UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`For: Signal Processing Apparatus and Methods
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`PATENT OWNER PERSONALIZED
`MEDIA COMMUNICATIONS’ RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`C.
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`D.
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`E.
`F.
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`G.
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`INTRODUCTION ........................................................................................... 1
`I.
`GROUNDS AT ISSUE ................................................................................... 4
`II.
`III. THE CLAIMS ARE ENTITLED TO THE NOVEMBER
`3, 1981 PRIORITY DATE .............................................................................. 4
`A.
`Legal Standard ....................................................................................... 5
`B.
`Apple and Wechselberger’s Priority Analysis was
`Improper as a Matter of Law ................................................................. 6
`The ’490 Patent Provides Written Description Support
`for Each of the Challenged Claims ....................................................... 9
`Claim 3 ................................................................................................ 10
`1.
`“programming” ........................................................................... 13
`2.
`“communicating” step ................................................................ 20
`Claims 4 and 7 ..................................................................................... 20
`Claim 13 .............................................................................................. 24
`1.
`“executable instructions” ............................................................ 25
`Claims 18, 20, 32, and 33 .................................................................... 29
`1. All-digital Information Transmissions via
`Telephone Link ........................................................................... 29
`2. Wall Street Week (Fig. 6C) and Julia Child (Fig.
`6D) Examples ............................................................................. 31
`3. How to Grow Grass Example (Fig. 6E) ..................................... 37
`4.
`“code” and “downloadable code” ............................................... 42
`IV. CLAIM CONSTRUCTION .......................................................................... 42
`A.
`“executable instructions” ..................................................................... 43
`B.
`“Decrypt” and related terms ................................................................ 45
`C.
`“at least one encrypted digital information
`transmission is unaccompanied by any non-digital
`information transmission” ................................................................... 47
`THE CHALLENGED CLAIMS ARE PATENTABLE
`
`V.
`
`i
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`

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`3.
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`4.
`
`OVER THE PRIOR ART .............................................................................. 48
`A.
`Claim 3 Is Patentable over Campbell
` .................................................. 48
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`1. Campbell Does Not Qualify As Prior Art .................................. 48
`2.
`“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” .......................................................... 49
`“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”; “said one or
`more first instruct signals being transmitted in
`accordance with said control signal” .......................................... 49
`“a code or datum identifying a unit of
`programming to be transmitted by the remote
`transmitter station” ..................................................................... 50
`5. Apple has failed to set forth a prima facie case
`of obviousness ............................................................................ 51
`Claims 4 and 7 Are Patentable over Seth-Smith
` ................................. 57
`Chandra, in view of Nachbar, Fails to Render Claim
`33 Obvious .......................................................................................... 59
`1. Chandra and Nachbar Do Not Qualify as Prior
`Art ............................................................................................... 59
`“selecting, by processing selection criteria, a
`first signal of said plurality of signals including
`downloadable code” ................................................................... 59
`“encrypted digital information transmission …
`unaccompanied by any non-digital information
`transmission” .............................................................................. 60
`4. There Is No Motivation to Modify Chandra .............................. 60
`Chandra Fails to Anticipate Claims 13, 18, 20, and 32
`of the ’635 Patent ................................................................................ 62
`1. Chandra Does Not Qualify as Prior Art ..................................... 62
`2.
`“processor”; “controlling a decryptor that
`decrypts encrypted digital data to decrypt in a
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`B.
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`C.
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`2.
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`3.
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`D.
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`ii
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`3.
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`specific fashion on the basis of said code” ................................. 62
`“encrypted digital information transmission…
`unaccompanied by any non-digital information
`transmission” .............................................................................. 63
`“passing said decrypted second of said plurality
`of signals to a controllable device” ............................................ 63
`VI. OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS ................................ 64
`VII. CONCLUSION .............................................................................................. 64
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`4.
