all closing stock prices applicable that day.” Id. at 19:35-41; Ex. 2001 at
`
`p. 96; Paper 5 at 25-26. Rather than an analog television transmission with
`
`embedded data, the receiver station of Figure 6C could control tuner 223 to receive
`
`a “digital information channel” that contains only digital information relating to
`
`stocks of the user’s stored portfolio. Ex. 1004, 18:63-68; Paper 5 at 25-26.
`
`7
`
`
`
`In yet another example, in Figure 6E the tuner 222 receives an all-digital
`
`information transmission that includes an encrypted “recipe in encoded digital
`
`form.” Ex. 1004, 20:35-37; Paper 5 at 26. While in the “alternative” embodiment,
`
`the all-digital recipe is “embedded in an analog NTSC transmission” as Petitioner’s
`
`Declarant states, Dec. at 11 (citing to Ex. 1001 ¶ 84), that is not the case in the
`
`primary embodiment of Figure 6E. Compare Ex. 1004, 20:35-37 with 20:60-63
`
`(“An alternative method for transmitting the recipe … would be for the recipe,
`
`itself to be located in encoded digital form in the programming transmission
`
`received by TV set, 202). Thus, consistent with Claim 18, for example, a portion
`
`of the all-digital information transmission is decrypted using a code and passed to
`
`an output device or processor (e.g., a printer).3 Ex. 1004, 20:37-42; 20:57-50.
`
`B.
`
`The ’490 Patent’s Disclosure of “Programming” is Commensurate
`With the Scope of “Programming” in the 1987 Specification and
`There is No Evidence of Record Demonstrating Any Differences
`
`Citing to PowerOasis, the Board’s Institution Decision found that Claims 3,
`
`4 and 7 are not entitled to the priority date of the ’490 Patent because the ’490
`
`Patent fails to describe “programming” as “everything . . . transmitted
`
`electronically to entertain, instruct or inform.” (emphasis by the Board). Dec. at 8-
`
`10. With all due respect, the Board’s finding was based upon a flawed
`
`3 A printer would also be a “processor” under the Board’s construction because it is
`
`“a device that operates on data” of the recipe for printing. Ex. 1004, 20:49-50.
`
`8
`
`
`
`understanding of the ’490 Patent’s disclosure, and Patent Owner requests that this
`
`request for rehearing be given careful consideration.
`
`As the Federal Circuit in PowerOasis emphasized, “[it]t is elementary patent
`
`law that a patent application is entitled to the benefit of the filing date of an earlier
`
`filed application only if the disclosure of the earlier application provides support
`
`for the claims of the later application, as required by U.S.C. § 112.” PowerOasis,
`
`522 F.3d at 1306. PowerOasis undertook a straightforward two-step inquiry:
`
`(1) The limitation at issue, “customer interface,” was construed to include a
`
`remote interface that could be located on a laptop. Id. at 1302; and
`
`(2) Applying that construction, the Federal Circuit reviewed the entire
`
`specification of the earlier application and found that priority failed because the
`
`earlier application did not disclose “an interface that is located on the customer’s
`
`laptop.” Id. at 1309 (“There is simply no disclosure in the Original Application of a
`
`user interface that is either located on a customer’s laptop or even separate from
`
`the vending machine itself.”). Thus, denying priority to the parent application in
`
`PowerOasis was a straightforward exercise because the facts were undisputable—
`
`there was no laptop interface in the earlier application.
`
`Here, in applying Step (1) of the PowerOasis framework, the Board found
`
`that the meaning of “programming” encompassed “everything that is transmitted
`
`electronically to entertain, instruct or inform, including television, radio, broadcast
`
`9
`
`
`
`print, and computer programming as well as combined medium programming.”
`
`Dec. at 9 (citing Pet. 12). Dec. at 10. In Step (2), the Board should have applied
`
`its construction of “programming” (from Step (1)) to the ’490 Patent specification
`
`to ascertain written description support. As was the case in PowerOasis, the
`
`second step of the written description inquiry requires consultation of the entire
`
`specification of the earlier application. However, the Board here committed legal
`
`error in failing to conduct this essential inquiry as to the full specification. Instead,
`
`the Board’s analysis focused on a single passage in the ’490 Patent. The Board’s
`
`written description analysis for “programming” was limited to the following:
`
`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] coordinated in time with other programing
`previously transmitted and recorded.”
