Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 10
`Entered: March 31, 2017
`
`
`
`
`
`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, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 10
`Entered: March 31, 2017
`
`
`
`
`
`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, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`I. INTRODUCTION
`
`Personalized Media Communications, LLC (“Patent Owner”) filed a
`
`Request for Rehearing under 37 C.F.R. § 42.71(d). Paper 9 (“Reh’g Req.”).
`
`Patent Owner’s Request for Rehearing seeks reconsideration of our Decision
`
`on Institution (Paper 7, “Dec.”) with respect to claims 3, 4, 7, 18, 20, 32 and
`
`33 (“instituted claims”) of U.S. Patent No. 8,559,635 B1 (Ex. 1003,
`
`“the ’635 patent”).1 Patent Owner generally challenges our determination in
`
`the Decision on Institution regarding the priority date of claims 3, 4, 7, 18,
`
`20, 32 and 33 of the ’635 patent. Reh’g Req. 1. First, Patent Owner
`
`contends that the Board failed to consider all relevant embodiments in
`
`reaching its determination that claims 18, 20, 32, and 33 of ’635 patent are
`
`not entitled to a 1981 filing date. Id. Second, Patent Owner contends that
`
`the Board’s determination that claims 3, 4, and 7 of the ’635 patent are also
`
`not entitled to a 1981 filing date is founded upon a legally-incorrect analysis
`
`of a parent application’s disclosure. Id. at 1–2.
`
`We have considered Patent Owner’s arguments regarding what it
`
`alleges the Board misapprehended or overlooked under 37 C.F.R.
`
`§ 42.71(d). For the reasons provided below, we deny Patent Owner’s
`
`request for rehearing.
`
`
`
`
`1 We note that the Board also instituted review of claim 13 of the ’635 patent
`(Dec. 58), but that claim was not addressed in Patent Owner’s Request for
`Rehearing.
`
`2
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`II. ANALYSIS
`
`A request for rehearing “must specifically identify all matters the
`
`party believes the Board misapprehended or overlooked, and the place where
`
`each matter was previously addressed in a motion, an opposition, or a reply.”
`
`37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of
`
`showing the decision should be modified. Id.
`
`A. Arguments Regarding “Unaccompanied By Any Non-Digital
`Information Transmission”
`
`1. Effective Priority Date for the Challenged Claims
`of the ’635 Patent
`
`Our Decision on Institution made certain initial determinations as to
`
`the effective priority date for the instituted claims of the ’635 patent.
`
`Dec. 7–19. As set forth in our Decision on Institution, the prior art status of
`
`the asserted prior art hinges on the effective priority date for the ’635 patent
`
`with respect to support for the instituted claims. See Dec. 7. Petitioner
`
`contends that the earliest effective priority date for the instituted 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 effective priority date of the
`
`instituted claims of the ’635 patent is the filing date of the ’490 patent on
`
`November 3, 1981. Prelim. Resp. 7. We determined for purposes of the
`
`Decision on Institution, that Patent Owner failed to rebut sufficiently
`
`Petitioner’s contention that the 1981 ’490 patent does not support the
`
`3
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`instituted claims 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.
`
`Patent Owner argues in its Request for Rehearing, that the ’490 patent
`
`provides written description support for the “unaccompanied by any non-
`
`digital information transmission” recited in claims 18, 20, 32, and 33.2
`
`Reh’g Req. 3. Specifically, Patent Owner argues that “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.” Reh’g Req. 4 (citing 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); Prelim. Resp. 24–25; Ex. 2001 ¶ 109).
`
`We note that Figures 5 and 6F of the ’490 patent were not relied upon or
`
`cited at pages 24–25 of the Preliminary Response. See Prelim. Resp. 24–25.
`
`Patent Owner did, however, reproduce the following disclosure in the ’490
`
`patent in its Preliminary Response: “[t]he controller, 20, also controls the
`
`automatic telephone dialing device, 24, which can automatically output the
`
`digital information on the digital recorder, 12, to a remote site through a
`
`telephone connection, 22.” Prelim. Resp. 24 (citing Ex. 1004, 8:50–55).3
`
`
`2 Claim 18 of the ’635 Patent recites a “method of processing signals at a
`receiver station” including “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).
