`
`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: U.S. Patent No. 8,559,635
`
`—————
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND UNDER 37
`C.F.R. § 42.121
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent 8,559,635 (“the ’635 patent”), which issued from U.S. Patent
`
`Appl. No. 08/449,413 (“the ’413 application”), is a continuation of U.S. Patent
`
`Appl. No. 07/096,096, filed September 11, 1987, which is a continuation-in-part
`
`application of, and claims priority to, U.S. Patent Appl. No. 06/317,510 (“the ’510
`
`application”), filed on November 3, 1981. Despite this proper claim of priority,
`
`Petitioner has based its patentability challenge on prior art that was published well
`
`after November 3, 1981, asserting that the ’635 patent is only entitled to claim
`
`priority to September 11, 1987.
`
`Patent Owner maintains its positions discussed in the Patent Owner
`
`Response that the challenged claims of the ’635 patent are fully supported by the
`
`’510 application and are entitled to the 1981 priority date, and that the challenged
`
`claims are not obvious over the cited prior art even if priority is based only on the
`
`’413 application. However, in the event that the Board accepts Petitioner’s
`
`arguments regarding priority and obviousness and deems the claims unpatentable,
`
`Patent Owner now contingently moves to substitute the canceled claim(s) with
`
`corresponding proposed amended claims 41-48 (“Substitute Claims”). Patent
`
`Owner herein demonstrates that the Substitute Claims are all supported by the ’413
`
`application and are patentable over the grounds that have been instituted in this
`
`IPR. Patent Owner herein also demonstrates that the Substitute Claims are drawn
`
`
`
`1
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`to patentable subject matter and are neither anticipated by nor obvious over any
`
`prior art of which Patent Owner is aware. The Board has authorized Patent Owner
`
`to file a Contingent Motion to Amend any claim found to be unpatentable. (Ex.
`
`2214 at 17-20; See 37 C.F.R. §§ 42.22(a)(2); 42.121; 35 U.S.C. § 316(d)). This
`
`motion is supported by the declaration of Dr. Timothy Dorney (Ex. 2223; “the
`
`Dorney Dec.”) and Dr. Alfred Weaver (Ex. 2213; “the Weaver Dec.”).
`
`II. THE PROPOSED AMENDMENTS NARROW THE ISSUED
`CLAIMS
`
`Original claims 3, 4, 7, 13, 18, 20, 32, and 33 (“Original Claims”) are
`
`directed to the receipt of encrypted content, which requires a key for decryption,
`
`where the key is delivered in an encrypted message. The Substitute Claims retain
`
`all of the limitations of the original claims and add further requirements such as (1)
`
`the encrypted content is digital; (2) unique digital data is received and decrypted by
`
`the receiver station, and then communicated to a remote site; and (3) encrypted
`
`content is decrypted, and then customized based on subscriber specific digital data
`
`that is stored at the receiver station prior in time to receipt of the encrypted content.
`
`Individual Substitute Claims include further limitations.
`
`Because the Substitute Claims retain all of the limitations found in the
`
`Original Claims and add further limitations, they are narrower in scope than the
`
`Original Claims. Substitute claim 43, proposed as a replacement for claim 7, is
`
`exemplary:
`
`
`
`2
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`The method of claim 2, wherein said subscriber station detects, in a
`
`transmission channel including said programming, a second control signal
`
`portion used to decrypt the first control signal portion, wherein said
`
`programming further includes unique digital data, said subscriber station
`
`communicating said unique digital data to a remote site through a digital
`
`information transmission automatically initiated by said subscriber station,
`
`said second decryptor decrypts, absent any descrambling, using one of a
`
`plurality of cipher algorithms preprogrammed at said subscriber station
`
`chosen based on said decrypted control signal portion.