`Dec. at 8. Based on this single passage, the Board disposed of priority by
`
`concluding that “the earlier disclosure, 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.” Dec. at 8-9. However, the Board’s
`
`quotation is highly abbreviated compared to the actual text in the patent, and it
`
`shortchanges the patent disclosure by leaving out the introductory sentence
`
`10
`
`
`
`indicating that the programming being discussed there is in connection with just
`
`one of the many methods disclosed in the patent. Ex. 1004, 3:49.
`
`When the ’490 Patent is considered as a whole, the adequacy of the written
`
`description support for “programming” is quite evident. The ’490 Patent’s
`
`“programming,” is not limited to “single channel, single medium” television and
`
`radio transmissions. Instead, the ’490 Patent, like the 1987 Specification, describes
`
`“programming” as (a) everything that is transmitted electronically to entertain,
`
`instruct or inform, including (b) television, (c) radio, (d) broadcast print,4 (e)
`
`computer programming and (f) combined medium programming. For instance, the
`
`summary of the invention provides an example of the broad disclosure for
`
`“programming”:
`
`“Another method has application at receiver sites such as private
`homes or public places like theaters, hotels, brokerage offices, etc.,
`whether commercial establishments or not. This method provides
`techniques whereby, automatically, single channel, single medium
`presentations, be they [(b)] television, [(c)] radio, [(a)] or other
`electronic transmissions, may be recorded, [(f)] co-ordinated in time
`with [(a)] other programing previously transmitted and recorded, or
`
`4 (d) broadcast print and other data transmissions is disclosed in multiple locations.
`
`See, e.g., Ex. 1004, 16:3-22; 18:44-68; 20:11, et seq. (“Co-ordinating Print and
`
`Video”) (Julia Childs example where broadcast print recipe is printed).
`
`11
`
`
`
`processed in other fashions. [(f)]: Multimedia presentations may be
`co-ordinated in time and/or in place as, for example, when real-time
`video programing is co-ordinated with presentations [e] from a
`microcomputer working with data supplied earlier.
`
`Ex. 1004, 3:48-60 (annotation and emphasis added); see also, id. at 19:30, et seq.
`
`regarding (f) (“Co-ordinating Multimedia Presentations in Time”); Paper 5 at 18-
`
`20. Programming can take other forms in the many other embodiments:
`
`The present invention consists of methods and apparatus with several
`forms. One method provides a technique whereby a broadcast or
`cablecast transmission facility can duplicate the operation of a
`television studio automatically through the use of [(e)] instruction
`and information signals embedded in programing either supplied
`from a remote source or sources or prerecorded. The [(a)] programing
`may be delivered . . . by any means including broadcast, hard-wire,
`and manual means. The transmission facility may transmit a single
`channel or multiple channels of programing.
`Ex. 1004, 3:3-41 (annotation and emphasis added). Additional support for
`
`“programming” found throughout the ’490 Patent shows that it encompasses
`
`(a) “everything that is transmitted electronically”:
`
`The signal processing apparatus outlined in FIGS. 1, 2A, 2B, and 2C,
`and their variants as appropriate, can be used to automate the
`operations of an intermediate transmission point whether it be a
`broadcast station transmitting only a single channel of programing or
`a cable system cablecasting many channels. They can be used in a
`
`12
`
`
`
`facility transmitting television programing, radio programing, [(a)]
`and making other electronic transmissions.
`*
`
`
`
`*
`
`*
`
`The facility receives programing from many sources. Transmissions
`may be received from satellites by satellite antenna, 50 . . . Microwave
`transmissions can be received by microwave antenna, 57, and
`television video and audio receivers, 58 and 59. . . . (a) Other
`electronic programing input means, 62, can receive programing
`transmissions. Ex. 1004, 10:24-39 (annotation and emphasis added).