`
`3 We note that Patent Owner’s citation to column 8 is inaccurate and that this
`language from the ’490 patent actually occurs in column 10. See Ex. 1004,
`10:4–8.
`
`4
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`As noted in our Decision on Institution, we determined that Patent
`
`Owner failed to describe sufficiently how the cited embodiments from the
`
`1981 ’490 patent provide support for the limitations in claim 18. Dec. 10–
`
`15. For example, Patent Owner fails to describe sufficiently how the above
`
`cited embodiment regarding the automatic telephone dialing device, 24,
`
`provides support for the recitation in claim 18. See supra note 2 (claim 18).
`
`The automatic telephone dialing device 24, an embodiment described in the
`
`’490 patent and relied upon by Patent Owner, allows recorder 16 to free up
`
`its memory. See Ex. 1004, 9:8–13. Specifically, the ’490 patent discloses
`
`that the “[d]igital recorder, 16, can tell the controller, 20, when it reaches
`
`predetermined levels of fullness to permit the controller, 20, to instruct auto
`
`dialer, 24, to contact an appropriate remote site allowing the recorder, 16, to
`
`output its data making memory available.” Id. (emphasis added).
`
`Accordingly, Patent Owner fails to establish sufficiently how this disclosure
`
`in the ’490 patent provides the necessary support for the limitation regarding
`
`receiving “at least one encrypted digital information transmission” that is
`
`“unaccompanied by any non-digital information transmission,” as recited in
`
`claim 18.
`
`Patent Owner also identifies disclosure in the ’490 patent that 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.” Reh’g Req. 4
`
`(citing Ex. 1004, 15:20–25). Our Decision on Institution determined
`
`generally that the disclosures relied upon by Patent Owner failed to establish
`
`sufficiently for purposes of the Decision on Institution that the ’490 patent
`
`provides sufficient support for “unaccompanied” limitation in claims 18, 20,
`
`5
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`31 and 33. See Dec. 10–15. As to this particular embodiment, we determine
`
`Patent Owner fails to describe sufficiently how telephoning a remote site to
`
`get an additional signal provides support for claim 18, which requires a
`
`“method of processing signals at a receiver station” including “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.”
`
`Patent Owner attempts to save this previous argument from the
`
`Preliminary Response by adding a new argument in its Request for
`
`Rehearing explaining that “[e]xamples of signals necessary for decrypting
`
`include signal words, which are described by the ’490 patent as all-digital.”
`
`Reh’g Req. 4 (citing Ex. 1004, 3:5–6; 20:38–43; 8:39–40) (emphasis
`
`omitted). Patent Owner, however, fails to identify in its Request for
`
`Rehearing where it either originally made this signal word argument or cited
`
`to these portions of the ’490 patent specification in its Patent Owner
`
`Preliminary Response. See Reh’g Req. 3–4. As these arguments are raised
`
`for the first time in Patent Owner’s Request for Rehearing, the Board could
`
`not have misapprehended or overlooked them. Thus, Patent Owner’s
`
`challenge does not meet the standard set forth for a request for rehearing,
`
`which requires a party to identify a place where the matter was previously
`
`addressed. See 37 C.F.R. § 42.71(d) (“The request must specifically identify
`
`all matters the party believes the Board misapprehended or overlooked, and
`
`the place where each matter was previously addressed in a motion, an
`
`opposition, or a reply.”).
`
`Although Patent Owner’s new arguments are not properly included in
`
`a Request for Rehearing to a Decision on Institution, Patent Owner is at
`
`6
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`liberty to make these arguments in its Patent Owner Response. See 37
`
`C.F.R. § 42.120(a) (“A patent owner may file a response to the petition
`
`addressing any ground for unpatentability not already denied.”). As noted in
`
`the Decision on Institution, the “Board has not made a final determination as
`
`to the patentability of the challenged claims.” Dec. 58.
`
`Patent Owner also argues that the Board committed legal error in
`
`determining that there is no written description support for the
`
`“unaccompanied” limitation unless the ’490 patent includes an express
`
`statement that prohibits analog information. Reh’g Req. 5 (citing Dec. 15).