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`iii
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................ 53
`
`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ........................................................ 5, 34
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`Astrazeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010) ............................................................ 45
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`Atlantic Research Marketing Systems, Inc. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) ............................................................ 15
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`Black & Decker, Inc. v. Positec USA, Inc.,
`646 Fed. Appx. 1019 (Fed. Cir. 2016) .................................................. 55
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`Cutsforth, Inc. v. MotivePower, Inc.,
`No. 2016-1316 (Fed. Cir. 2016) ........................................................... 20
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`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................... 6, 9
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`In re Barker,
`559 F.2d 588, 194 USPQ 470 (CCPA 1977) .................................... 6, 25
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`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) ............................................................ 53
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`Inphi Corp. v. Netlist, Inc.,
`805F.3d 1350 (Fed. Cir. 2015) ............................................................. 41
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`Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co.,
`590 F.3d 1326 (Fed. Cir. 2010) ............................................................ 15
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 52
`iv
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`

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`MBO Laboratories, Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007) ............................................................ 46
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................ 43
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`O2 Micro Int’l Ltd. V. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008) ............................................................ 43
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`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ........................................................ 52, 61
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`PowerOasis, Inc. v. T–Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ........................................................ 5, 14
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`Santarus, Inc. v. Par Pharmaceutical, Inc.,
` 694 F.3d 1344 (Fed. Cir. 2012) ........................................................... 40
`
`Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) ............................................................ 54
`
`Technology Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) .................................................... 5, 6, 14
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`Therma-Tru Corp. v. Peachtree Doors Inc.,
`44 F.3d 988 (Fed. Cir. 1995) .................................................................. 5
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`TMC Fuel Injection System, LLC v. Ford Motor Co.,
`2016-2122, 2017 WL 1130321 (March 27, 2017) ................................ 46
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors
`USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ............................................................ 64
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ........................................................ 5, 19
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`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ............................................................ 52
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`Statutes
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`35 U.S.C. § 120 .......................................................................................... 5
`v
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`

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`35 U.S.C. § 316 .......................................................................................... 5
`35 U.S.C. § 316 ........................................................................................ ..5
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`vi
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`Vi
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`I.
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`INTRODUCTION
`Petitioner Apple, Inc. (“Apple”) filed its first petition for inter partes review
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`of U.S. Patent 8,559,635 (the “’635 Patent”) on March 30, 2016. The Board
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`declined to institute review of multiple claims that Apple challenged, including
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`claims 3, 18, 20, and 32-33. Ex. 2032 (Paper 8, IPR2016-00754). Apple then filed
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`a second petition for inter partes review of the ’635 Patent challenging the same
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`set of claims. Once again, the Board declined to institute review of multiple claims
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`that Apple challenged in its second petition. Patent Owner Personalized Media
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`Communications LLC (“PMC”) hereby submits this response to Apple’s second
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`petition for inter partes review (“Petition”) addressing claims 3, 4, 7, 13, 18, 20,
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`32, and 33 (the “Challenged Claims”).
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`All of the references applied in Apple’s grounds for unpatentability postdate
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`November 3, 1981. Apple’s Petition, therefore, depends entirely upon its
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`challenge to the 1981 priority date of the ’635 Patent. A finding here that any
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`Challenged Claim is entitled to its 1981 priority date, removes all of the prior art
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`that Apple’s Petition relies upon and necessarily leads to confirmation of the
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`validity of that Challenged Claim.
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`Apple’s Petition rests substantially upon an expert declaration by Anthony J.
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`Wechselberger. Ex. 1001. Wechselberger argues that the Challenged Claims are
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`not supported by the written description of PMC’s U.S. Patent No. 4,694,490
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`1
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`(hereinafter, “’490 Patent”). He concludes, therefore, that the Challenged claims
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`are not entitled to a priority date earlier than September 11, 1987, the filing date of
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`the continuation-in-part application that issued as PMC’s U.S. Patent No.