`
`Patent Owner provides a complete listing of Substitute Claims with a
`
`correlation to the Original Claims in Appendix A. One substitute claim is
`
`proposed for each original claim. 37 C.F.R. §§ 42.24(a)(1), 42.121 (a)(3). The
`
`Substitute Claims are not broader than the Original Claims. 37 C.F.R. §42.221
`
`(a)(2)(ii). The amendments add features to the claims in a manner that is
`
`consistent with the description of the inventions in the ’413 application. The
`
`amendments are responsive to a ground of unpatentability involved in the
`
`proceeding. 35 U.S.C. § 316(d)(3).
`
`III. CLAIM CONSTRUCTION
`Patent Owner adopts the Board’s claim construction set forth in the
`
`Institution Decision for the purposes of this Motion only. (Paper 7 at 19-22).
`
`
`
`3
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`Patent Owner clarifies the following further limitations relevant to the Substitute
`
`Claims.
`
`a. “customized”
`Substitute claims 44-48 recite the term “customized,” which should be
`
`understood by its plain and ordinary meaning as “altered according to individual
`
`specifications.” (Ex. 2211). As explained below, the new limitations are directed
`
`to “customized” information, such as a shopping list, or computer information,
`
`based on (unique) subscriber specific digital data.
`
`b. “unique”
`The substitute claims recite the term “unique,” which should be understood
`
`by its plain and ordinary meaning as “being the only one.” (Ex. 2212). The claims
`
`include subscriber specific unique digital data, such as, for example, a street
`
`address. Per substitute claims 46-47, information is customized dependent on a
`
`computer file containing unique subscriber specific information. The claims also
`
`include programming specific unique digital data, such as, for example, unique
`
`identifier codes for each programming unit. Per substitute claims 42-48, “unique”
`
`programming specific digital data may be received at a subscriber station and
`
`communicated to a remote site.
`
`IV.
`
` THE AMENDED CLAIMS ARE DIRECTED TO STATUTORY
`SUBJECT MATTER
`
`
`
`4
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`The Original and Substitute Claims are directed to specific methods for
`
`securely distributing control signals over a network that may be used only by
`
`authorized subscribers to access and decrypt encrypted content. For example,
`
`original claim 2, representative of the Original and Substitute Claims and upon
`
`which substitute claims 42 and 43 depend, requires a first encrypted digital control
`
`signal portion of received programming be decrypted using a first decryptor. The
`
`decrypted control signal portion facilitates the decryption of the encrypted digital
`
`information portion of the programming by a second decrpytor. (Ex. 1003 at
`
`286:7-28). A person of ordinary skill in the art (“POSA”) would understand the
`
`process of claim 2 to involve decryption of received encrypted information using
`
`two different key-algorithm pairs. (Ex. 2213, ¶ 951).
`
`When all of the steps of the Original and Substitute Claims are considered, it
`
`is evident that the claims are directed to novel ways in which a decryption key is
`
`accessed, or to using other information to enable decryption (decryption of a
`
`received control signal). Some of the claims are directed to specific applications
`
`1 The Weaver Declaration was prepared for and submitted to the court in
`
`Personalized Media Comm’ns, LLC v. Apple, Inc., No. 15-01366 (E.D.Tex. Jan.
`
`27, 2016) (D.I. 83-4). Dr. Weaver was not involved the preparation of this Motion
`
`or the Substitute Claims. Dr. Weaver’s declaration conforms with 37 C.F.R. 42.11
`
`and Dr. Weaver is available for cross examination by deposition by Petitioner.
`
`
`
`5
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`which are used to change decryption techniques at the receiver station (e.g.,
`
`original claim 13), or to using a received control signal or downloadable code to
`
`determine a specific fashion in which to decrypt encrypted digital data (e.g.,
`
`original claim 33). (Ex. 2213, ¶ 121). Thus, the Original Claims are not inherently
`
`abstract. The Substitute Claims are not inherently abstract at least by virtue of
`
`their incorporating all of the limitations in the Original Claims. Further, the
`
`Substitute Claims add additional concrete limitations.