`
`Contrary to Patent Owner’s argument, the cited statement from the Decision
`
`on Institution was not a general statement of law but was directed at a
`
`particular embodiment. See Dec. 15. The Decision on Institution states as
`
`follows:
`
`Based on this record, we determine that Patent Owner fails to
`describe sufficiently what constitutes the “at least one encrypted
`digital information transmission” in the Figure 6E embodiment,
`where the 1981 ’490 patent expressly or inherently indicates
`that any non-digital information is prohibited from this
`transmission, and where Patent Owner appears to be relying
`somehow on a known printing technique without an adequate
`explanation as to how this known technique impacts support for
`the challenged claims.
`
`Dec. 15 (emphasis added). As provided above, this discussion was limited
`
`to Patent Owner’s arguments with respect to the embodiment disclosed in
`
`the ’490 patent and in relation to “the Figure 6E embodiment.” See id. As
`
`set forth in the Decision on Institution, we determined that Patent Owner
`
`failed to establish sufficiently that the Figure 6E embodiment provides
`
`support for “encrypted digital information transmission” that is
`
`“unaccompanied by any non-digital information transmission,” as required
`
`7
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`by claim 18. Id. Contrary to Patent Owner’s arguments, the Decision on
`
`Institution did not require that the written description expressly disclose
`
`“what [] the claimed invention is not.” Reh’g Req. 5. The Decision on
`
`Institution simply concluded that Patent Owner did not describe sufficiently
`
`how the Figure 6E embodiment provided the necessary support. Dec. 15.
`
`2. Analysis of the Prior Art Reference Chandra
`
`Patent Owner argues that the Board committed a separate legal error
`
`in finding that the prior art reference Chandra meets the “unaccompanied”
`
`limitation. Reh’g Req. 6. Patent Owner argues that the Board improperly
`
`applied a different standard when assessing the disclosure of Chandra (see
`
`id.), but Patent Owner’s arguments in the Request for Rehearing contradict
`
`its own statements in its Preliminary Response. In the Preliminary
`
`Response, Patent Owner argued that Chandra is insufficient because “[t]he
`
`reference never explicitly or inherently discloses that the communication
`
`links of Chandra are ‘unaccompanied by any non-digital information.’”
`
`Prelim. Resp. 55–56; Ex. 2001 ¶ 175. We noted in our Decision on
`
`Institution, however, that the declarants of the parties directly contradicted
`
`each other as to whether Chandra disclosed sufficiently the
`
`“unaccompanied” limitation. Dec. 29–30. Applying Rule 37 CFR
`
`§ 42.108(c) (any genuine issues of material fact should be viewed in the
`
`light most favorable to the petitioner solely for purposes of deciding whether
`
`to institute an inter partes review), we determined that for purposes of the
`
`Decision on Institution, Petitioner established sufficiently that Chandra’s
`
`software distribution set is unaccompanied by any non-digital information.
`
`Dec. 30.
`
`
`
`8
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`Patent Owner also argues that the disclosure regarding Figures 6C and
`
`6E in the ’490 patent sufficiently supports the “unaccompanied” limitation.
`
`Reh’g Req. 7–8. In the Decision on Institution, we fully considered and
`
`addressed the disclosures with respect to Figure 6C and 6E relied upon by
`
`Patent Owner and we determined Patent Owner did not describe sufficiently
`
`how these disclosures provided support for the “unaccompanied” limitation.
`
`See Dec. 11–15. Mere disagreement with our conclusion is not a proper
`
`basis for rehearing. Furthermore, Patent Owner cites to disclosures in the
`
`’490 patent in its Request for Rehearing regarding Figure 6C and Figure 6E
`
`that were not relied upon previously. See Reh’g Req. 7–8. As these
`
`arguments are raised for the first time in Patent Owner’s Request for
`
`Rehearing, the Board could not have misapprehended or overlooked them.
`
`Thus, Patent Owner’s challenge does not meet the standard set forth for a
`
`request for rehearing, which requires a party to identify a place where the
`
`matter was addressed previously.