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`4,965,825 (hereinafter, the “’825 Patent” or “1987 Specification”).
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`The Board should disregard the Wechselberger Declaration. First,
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`Wechselberger’s Declaration explains that he formed the opinions expressed in the
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`Declaration after considering “the viewpoint of a person having ordinary skill in
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`the relevant art as of September 11, 1987.” Ex. 1001, ¶8. He never considered the
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`meaning of the claims, or whether they are supported by the parent application,
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`which issued as PMC’s ’490 Patent, from the perspective of a person having
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`ordinary skill in the art in 1981 – the claimed, and proper, priority date of the
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`Challenged Claims. Ex. 2020 at 15:25-16:4. By taking this approach
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`Wechselberger’s analysis is defective.
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` In addition, Wechselberger construed the Challenged Claims one way for
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`purposes of assessing priority, but a different way for purposes of assessing
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`validity in view of the intervening prior art. Compare Ex. 2020, 33:21-34:5-17
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`with id., 32:25-33:8. In fact, Wechselberger admitted at his deposition that he
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`actually made no attempt at all to construe the claims himself; he merely applied
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`the claim constructions that Apple’s attorneys told him to apply. Ex. 2020, 21:4-9.
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`And, as noted, Apple’s claim constructions varied materially depending upon
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`2
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`which part of the analysis Wechselberger was performing. This was further error
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`on Wechselberger’s part.
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`Moreover, Wechselberger’s Declaration frequently simply declares without
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`support, or worse, contrary to the written record, how he believes a person of
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`ordinary skill in the art would have understood (at the wrong time) the Challenged
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`Claims, the ’490 Patent disclosure, or the ’825 patent disclosure. For example,
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`Wechselberger’s Declaration cites a “Videodisc Technology” article by Marsh (Ex.
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`1047), as support for his claim that a person of ordinary skill in the art would have
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`understood the digital system for book ordering depicted in Fig. 6E of the ’490
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`Patent to be an analog system. He cites only to a portion of the Marsh article that
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`describes analog FM signals. Ex. 1001, ¶87. Wechselberger ignores, however, the
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`express disclosures in the same article describing digital videodiscs systems
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`capable of storing and retrieving 2 x 1010 digital bits of data that were available for
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`purchase at that time. Ex. 1047 at 13-14.
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`Wechselberger’s defective legal approach, fluid claim constructions, and
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`misleading citations, render his opinions utterly unreliable. The Board therefore
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`should disregard Wechselberger’s Declaration. And without the Wechselberger
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`Declaration, which is its keystone, Apple’s argument that the Challenged Claims
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`are invalid collapses.
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`PMC does not rest, however, solely on Apple’s failure to make its case. To
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`3
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`the contrary, patent owner PMC sets out below its reasoned and correct analysis
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`explaining that the Challenged Claims are, in fact, entitled to the priority date PMC
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`always properly has claimed – the November 3, 1981 filing date of the application
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`that led to issuance of PMC’s ‘490 patent. For this reason alone, as well as for the
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`additional reasons set forth below, the Board should confirm the validity of the
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`Challenged Claims.
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`II. GROUNDS AT ISSUE
`The Board issued an Institution Decision on February 16, 2017, finding that
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`Apple failed to show a reasonable likelihood that it would prevail to show that
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`claims 21, 28, 29, and 30 are unpatentable. (Paper 7) (“Institution Decision”). The
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`following grounds remain at issue:
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`Claims
`Prior Art
`Basis
`13, 18, 20, and 32
`Chandra
`Anticipation
`33
`Chandra and Nachbar
`Obviousness
`3
`Campbell
`Obviousness
`4, 7
`Seth-Smith
`Anticipation
`III. THE CLAIMS ARE ENTITLED TO THE NOVEMBER 3, 1981
`PRIORITY DATE
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`The prior art status of the patents and publications identified in the petition
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`hinges on the effective priority date for the ’635 Patent. The ’635 Patent is a
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`continuation application of, amongst others, Application No. 07/096,096 filed on
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`September 11, 1987, which issued as the ’825 Patent. The ’635 Patent claims
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`priority to the November 3, 1981 filing date of the original U.S. Patent Appl. No.