`
`Even if the Original and Substitute Claims are directed to an abstract idea
`
`(which they are not), those claims include inventive concepts. The claims are
`
`directed to specific ways to securely distribute enabling information, codes, or
`
`signals necessary to control decryptors or to change the decryption techniques used
`
`at the receiver station to decrypt the incoming encrypted information
`
`transmissions. At a minimum, each claim directed to receiver station operations
`
`requires that both the control signal, instruct signal, or code or datum necessary to
`
`control a decryptor or to control the decryption technique to be used, as well as the
`
`encrypted digital programming, be received in the same transmission. (Id., ¶ 126).
`
`These limitations transform the concept of decryption into very specific,
`
`concrete methods by placing requirements on the manner in which decryption is
`
`controlled (e.g., whether or not a receiver station is enabled to decrypt) and not just
`
`the manner of actual “conversion” from encrypted format to decrypted format. As
`
`
`
`6
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`a result, the asserted claims do not, for example, apply solely to methods of
`
`decryption, such as DES or RSA. (Id., ¶ 127).
`
`Further, it was certainly not routine or conventional in 1987 to encrypt
`
`digital television or other digital programming before it was transmitted so as to
`
`restrict access only to authorized users. (Id., ¶¶ 89, 128). The use of decryption to
`
`restrict access to programming was not routine and conventional because
`
`descrambling was the conventional practice used to restrict access to programming.
`
`(Id., ¶¶ 32-35, 89, 128). Nor was it routine or conventional in the 1980s to
`
`distribute decryption key information over networks to receivers. It follows,
`
`therefore, that the methods of the ’635 patent claims to control the decryption of
`
`programming at a receiver station based on processing of instruct-to-enable
`
`signal(s) that are included within the encrypted digital information transmission
`
`that determine how the receiver station locates a decryption key, or are used to
`
`generate a decryption key, or by processing control signals, or other signals, codes
`
`or data that are included with the encrypted digital programming that are then used
`
`to control decryptors or control the decryption technique to be used were not
`
`routine or conventional. (Id., ¶¶ 89, 128).
`
`Patent Owner notes that magistrate Judge Roy Payne’s R&R (adopted by
`
`U.S. District Judge Gilstrap) has found in the parallel district court proceeding that
`
`
`
`7
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`the Original Claims are directed to patentable subject matter based on the same
`
`reasoning discussed in this Motion. (Exs. 2209, 2210).
`
`V. THE AMENDED CLAIMS ARE SUPPORTED BY THE WRITTEN
`DESCRIPTION OF THE ’413 APPLICATION
`
`The Substitute Claims are all supported by the methodology described in the
`
`’413 application, specifically Example #7, which involves receipt and decryption
`
`of encrypted content, and transmission of unique data to a remote site, and
`
`Example #4, which involves decryption of an encrypted cipher key. As stated in
`
`the ’413 application itself, Example #7 cannot be carried out without a cipher key
`
`which is used to decrypt the content. (Ex. 2208 at 288:30-289:21). As further
`
`stated in the ’413 application, in the event that the cipher key is received in an
`
`encrypted form, it must be decrypted before the method of Example #7 can be
`
`completed. (Ex. 2208 at 291:9-292:6). In the ’413 application, Example #4
`
`describes the steps of decrypting the cipher key, and therefore, in the embodiment
`
`where the cipher key is received encrypted in Example #7, Example #7 cannot be
`
`carried out without the steps of Example #4.
`
`Several embodiments in the ’413 application use the technology of Example
`
`#7, which itself references the decryption techniques of messages in Example #4.
`
`(Ex. 2208 at 288:30-289:21, 291:9-292:6). Support for the Substitute Claims is
`
`found in the “Wall Street Week” program embodiment which is described within
`
`the disclosure of Example #7 (id. starting on page 288), and in the “Exotic Meals
`
`
`
`8
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`of India” program embodiment, which is described later in the ’413 application,
`
`and incorporates the methods of Example #7. (Id. at 469:1-516:13). Specific
`
`element-by-element support for the Substitute Claims is illustrated in Appendix B
`
`to this Motion and in the Dorney Dec.
