IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`
`
`U.S. Patent No. 8,559,635
`
`Filed: May 24, 1995
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`Issued: October 15, 2013
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`Inventor(s): John Christopher Harvey, James
`William Cuddihy
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`Assignee: Personalized Media
`Communications, LLC
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`
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`Title: Signal Processing Apparatus and Methods Panel: To Be Assigned
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,559,635
`UNDER 35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`
`
`
`
`
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`
`
`U.S. Patent No. 8,559,635
`
`Filed: May 24, 1995
`
`Issued: October 15, 2013
`
`Inventor(s): John Christopher Harvey, James
`William Cuddihy
`
`Assignee: Personalized Media
`Communications, LLC
`
`
`
`
`
`
`
`
`
`
`
`Title: Signal Processing Apparatus and Methods Panel: To Be Assigned
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,559,635
`UNDER 35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`
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`
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`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT IN SUPPORT OF INSTITUTION ............. 1
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`PRIORITY DATE OF THE CHALLENGED CLAIMS ................................ 4
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`A.
`
`B.
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`C.
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`D.
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`Claim 13 Is Not Entitled To The November 3, 1981 Priority
`Date of the ’490 Patent .......................................................................... 5
`
`Claims 18, 20, 32, and 33 Are Not Entitled To The November
`3, 1981 Priority Date of the ’490 Patent ............................................... 6
`
`Claims 21, 28, 29, and 30 Are Not Entitled To The November
`3, 1981 Priority Date of the ’490 Patent ............................................. 10
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`Claims 3, 4, And 7 Are Not Entitled To The November 3, 1981
`Priority Date of the ’490 Patent........................................................... 11
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`III.
`
`IDENTIFICATION OF CHALLENGE – 37 C.F.R. § 42.104(b) ................. 14
`
`A.
`
`B.
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`37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested ......... 14
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`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based ...................................... 14
`
`C.
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`37 C.F.R. § 42.104(b)(3): Claim Construction ................................... 15
`
`(1)
`
`(2)
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`(3)
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`(4)
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`(5)
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`“executable instructions” (Claim 13) ............................. 15
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`“encrypted digital information transmission …
`unaccompanied by any non-digital information
`transmission” (Claims 18, 20, 32, 33) ............................ 16
`
`“communicating said control signal to said remote
`transmitter station” (Claim 3) ......................................... 18
`
`“decrypting”-related terms (all Challenged Claims) ...... 20
`
`“processor” (Claims 18, 21, 33) ..................................... 22
`
`D.
`
`E.
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`37 C.F.R. § 42.104(b)(4): How the Claims are Unpatentable ............ 23
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge ................ 23
`
`i
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`
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`
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CLAIMS
`OF THE ’635 PATENT ARE UNPATENTABLE ....................................... 24
`
`A. Description of the Alleged Invention of the ’635 Patent .................... 24
`
`B.
`
`C.
`
`D.
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`Summary of the Prosecution History of the ’635 Patent .................... 25
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`Summary of Grounds of Unpatentability ............................................ 27
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`Claim-By-Claim Explanation of Grounds of Unpatentability ............ 29
`
`Ground 1: Claims 13, 18, 20, 32 and 33 Are Invalid Based on
`Chandra ........................................................................... 29
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`(1) Claim 18 Is Anticipated By Chandra .............................. 29
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`(2) Claim 20 Is Anticipated By Chandra .............................. 33
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`(3) Claim 32 Is Anticipated By Chandra .............................. 35
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`(1) Claim 13 Is Anticipated By Chandra .............................. 38
`
`Ground 2: Claim 33 is Invalid Based Chandra And Nachbar ......... 41
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`(1) Claim 33 Is Obvious Over Chandra in View of
`Nachbar ........................................................................... 42
`
`Ground 3: Claims 4, 7, 21, and 28-30 Are Invalid Based on Seth-
`Smith ............................................................................... 45
`
`(1) Claim 2 Is Anticipated By Seth-Smith ........................... 45
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`(2) Claim 4 Is Anticipated By Seth-Smith ........................... 49
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`(3) Claim 7 Is Anticipated By Seth-Smith ........................... 50
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`(4) Claim 21 Is Anticipated By Seth-Smith ......................... 51
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`(5) Claim 28 Is Anticipated By Seth-Smith ......................... 53
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`(6) Claim 29 Is Anticipated By Seth-Smith ......................... 53
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`(7) Claim 30 Is Anticipated By Seth-Smith ......................... 54
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`Ground 4: Claim 3 is Invalid Based on Campbell ........................... 55
`ii
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`(1) Claim 3 Is Obvious Over Campbell ............................... 55
`(1)
`Claim 3 Is Obvious Over Campbell ............................. ..55
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`V. MANDATORY NOTICES – 37 C.F.R. § 42.8(A)(1) AND (B) .................. 60
`MANDATORY NOTICES — 37 C.F.R. § 42.8(A)(l) AND (B) ................ ..6O
`
`A.