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`4
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`06/317,510, which ultimately issued as the ’490 Patent.
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`A. Legal Standard
`A claim in a CIP application is entitled to the filing date of the parent
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`application when the claimed invention is described in the parent specification in a
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`manner that satisfies the description requirement of 35 U.S.C. § 112. See 35
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`U.S.C. § 120; Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988, 992 (Fed.
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`Cir. 1995); Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir.
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`2008)). The sufficiency of the written-description requirement for priority must be
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`judged as of the filing date of the earlier application based on what the language
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`of the specification would have meant to one of ordinary skill in the art as of the
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`filing date of the earlier application. Ariad Pharmaceuticals, Inc. v. Eli Lilly and
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`Co., 598 F.3d 1336, 1355–57 (Fed. Cir. 2010); PowerOasis, Inc. v. T–Mobile USA,
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`Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting Vas–Cath Inc. v. Mahurkar,
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`935 F.2d 1555, 1563–64, 66 (Fed. Cir. 1991) (The disclosure of the prior
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`application must “convey with reasonable clarity to those skilled in the art that, as
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`of the filing date sought, [the inventor] was in possession of the invention”;
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`“Mahurkar’s later patenting of inventions involving different range limitations is
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`irrelevant to the issue [of priority]”)).
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`The burden of establishing unpatentability of a patent or any claim thereof,
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`rests on Apple. 35 U.S.C. § 316(e) (“In an inter partes review ..., the petitioner
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`5
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`shall have the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.”). Apple has the initial “burden of going forward
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`with evidence that there is such anticipating prior art” or a combination of prior art,
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`including that each reference qualifies as prior art to challenged claims. Tech.
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`Licensing, 545 F.3d at 1327; Dynamic Drinkware, LLC v. National Graphics, Inc.,
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`800 F.3d 1375 (Fed. Cir. 2015). Even then, PMC may rebut that showing with
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`evidence that “the asserted claim is entitled to the benefit of a filing date prior to
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`the alleged prior art” by establishing that the ’490 Patent’s disclosure provides
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`written description support under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d
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`at 1375. This burden of production shifts to PMC only if Apple has met its initial
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`burden, i.e., by making out a prima facie case that the claimed invention is not
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`entitled to a priority date that would antedate the alleged prior art. Once evidence
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`is put before the Board showing written description support for the challenged
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`claims, the burden shifts back to Apple “to convince the court that [the Patent
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`Owner] is not entitled to the benefit of the earlier filing date.” Id. at 1379.
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`B. Apple and Wechselberger’s Priority Analysis was Improper as a
`Matter of Law
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`Apple has failed to meet its initial burden of production to show that the
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`cited references constitute prior art to the ’635 Patent and commits a fundamental
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`error in the process. In re Barker, 559 F.2d 588, 592 n.4 (CCPA 1977). Apple has
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`failed to set forth adequate evidence showing that the ’490 Patent lacks written
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`6
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`description support for the Challenged Claims, i.e., that each of the Challenged
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`Claims includes at least one limitation that is unsupported by the disclosure of the
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`’490 Patent considered in its entirety. Wechselberger, in fact, has admitted that he
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`never conducted this analysis to determine priority and conceded that he was only
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`tasked to determine whether PMC’s proposed claim constructions were supported
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`by the ’490 Patent. Ex. 2020 at 28:22-29:14; 31:18-21; 43:8-20. When applying
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`PMC’s claim constructions, he did not assess whether they were supported by
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`considering the ’490 Patent as a whole. Ex. 1001, ¶ 82 (“There is no analogous
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`disclosure in the ‘490 Patent”); Ex. 2020 at 32:10-17. Also, he never applied
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`Apple’s proposed constructions to consider whether the claim limitations are
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`supported in the ’490 Patent.