`
`a. The “Wall Street Week” Television Program
`
`The “Wall Street Week” program is a TV show including digital audio and
`
`digital video, which are encrypted. The show is about the stock market and
`
`incorporates a subscriber’s personal stock portfolio information (“subscriber
`
`specific digital data”). The instant Original and Substitute Claims rely on the
`
`description of the digital audio content for written support. The content is sent to a
`
`receiver station, which includes, inter alia, a home TV set and a microcomputer,
`
`where it is decrypted. In order to decrypt the content, the receiver station must use
`
`a cipher key in combination with a cipher algorithm; the cipher key may be
`
`received by the receiver station in an encrypted SPAM message and, in that case,
`
`must first be decrypted before it can be used. (Ex. 2208 starting at 288 for
`
`Example #7, 197 for Example #4). The SPAM message contains the cipher key
`
`Ca, which also indicates the cipher algorithm C should be used from amongst the
`
`“plurality of preprogrammed cipher algorithms” at the subscriber station including
`
`cipher algorithms A, B, and C. (Id. at 288:23-289:21, 295:24-296:3). The cipher
`
`key and cipher algorithm may be used with a decryptor selected from 107, 224, or
`
`
`
`9
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`231 (id. at 286:34-287:7). In addition to the content, a receiver station may also
`
`receive unique data corresponding to the content, which it sends to a remote site.
`
`(Id. at 31:30-33:6, 49:26-50:32, 297:3-19, 302:35-303:18). This data may be used,
`
`for example, to control billing or to collect statistics.
`
`b. “Exotic Meals of India” Program
`
`“Exotic Meals of India” is a TV show in which a subscriber is asked during
`
`the presentation of a television cooking show if he wishes to receive the recipe
`
`discussed in the show for a fee. If the subscriber uses a local input device to key-in
`
`the displayed input sequence when prompted, the subscriber’s receiver station will
`
`subsequently store and process a transmitted “Exotic Meals” message. The
`
`instructions in the message allow a subscriber’s microcomputer (e.g., IBM PC, Ex.
`
`2208 at 19:29-20:16) to retrieve “subscriber specific digital data” such as family
`
`size and dietary habits from a locally-stored file to customize the “Exotic Meals”
`
`recipe and shopping list (id. at 473:3-476:7). At the end of the process, the
`
`subscriber’s microcomputer prints both a recipe and shopping list that are
`
`“customized” to the subscriber specific digital data (id. at 475:1-2). For example, a
`
`small family may only require one pound of halibut fish where a larger family may
`
`require two pounds of halibut (id. at 473:3-476:7). Also, the microcomputer
`
`computes a shopping list that may include, for example, a jar of curry paste of a
`
`particular type. (Id. at 473:3-476:7).
`
`
`
`10
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`In one embodiment, the “Exotic Meals” message is received by the receiver
`
`station over an all-digital communication channel in encrypted form, and must be
`
`decrypted by the receiver station. (Id. at 476:34-477:29, 420:21-421:6, 286:9-
`
`287:7). The digital content in this embodiment consists of instructions to a
`
`computer to “customize” a recipe and shopping list and then print that customized
`
`information. (Id. at 473:3-476:7). The method of decryption and transmission of
`
`unique data to a remote site is identical to the method disclosed in the “Wall Street
`
`Week” program. (Id. at 31:30-33:6, 49:26-50:32, 473:3-13, 473:29-474:1).