`A.
`
`B.
`B.
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`C.
`C.
`
`D.
`D.
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`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest .................................... 60
`37 C.F.R. § 42.8(b)(l): Real Party-In-Interest .................................. ..6O
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`37 C.F.R. § 42.8(b)(2): Related Matters ............................................. 61
`37 C.F.R. § 42.8(b)(2): Related Matters ........................................... ..6l
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`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel .......................... 62
`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel ........................ ..62
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`37 C.F.R. § 42.8(b)(4): Service Information ....................................... 62
`37 C.F.R. § 42.8(b)(4): Service Information ..................................... ..62
`
`VI.
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`VI. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 62
`PAYIVIENT OF FEES — 37 C.F.R. § 42.103 ............................................... ..62
`
`VII.
`
`VII. GROUNDS FOR STANDING – 37 C.F.R. § 42.104(a) .............................. 62
`GROUNDS FOR STANDING — 37 C.F.R. § 42.l04(a) ............................ ..62
`
`
`
`iii
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`iii
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
`
`Apple Inc. (“Apple”) requests inter partes review (“IPR”) of Claims 3, 4, 7,
`
`13, 18, 20, 21, 28-30, 32, and 33 (“the Challenged Claims”) of U.S. Patent No.
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`8,559,635 (“the ’635 patent”) (Ex. 1003).
`
`Apple challenged Claims 1-4, 7, 13, 18, 20, 21, 28-30, 32, and 33 of the ’635
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`patent in related IPR2016-00754. In its Preliminary Response to that Petition,
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`Personalized Media Communications, LLC (“PMC”) disclaimed Claims 1 and 2 of
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`the ’635 patent and made arguments demonstrating that the ’635 patent is only
`
`entitled to claim priority to a September 11, 1987 application, not the November 3,
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`1981 application to which PMC has previously claimed priority. This Petition
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`presents independent and non-redundant grounds to demonstrate the Challenged
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`Claims are invalid under the September 11, 1987 priority date, the earliest priority
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`date to which the Challenged Claims can claim priority should the Board accept
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`PMC’s arguments in its Preliminary Response in IPR2016-00754.
`
`I.
`
`PRELIMINARY STATEMENT IN SUPPORT OF INSTITUTION
`
` Apple filed an IPR Petition on March 14, 2016 that relied on two distinct
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`prior art references: (1) U.S. Patent No. 4,337,483 to Guillou (Ex. 1006), filed
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`January 31, 1980, describing a teletext/viewdata video transmission system; and
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`(2) U.S. Patent No. 4,388,643 to Aminetzah (Ex. 1008), filed April 6, 1981,
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`describing a pay TV system. See IPR2016-00754. The Board has not issued an
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`Institution Decision in IPR2016-00754 as of the time of this filing.
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`
`
`1
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`PMC has consistently asserted that the Challenged Claims of the ’635 patent
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`are entitled to a November 3, 1981 priority date, both during prosecution of the
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`’635 patent and in the related district court action. Ex. 1019 at 6; Ex. 1036 at 7-8;
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`Ex. 1032 at 1-2, 22, 40; Ex. 1034 at 2-4. Based upon PMC’s assertions, Apple
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`relied on prior art that predated PMC’s alleged 1981 priority date for its Petition in
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`IPR2016-00754.
`
`Now, however, PMC has taken positions in its Preliminary Response in
`
`IPR2016-00754 that are wholly inconsistent with, and thus undermine, any claim
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`to a 1981 priority date. This change in priority means that additional references,
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`not previously relied on because they would not be prior art under a 1981 priority
`
`date, became applicable as prior art to the ’635 patent under a 1987 priority date.