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`Wechselberger’s review of claim 13, for example, was limited to
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`determining whether PMC’s proposed construction of “executable instructions” (as
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`“instructions of a computer program that cause a computer to carry out operations
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`on the computer according to the instructions”) was supported by the disclosure of
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`the ’490 Patent. Ex. 2020 at 28:22-29:14; 31:18-21. He has argued in this IPR and
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`in the related IPR2016-00754, however, that a skilled artisan would have
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`understood “executable instructions” to mean merely instructions that are
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`7
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`executed. Ex. 1001, ¶99; Ex. 2019, ¶¶156, 160.1 Yet, Wechselberger’s
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`Declaration never analyzes whether the ’490 Patent includes written description
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`support of claim 13 based on that construction. His priority analysis and opinions
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`with respect to the other Challenged Claims are similarly deficient. See, e.g., Pet.
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`at 13 (“there is no support in the ’490 patent for PMC’s interpretation of the
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`limitation of Claim 3 that recites ‘receiving a control signal which operates at the
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`remote transmitter’”); Ex. 1001, ¶¶83, 85 (applying PMC’s construction, but not
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`Apple’s construction, of “encrypted information transmission unaccompanied by
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`any non-digital . . .” to claims 18, 20, 32, 33). In fact, while Wechselberger has
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`applied only PMC’s claim constructions with respect to priority, he has applied
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`only Apple’s proposed claim constructions with regard to validity. See, Ex. 2020,
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`32:25-33:8; 33:21-34:5-17.
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`Wechselberger’s priority analysis is also deficient as a matter of law because
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`he has failed to determine whether there was written description support from the
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`perspective of a skilled artisan as of November 3, 1981. Wechselberger, by his
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`own admission, conducted the priority analysis from the perspective of a skilled
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`artisan as of 1987. Ex. 1001, ¶8 (“In forming the opinions expressed in this
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`Declaration, I … have considered the viewpoint of a person having ordinary skill
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`1 The Board adopted Wechselberger’s interpretation in instituting IPR2016-00754.
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`Ex. 2032 at 27.
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`8
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`in the relevant art as of September 11, 1987.”); Ex. 2020 at 15:25-16:4 (“Q: So for
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`purposes of assessing the priority date of the challenged claims of the ’635 patent,
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`you considered the perspective of a person of ordinary skill in the art in 1987;
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`correct? A. Reading the ’635 patent, yes, in ’87.”); 17:14-18:4. As a result, the
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`opinions that Wechselberger sets forth regarding priority is improper, irrelevant,
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`and should be given no weight. Without a proper showing that the claims lack
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`written description support, Apple fails to meet even its initial burden of
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`production, and the burden never shifts to PMC.
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`C. The ’490 Patent Provides Written Description Support for Each
`of the Challenged Claims
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`Even if Apple had met its initial burden of production, PMC can
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`demonstrate that each of the Challenged Claims has written description support in
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`the ’490 Patent that is sufficient to enable a skilled artisan to make and use the
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`claimed inventions. 35 U.S.C. § 112. The ultimate burden lies with Apple to
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`convince the Board that each of the Challenged Claims is not entitled to the benefit
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`of the earlier filing date. Dynamic Drinkware, 800 F.3d at 1328. Apart from a
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`handful of selected limitations discussed below, Apple and Wechselberger do not
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`dispute that the ’490 Patent provides written description support for the claims.
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`Apple cannot meet its burden of proof because its arguments that these claim terms
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`lack written description support in the ’490 Patent are contradicted by numerous
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`examples in the specification, nearly all of which Apple ignores.
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`9
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`D. Claim 3
`The ’490 Patent supports claim 3’s method of “controlling a remote
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`transmitter station to communicate program material to a subscriber station and
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`controlling said subscriber station to process or output a unit of programming.”