`
`The ’413 application discloses that the “Exotic Meals” message may be
`
`encrypted using any of the techniques described in the ’413 application. (Id. at
`
`478:1-5). Accordingly, the digital “Exotic Meals” message may be encrypted as
`
`taught for the encrypted digital audio in Example #7. Likewise, the decryption key
`
`Ca, used in the “Exotic Meals” embodiment to decrypt the encrypted digital
`
`“Exotic Meals” message, may be encrypted before transmission and, if it is
`
`encrypted, may be decrypted at the subscriber station according to Example #4.
`
`(Id. starting at 288 for Example #7, 197 for Example #4).
`
`c. Support for Original Claim 3 and Substitute Claim 41
`
`Original claim 3 and substitute claim 41 are supported by the ’413
`
`application (id. starting on page 429), and are drawn to a “remote transmitter
`
`station,” a station that is part of the chain of transmission of the content from the
`
`
`
`11
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`program originating studio to the receiver station. The ’413 application calls this
`
`remote transmitter station an Intermediate Transmission Station (“ITS”). (Id.
`
`starting on page 429). The ’413 application discloses the operation of an ITS to
`
`communicate digital audio of the “Wall Street Week” program: a “control signal”
`
`that controls communication is embodied by the signal that includes particular time
`
`information (e.g., 8:30 PM) and instructions that regulate the timing of events at
`
`the ITS (Ex. 2208 at 430:32-435:15); a “code or datum” that identifies a unit of
`
`digital programming is embodied by the identifier included with the “Wall Street
`
`Week” program (id. at 430:32-431:18); “one first instruct signal” is embodied by
`
`the transmitted signal used to enable a receiver station to receive the “Wall Street
`
`Week” program (id. at 430:32-432:18); and “second instruct signal” is embodied
`
`by the transmitted signal that operates at the subscriber station to identify and
`
`decrypt the digital audio (id. at 430:32-439:27).
`
`The ITS transmits information including the “encrypted digital audio,”
`
`“absent any scrambling,” and signals received at the ITS. (Id. starting on page
`
`429). Furthermore, the ITS encrypts the digital audio “using one of a plurality of
`
`cipher algorithms preprogrammed at [the] subscriber station,” and the ITS
`
`transmits a cipher algorithm identification that “may be changed to a different one
`
`of said plurality of cipher algorithms.” (Id. at 279:30-280:14).
`
`d. Support for Original Claims 4 and 7 and Substitute Claims 42 and 43
`
`
`
`12
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`The original claim limitations in challenged claims 4 and 7 and the newly
`
`added limitations in substitute claims 42 and 43 are fully supported by the “Wall
`
`Street Week” embodiment. (Ex. 2208 starting on page 288, Figs. 1A, 1B, 1C, 4).
`
`The “Wall Street Week” program is transmitted with “encrypted digital audio” and
`
`“encrypted digital video.” The audio is encrypted using cipher algorithm C and
`
`cipher key Ca, which may also be encrypted in a SPAM message. (Ex. 2208 at
`
`288:23-289:21; 291:9-292:6, 198:10-29). The SPAM message may be decrypted
`
`using a “second control signal portion.” (Id. at 291:9-292:6, 198:10-199:2).
`
`Successful decryption of the digital audio may cause the receiver station to
`
`record “unique digital data” related to the programming, i.e., SPAM message
`
`meter-monitor information, for automatic communication to a “remote site” for
`
`billing and/or statistic purposes (id. at 297:3-19, 302:35-303:18, 28:25-35, 49:26-
`
`50:32). Under different decryption routines and using different hardware,
`
`“encrypted digital video” is also decrypted (id. at 297:20-311:16). The “Wall
`
`Street Week” program audio is “coordinated in time to bring meaning to” the
`
`video. (Id. at 310:3-24, 435:2-15). Furthermore, the receiver station includes a
`
`microcomputer that stores the “subscriber specific digital data,” i.e., subscriber’s
`
`stock portfolio information, in a “computer file with a file extension” (id. at 21:5-
`
`31, 448:25-449:9, 516:15-28, 523:8-12). During the “Wall Street Week” television
`
`
`
`13
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`show presentation, a computer generated overlay graphic based on the subscriber’s
`
`stock portfolio is “presented.” (id. at 24:22-28:3, 125:31-126:1).