`See also, e.g., Ex. 2001 at p. 46; Ex. 1004, 16:5-25 (microcomputer,
`
`videodisc/video cassette, tv, and radio signals); 15:62-68 (“program[s],”
`
`“commercial[s],” “publications, articles, publishers, distributors, advertisements,
`
`etc.”); 5:16-22 and 9:21-26 (“permits revision of operating patterns and
`
`instructions”); controller “can be reprogramed from such remote sources”); 13:31-
`
`32 and 21:39-43 (signal words serve as the code for decryption); 19:41-20:7
`
`(combined medium programming). From the perspective of a person of ordinary
`
`skill in the art, there is no meaningful difference between the “television,” “radio,”
`
`“broadcast,” “print[]”, computer programming, combined medium programming,
`
`and “other electronic transmissions” programming (i.e., everything that is
`
`transmitted electronically) of the ’490 Patent and the “programming” described in
`
`the 1987 Specification. See supra; Ex. 2001 ¶¶ 95-100; Paper 5 at 16-20.
`
`Notably, the Institution Decision does not identify any specific
`
`“programming” that lacks written description support in the 1981 Specification.
`
`13
`
`
`
`The Board’s ultimate determination is conclusory and ambiguous: “We 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.” Dec. at 10. Tellingly, the Board does not cite to any evidence to
`
`support this conclusion. See Cutsforth, Inc. v. MotivePower, Inc., No. 2016-1316,
`
`2016 WL 279984, at *3-4 (Fed. Cir. Jan. 22, 2016) (conclusory statements do not
`
`satisfy the substantial evidence standard for factual findings, nor can they support
`
`the ultimate conclusion of law). Indeed, neither the Petitioner nor the Board
`
`identified any electronically-transmitted programming within the scope of
`
`“everything transmitted electronically” of the 1987 Specification that does not also
`
`fall within the scope of the ’490 Patent’s “other electronic transmissions.”
`
`In addition, there is no factual or legal basis to support the Board’s
`
`determination that the 1987 Specification’s “programming” was broadened
`
`because the conventional understanding of “programming” “grew [in 1987] to
`
`encompass many different types of known analog and digital programming not
`
`contemplated in 1981 according to the ’490 Patent.” Dec. at 10. Not only is there
`
`nothing in the record regarding the differences in “programming” in the art
`
`between 1981 and 1987—and Petitioner does not posit any—but the sufficiency of
`
`the written-description requirement for Section 120 priority can only be judged as
`
`14
`
`
`
`of the filing date of the application based on what the language of the
`
`specification would have meant to one of ordinary skill in the art as of that date.
`
`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1355–57 (Fed.
`
`Cir. 2010); Vas-Cath, 935 F.2d at 1566 (Fed. Cir. 1991)
`
`(“Mahurkar’s later patenting of inventions involving different range limitations is
`
`irrelevant to the issue” of written description under 35 U.S.C. § 112 and priority
`
`under 35 U.S.C. § 120; and “Application sufficiency under § 112, first paragraph,
`
`must be judged as of the filing date.”). Whether additional examples of
`
`“programming” were known or developed after November 3, 1981 is not relevant
`
`to the priority analysis under Section 120.
`
`The evidence in the record is clear: the ’490 Patent’s “programming”
`
`supports “programming” as set forth in the 1987 Specification. Indeed, the How to
`
`Grow Grass example of Figure 6E would allow for the printing and delivery of a
`
`book on virtually any subject, which by itself meets the “everything” aspect of the
`
`definition of “programming” forwarded by the Board. In sum, the ’490 Patent
`
`provides written description support for “programming,” and Claims 3, 4 and 7 are
`
`entitled to the November 3, 1981 priority date.
`
`IV. CONCLUSION
`
`PMC respectfully requests that the Board reconsider its decision and deny
`
`inter partes review of Claims 3, 4, 7, 18, 20, 32 and 33 of the ’635 Patent.
`
`15
`
`
`
`Date: March 2, 2017
`
`Respectfully submitted,
`
`
`
`
`/ Douglas J. Kline /
`Douglas J. Kline
`
`16
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of the:
`
`PATENT OWNER’S
`
`REQUEST FOR REHEARING
`
`filed herewith and the exhibits cited therein were served, pursuant to 37 C.F.R.
`§42.6(e)(1) and the consent found in Section III.D of the Petition (Paper No. 1), by
`electronic mail on counsel for Petitioner at the electronic mail addresses set forth
`below:
`
`Marcus E. Sernel, Joel R. Merkin, and Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: (312) 862-2000; F: (312) 862-2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`Date: March 2, 2017
`
`
`
`By:
`
` / Douglas J. Kline /
`
`
`
`
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