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`Expert Declaration of Dr. Alfred Weaver, Ex. 2023, ¶¶105-37. The ’490 Patent
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`discloses a system that includes transmitter stations that receive signals from
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`remote sources and transmit instructions and programming to subscriber stations
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`(receiver stations) through television, cable, telephone, radio or other types of
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`communication networks. See, e.g., Ex. 1004, FIGs. 3A-3D (head end station) and
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`corresponding text; 22:15-24. Transmissions from the transmitter station allow for
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`the automatic control of programming transmissions and presentations delivered at
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`receiver stations and monitoring the programming transmitted and presented,
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`including to process and decrypt the programming for output. Ex. 2023, ¶¶105-
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`110.
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`The ’490 Patent describes that an origination station or other remote sources
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`may “communicat[e] [a] control signal to [the] remote transmitter station,” which,
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`when received, “operates at the remote transmitter station to control the
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`communication of a unit of programming and one or more first instruct signals,” as
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`recited in claim 3. Ex. 2023, ¶106. For example, the disclosed transmitter
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`station’s “controller/computer, 73, has means for receiving input information …
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`10
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`from remote sources via telephone or other data transfer network, 98,” and such
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`information may “indicate when and on which channel or channels the head end
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`facility should transmit each program unit to cable field distribution system, 93.”
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`Ex. 1004, 11:18-31. The programming transmissions may further contain instruct
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`signals that control operations at the receiver stations, as discussed further below.
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`See also Ex. 1004, 12:13-21; 13:31-32. And, based on the schedule information,
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`the transmitter station transmits these instruct signals and programming to the
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`receiver stations, i.e., “in accordance with” the control signal. Ex. 2023, ¶108.
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`The transmitter station further “receiv[es] a code or datum identifying a unit
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`of programming to be transmitted by the remote transmitter station,” as recited in
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`claim 3. Ex. 2023, ¶109. The transmitter station’s controller/computer, 73 “has
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`means for receiving…the cable television system’s complete programing schedule,
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`with each discrete unit of programing identified with a unique program code.” Ex.
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`1004, 11:18-25; see also, id., 11:32-37. For example, the transmitter station’s
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`“[c]ode reader, 72, passes the received signals, with channel identifiers, to cable
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`program controller and computer, 73.” id., 11:12-14. The computer 73 can
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`determine “when and on which channel or channels the head end facility should
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`transmit each program unit to cable field distribution system, 93.” Ex. 1004,
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`11:28-31. The unit of programming is further “transferr[ed] … to a transmitter.”
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`See id., 11:39-43; Fig. 3C.
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`The transmitter station communicates “instruct signals” which operate at the
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`receiver stations to perform various operations. The transmitter station, in
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`particular, receives and communicates “instruct signals which operate at the
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`[receiver] station to identify and decrypt said unit of programming or said one or
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`more first instruct signals, said remote transmitter station transferring said one or
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`more second instruct signals to said transmitter,” as set forth in claim 3. Ex. 2023,
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`¶¶107-108, 110. For example, the transmitter station may transmit “control
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`information … to tell each [receiver station] how to operate and how and where to
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`look for signals and to communicate other information.” Ex. 1004, 12:13-21.
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`Furthermore, the receiver stations receive from the transmitter station signals that
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`contain “a code or codes necessary for the decryption of the transmission.” Ex.
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`1004, 13:31-32. These signals “instruct decrypter/interrupter, 101, to decrypt the
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`transmission,” “to interrupt the transmission or not to interrupt the transmission,”
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`and may “inform decrypter/interrupter, 101, how to decrypt or interrupt the
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`programing if decrypter/interrupter, 101, is capable of multiple means.” Id., 13:24-
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`31; see also, e.g., id., 14:10-17; 12:13-21; 13:13-32; 20:38-53; 21:44-22:4. These
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`instruct signals can also control the decrypting of programming or other instruct
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`signals (e.g., signals used to control decryption), such as in the double or cascaded
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`decryption schemes. See infra Section III.E; Ex. 1004, Figs. 4D, 6D, 6E and
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`corresponding text. The transmitter station transmits information transmissions
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`that contain the above-described signals and programming, amongst others. See,
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`e.g., id., 12:46-65; 11:15-31; Fig. 3C; Ex. 2023, ¶111.