`
`e. Support for Original Claims 13, 18, 20, 32, and 33 and Substitute
`Claims 44-48
`
`The original claim limitations in challenged claims 13, 18, 20, 32, and 33
`
`and the newly added limitations in substitute claims 44-48 are fully supported by
`
`the ’413 application, specifically, the “Exotic Meals of India” embodiment. (Ex.
`
`2208 starting on page 469).
`
`The “subscriber specific digital data” for the “Exotic Meals” message
`
`including the family size and dietary habits is stored in the microcomputer in a
`
`computer file with a file extension named A:DATA_OF.URS (id. at 473:29-476:7,
`
`516:16-28). The same file also stores subscriber specific “unique digital data,” i.e.,
`
`the subscriber’s street address, which is unique from other addresses. The street
`
`address is “absent any digital information provider assigned access information.”
`
`Substitute claims 44-48 require transmission over channels that are all
`
`digital. Figure 7F, the block diagram for the Exotic Meals program, encompasses
`
`channels that are all digital. As illustrated in Figure 7C, the output from cable
`
`converter box 222 is “one digital data channel.” An ITS transmits a digital
`
`message (comprising, for example, a news article on AT&T) on a digital data
`
`channel (id. at 421:18-22, 422:4-22) of the multi-channel cable transmission shown
`
`in Fig. 7F. Cable converter box 222 tunes to the digital data channel by tuning to
`
`
`
`14
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`“a particular television frequency transmission” (id. at 423:11-30) to output the
`
`“one digital data channel”. (Id. at Fig. 7F). Cable converter box 222 only has the
`
`ability to select a frequency band and convert the signal to “a given output
`
`frequency.” (id. at 286:12-17). Accordingly, to have “one digital data channel”
`
`output from cable converter box 222, the input selected by the cable converter box
`
`222 is also a digital data channel as cable converter box only converts an input
`
`channel to a given output frequency. (Id. at 286:9-26).
`
`Subsequently, the “one digital data channel” information is input to
`
`decryptor 224, which only “has capacity for receiving encrypted digital
`
`information.” (Id. at 286:34-287:7). As the ’413 application discloses, a
`
`“television frequency” is used for the digital transmission, but the signals in the
`
`channel of the “television frequency” have neither TV (conventional or digital)
`
`signals, nor any other non-digital information. (Id. at 423:11-26). Only digital
`
`SPAM messages reside on this digital data channel. (Id. at 419-427). Other
`
`channels of the multi-channel cable transmission in Fig. 7F (id.) may contain TV
`
`signals output by cable converter box 201, shown as “one TV channel.”
`
`VI. THE AMENDED CLAIMS ARE PATENTABLE OVER THE
`PRIOR ART
`
`The amended claims are all supported by the ’413 application, and therefore,
`
`Patent Owner herein illustrates patentability over art that is dated prior to
`
`September 1987.
`
`
`
`15
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`The substitute claims are patentable over all “prior art of record,” i.e., any art
`
`submitted during prosecution, in this proceeding, and in IPR2016-00754, which
`
`also challenges the ’635 patent. (MasterImage 3D, Inc. v. RealD Inc., IPR2015-
`
`00040, Paper 42, July 15, 2015). The substitute claims are also patentable over all
`
`prior art that has been brought before the Board in proceedings on related patents,
`
`including IPR2016-00751 and IPR2016-00753, brought by Apple, Inc., and
`
`IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01531, IPR2014-
`
`01532, IPR2014-01533, and IPR2014-01534, brought by another petitioner. By
`
`considering these wide swaths of art (Exs. 2100-2203) previously applied to claims
`
`described by the same specification, which encompasses numerous different
`
`technical areas, Patent Owner believes it is fairly representing all prior art known
`
`to be relevant to the Substitute Claims.