`
`Based on the foregoing discussion, we determine Petitioner has not
`
`carried its burden of demonstrating what we misapprehended or overlooked
`
`as required by 37 C.F.R. § 42.71(d).
`
`
`
`B. Arguments Regarding the Disclosure of “Programming”
`
`Claims 3, 4, and 7 of the ’635 patent recite the term “programming.”
`
`The ’490 patent discloses “provid[ing] techniques whereby, automatically,
`
`single channel, single medium presentations, be they television, radio, or
`
`other electronic transmissions, [which] may be recorded, [and] co-ordinated
`
`in time with other program[m]ing previously transmitted and recorded.”
`
`Ex. 1004, 3:51–56 (emphasis added). The later-filed ’635 patent, however,
`
`9
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`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). In the Decision on
`
`Institution, we determined that “Patent Owner does not dispute in a clear and
`
`persuasive fashion that the 1987 ’635 patent Specification broadened the
`
`term “programming.” Dec. 10 (citing Prelim. Resp. 16–17). Based on the
`
`record at the institution stage, we determined 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. 10.
`
`Patent Owner argues that the Board committed legal error in failing to
`
`apply the Federal Circuit’s instructions in PowerOasis, Inc. v. T-Mobile
`
`USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) to the written description inquiry
`
`with respect to the claim term “programming.” More particularly, Patent
`
`Owner argues that the second step of the PowerOasis written description
`
`inquiry requires consultation of the entire specification, and Patent Owner
`
`argues that the Board committed legal error in only considering the single
`
`passage from the ’490 patent quoted above instead of other areas of the
`
`specification. Reh’g Req. 10. Patent Owner argues that the ’490 patent
`
`describes “programming” as “(a) everything that is transmitted electronically
`
`to entertain, instruct or inform, including (b) television, (c) radio, (d)
`
`broadcast print, (e) computer programming and (f) combined medium
`
`programming,” and Patent Owner inserts multiple block quotes from the
`
`’490 patent into its Request for Rehearing to support this argument. Reh’g
`
`10
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`Req. 11–13 (citing Ex. 1004, 3:48–60, 3:3–41, 10:24–39).
`
`Many of the citations provided by Patent Owner in its Request for
`
`Rehearing were cited previously in its Preliminary Response and fully
`
`considered by the Board. Compare Reh’g Req. 11–13, with Prelim. Resp.
`
`16–20; see also Dec. 8–10. Mere disagreement with our conclusion is not a
`
`proper basis for rehearing. Other citations provided by Patent Owner,
`
`however, were raised for the first time in the Request for Rehearing. See
`
`Reh’g Req. 11–13. As these citations were provided for the first time in
`
`Patent Owner’s Request for Rehearing, the Board could not have
`
`misapprehended or overlooked them. Thus, Patent Owner’s challenge does
`
`not meet the standard set forth for a request for rehearing, which requires a
`
`party to identify a place where the matter was addressed previously.
`
`Accordingly, we determine that Patent Owner fails to identify what the
`
`Board misapprehended or overlooked with respect to these arguments.
`
`Patent Owner also argues that Decision on Institution “does not
`
`identify any specific ‘programming’ that lacks written description support in
`
`the 1981 Specification.” Reh’g Req. 13. Again, Patent Owner’s argument
`
`fails to identify what the Board misapprehended or overlooked with respect
`
`to its analysis of written description support for the claimed “programming.”
`
`As noted above, although Patent Owner’s arguments are not properly
`
`included in a Request for Rehearing to a Decision on Institution, Patent
`
`Owner is at liberty to make these arguments in its Patent Owner Response.
`
`See 37 C.F.R. § 120. In conclusion, Patent Owner has not persuaded us that
`
`we overlooked or misapprehended its arguments or erroneously interpreted
`
`the law in analyzing written description support for “programming.”
`
`
`
`11
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`It is hereby ORDERED that Patent Owner’s request for rehearing is
`
`III. ORDER
`
`denied.
`
`
`
`PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`KIRKLAND & ELLIS LLP
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`
`
`
`PATENT OWNER:
`
`
`Douglas J. Kline
`Jennifer Albert
`Stephen Schreiner
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`
`Thomas J. Scott, Jr.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`12
`
`
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