`
`1.
`Apple does not dispute that the ’490 Patent provides written description
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`“programming”
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`support for the term “programming.” Pet. at 12 (“The term “programming” is
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`defined in both the ’490 and ’635 patents.”) It has only argued that claims 3, 4 and
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`7 are not entitled to the earlier priority date because, according to Apple, the term’s
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`meaning was “expanded” in the ’825 Patent. In particular, Apple has asserted that
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`the 1981 Specification provides a definition for “programming” in its abstract
`
`which differs from the definition of that term given in the 1987 Specification. Pet.
`
`at 12 (emphasis added). Apple’s priority challenge is flawed because it is based on
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`the claim term being defined by the abstract of the ’490 Patent, a premise which
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`the Board properly declined to adopt as it was prohibited by regulation. Paper 5 at
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`18 (citing to Ex. 2016 (37 CFR 1981 § 1.72)); Paper 7 at 8-10.
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`Relying on Wechselberger’s testimony, the Board’s Institution Decision
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`provisionally found that Claims 3, 4 and 7 are not entitled to the priority date of the
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`’490 Patent because the ’490 Patent does not describe “programming” as
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`“everything . . . transmitted electronically to entertain, instruct or inform.”
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`(emphasis by the Board). Paper 7 at 8-10. Apple’s argument—and the Board’s
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`provisional findings as a result—is flawed at least because: (1) It is based upon
`
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`analytical framework that is improper as a matter of law; and (2) the ’490 Patent
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`indeed describes programming to include everything that is transmitted
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`electronically to entertain, instruct or inform, commensurate with “programming”
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`as defined for the ’635 Patent.
`
`a.
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`To Determine Priority, Section 120 Requires An
`Analysis Of Written Description Of The ’490
`Patent Alone
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`There is no authority to support Apple’s argument that priority should be
`
`denied based on its comparison of the specifications. As the Federal Circuit in
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`PowerOasis emphasized, “[it] is elementary patent law that a patent application is
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`entitled to the benefit of the filing date of an earlier filed application only if the
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`disclosure of the earlier application provides support for the claims of the later
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`application, as required by U.S.C. § 112.” PowerOasis, 522 F.3d at 1306.
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`Furthermore, the Federal Circuit has repeatedly rejected the notion that priority
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`could be determined by comparing the specifications of the patent-in-question and
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`the earlier patent to which priority is claimed, and has reiterated that the proper
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`inquiry in determining priority is whether the earlier filed application alone
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`provides written description support for the claim in question. See, e.g., Tech.
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`Licensing, 545 F.3d at 1333-1334. The Board has similarly rejected Apple’s
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`priority framework as legally improper, finding that “[t]he fact that the later
`
`specification allegedly broadens the claim term is immaterial because” any alleged
`
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`difference in the scope of the term would “go to the scope of the claim in question
`
`and not to a question of priority.” Ex. 2003 at 44; see also Ex. 2005 at 27-34.
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`The inquiry for determining whether the claims are entitled to priority is
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`straightforward: Determine whether the ’490 Patent provides written description
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`support for “programming.”2 An inquiry focusing on whether the meaning of the
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`claim term was “broadened” as between the earlier and later specifications is
`
`misplaced.
`
`b.
`
`The ’490 Patent provides written description
`support for “programming,” consistent with the
`examples of “programming” described in the
`1987 Specification.
`
`When the ’490 Patent is considered as a whole, the adequacy of the written
`
`de