`
`a. The Substitute Claims Are Patentable Over The Art in the
`Instituted Grounds
`
`IPR of original claim 3, drawn to a “remote transmitter station,” was
`
`instituted over Campbell (Ex. 1044; Paper 7 at 48-57). Substitute claim 41
`
`requires “wherein said remote transmitter station encrypts, absent any scrambling,
`
`said unit of digital programming using one of a plurality of cipher algorithms
`
`preprogrammed at said subscriber station, wherein a cipher algorithm identification
`
`transmitted by said remote transmitter station may be changed to a different one of
`
`said plurality of cipher algorithms.” Campbell (Ex. 1044) fails to teach any of
`
`
`
`16
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`these amended limitations. Campbell’s digital programming is either scrambled or
`
`transmitted in the clear. (Ex. 1044 at 7:51-57, 8:18-38, 9:3-10) Campbell is silent
`
`as to a cipher algorithm.
`
`IPR of original claim 4 was instituted over Seth-Smith (Ex. 1043; Paper 7 at
`
`42-48). Substitute claim 42 requires, inter alia, element (1):“said subscriber
`
`station storing a computer file with a file extension;” element (2): “said second
`
`decryptor using one of a plurality of preprogrammed cipher algorithms chosen
`
`from said plurality at said subscriber station;” and element (3): “outputting audio
`
`coordinated in time to bring meaning to video.”
`
`With respect to element (1), Seth-Smith (Ex. 1043 at 40:21-34) teaches the
`
`use of a specialized microprocessor designed for automotive use, which does not
`
`require file systems. Indeed, Seth-Smith is silent as to a computer file with a file
`
`extension.
`
`With respect to element (2), Seth-Smith teaches that the received TV video
`
`at a subscriber station is a scrambled analog signal (Ex. 1043 at 5:11-15, 12:62-66;
`
`Ex. 2203 at Fig. 1, incorporated by reference into Ex. 1043 at 18:19-20), and not
`
`the claimed received encrypted digital video absent any descrambling.
`
`Furthermore, Seth-Smith teaches a “secure” microprocessor (Ex. 1043 at 26:50-54)
`
`and decryption keys as offering “a very high degree of security”. (Ex. 1043 at
`
`6:17-21, 6:40-42). These keys may be used in conjunction with a single bit to
`
`
`
`17
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`select between two “descrambling algorithms” (Ex. 1043 at 18:15-20, Fig. 10);
`
`however, selecting a different descrambling pattern is not the same as choosing a
`
`cipher algorithm from the claimed plurality of cipher algorithms preprogrammed at
`
`the subscriber station: both the ’413 application (Ex. 2208 at 311:28-33) and Seth-
`
`Smith (Ex. 1043 at 12:62-66,18:15-20, 19:28-30, 28:18-33, 29:61-30:20, 38:21-42,
`
`Figs. 17, 21; incorporated by reference Ex. 2203 at 4:1-6, Figs. 4-7) distinguish
`
`between scrambling and encryption. Seth-Smith is silent as to having more than
`
`one decryption algorithm for the descramble pattern selection. (Ex. 1043 at 38:21-
`
`42, Figs. 18, 21).
`
`With respect to element (3), Seth-Smith (Ex. 1043 at Abstract) teaches
`
`digital data for teletext. Teletext has no support for audio (Ex. 2153), let alone
`
`audio coordinated in time to bring meaning to video.
`
`IPR of original claim 7 was instituted over Seth-Smith. Substitute claim 43
`
`requires, inter alia, element (1): “wherein said programming further includes
`
`unique digital data, said subscriber station communicating said unique digital data
`
`to a remote site; and element (2): “said second decryptor decrypts, absent any
`
`descrambling, using one of a plurality of cipher algorithms preprogrammed at said
`
`subscriber station chosen based on said decrypted control signal portion.”
`
`With respect to element (1), Seth-Smith (Ex. 1043 at 10:19-27) teaches away
`
`from “communicating to a remote site” by stating, “In this way, no uplink facility
`
`
`
`18
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`at the user’s station need be provided.” Instead, any communication from the
`
`subscriber station is performed using a voice telephone system with the subscriber
`
`speaking with the broadcaster’s (human) representative. (Id. at 9:38-40, 10:19-27,
`
`16:11-18).
`
`With respect to element (2), Seth-Smith teaches using one decryption
`
`algorithm, and although Seth-Smith acknowledges that many algorithms do exist
`
`(Ex. 1043 at 38:21-42, Figs. 18, 21), it does not allow modifications to enable
`
`multiple digital cipher algorithms, lest the secure microprocessor “be destroyed”.
`
`(Ex. 1043 at 26:50-54).
`
`IPR of original claims 13, 18, 20, and 32 (Ex. 1003) was instituted over
`
`Chandra (Ex. 1041, Paper 7 at 25-36), and IPR of original claim 33 (Ex. 1003) was
`
`instituted over Chandra (Ex. 1041) in view of Nachbar (Ex. 1042, Paper 7 at 37-
`
`41). Each of substitute claims 44-48 require, inter alia, element (1): receiving
`
`and decrypting unique digital data that is communicated to a remote site: and
`
`element (2): customizing decrypted information dependent on subscriber specific
`
`information stored at the receiver station prior in time to receiving the information
`
`to be customized. Substitute claims 46 and 48 further require element (3): the
`
`customized information to include a shopping list. Substitute claims 44-45 and 47-
`
`48 further require element (4): identifying a cipher algorithm from a plurality of
`
`cipher algorithms preprogrammed at a receiver station.
`
`
`
`19
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`
`With respect to element (1), Chandra (Ex. 1041), cited for its teaching of
`
`decryption, provides no details regarding transmission of any specific information
`
`to a remote site. With respect to element (2), Chandra (Ex. 1041) is completely
`
`silent as to identifying a cipher algorithm from a plurality of cipher algorithms
`
`preprogrammed at a receiver station. Chandra, at best, teaches a series of
`
`decryption steps using a physically secure coprocessor. (Ex. 1041 at Abstract,
`
`26:15-44, Fig. 8). With respect to element (3), both Chandra and Nachbar (Ex.
`
`1042) are completely silent as to customizing decrypted information, and neither
`
`Chandra nor Nachbar, alone or in combination, show or suggest a shopping list is
`
`included in the customized decrypted information. With respect to element (4), the
`
`cipher algorithm for function C2 and C4, shown in Fig. 8 (Ex. 1041), is fixed and
`
`Chandra only discusses identifying the proper key (e.g., CSK) to be decrypted, but
`
`not choosing/identifying between a plurality of cipher algorithms. (Ex. 1041 at
`
`26:15-44).
`
`b. The Substitute Claims Are Patentable Over All Art Known To
`Patent Owner
`
`The Substitute Claims all claim specific limitations not found in any prior art
`
`of which Patent Owner is aware. The Substitute Claims, therefore, are not
`
`anticipated by any prior art reference and are not rendered obvious by any
`
`combination of prior art references because a determination of obviousness cannot
`
`be based on a combination where certain specific components used in the
`
`
`
`20
`
`
`
`Apple v. PMC
`IPR2016-01520 (U.S. Pat. 8,559,635)
`
`implementation of the combination are not found in the prior art at all. Abbott
`
`Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) ( “that each and every
`
`claim limitation [must] be found present in the combination of the prior art
`
`references before the [obviousness] analysis proceeds”); see also KSR
`
`International Co. v. Teleflex Inc., 550 U.S. 398, 420-421 (2007); W.L. Gore &
`
`Assoc., Inc. v. Garlock, Inc., 721
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