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`Apple could not have anticipated that PMC would rely on arguments based
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`solely on the 1987 application when it filed its Petition in IPR2016-00754. Not
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`only had PMC repeatedly asserted that the Challenged Claims of the ’635 patent
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`are entitled to the 1981 priority date, but its arguments before the district court did
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`not indicate it would reverse course and rely on the 1987 CIP application. For
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`example, PMC argued for the first time in its Preliminary Response in IPR2016-
`
`00754 that “executable instructions” should be narrowly construed based upon a
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`disclosure that is present only in the 1987 CIP application, not the 1981
`
`application. Ex. 1039 at 18. But in the related district court action, PMC has never
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`
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`2
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`argued that “executable instructions” needs to be construed (Ex. 1015 at 2; Ex.
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`1038 at 58-89), let alone argued for the narrow construction it presented for the
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`first time in IPR2016-00754. Likewise, in its Preliminary Response in IPR2016-
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`00754, PMC exclusively cites to portions of its 1987 specification to support what
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`it alleges is within the scope of an “encrypted digital information transmission …
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`unaccompanied by any non-digital information transmission.” Ex. 1039 at 16.
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`Apple acted reasonably in basing its IPR2016-00754 Petition on prior art that
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`predates the alleged 1981 priority date.
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`Ultimately, PMC is attempting to save its claims by taking inconsistent
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`positions on the priority date of the ’635 patent and the scope of the claims. On the
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`one hand, PMC is attempting to avoid years of prior art by claiming priority to the
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`earlier 1981 application. On the other hand, PMC is attempting to use the later
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`disclosure of the 1987 CIP to selectively argue for a narrow application of the
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`claims. Apple could not have anticipated PMC’s tactics, and asks the Board to
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`fully consider the present IPR Petition, which is specifically targeted to include
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`Grounds based on references that are prior art to the 1987 priority date. Justice will
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`not be served by limiting Apple to filing an IPR Petition based only on PMC’s
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`alleged 1981 priority date, while allowing PMC to take inconsistent positions
`
`about the date to which the claims of the ’635 patent are entitled to claim priority.
`
`Apple files this Petition so that in the event the Board accepts PMC’s arguments
`
`
`
`3
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
`
`premised upon the 1987 CIP, PMC is not rewarded for its gamesmanship.
`
`Apple has acted diligently between receiving PMC’s Preliminary Response
`
`in IPR2016-00754 on June 24, 2016, and filing the present IPR Petition just over
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`one month later. Apple further would be willing to accelerate its deadlines in this
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`proceeding to align it with IPR2016-00754, to the extent that would simplify
`
`matters or ease the burden on the Board.
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`II.
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`PRIORITY DATE OF THE CHALLENGED CLAIMS
`
`PMC has previously alleged that the claims of the ’635 patent are entitled to
`
`the November 3, 1981 priority date of U.S. Patent No. 4,694,490 (“the ’490
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`patent”). Ex. 1019 at 6; Ex. 1036 at 7-8; Ex. 1032 at 1-2, 22, 40; Ex. 1034 at 2-4.
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`To obtain the benefit of the priority date of an earlier application, the claims of the
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`’635 patent must meet the requirements of 35 U.S.C. § 120. Section 120 permits a
`
`patent application to rely on the filing date of an earlier application “only if the
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`disclosure of the earlier application provides support for the claims of the later
`
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA,
`
`Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297
`
`(Fed. Cir. 1995)). Claims which depend on “[s]ubject matter that arises for the first
`
`time in [a] CIP application do[] not receive the benefit of the filing date of the
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`parent application.” Id. (quoting Augustine Med., Inc. v. Gaymar Indus., Inc., 181
`
`F.3d 1291, 1302-03 (Fed. Cir. 1999)).
`
`
`
`4
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`For the reasons explained below, the Challenged Claims of the ’635 patent
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`are not supported by the disclosure of the ’490 patent based on PMC’s arguments
`
`in IPR2016-00754, and are therefore not entitled to a priority date earlier than
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`September 11, 1987, the filing date of the CIP application which issued as U.S.
`
`Patent No. 4,965,825.
`
`A. Claim 13 Is Not Entitled To The November 3, 1981 Priority Date
`of the ’490 Patent
`
`Claim 13 of the ’635 patent is not entitled to the November 3, 1981 priority
`
`date of the ’490 patent, as PMC has interpreted this claim. The portion of Claim 13
`
`which recites “signals … embedded with executable instructions,” as PMC has
`
`construed this limitation in its Preliminary Response in IPR2016-00754, is not
`
`supported by the 1981 specification of the ’490 patent. Ex. 1003 at Claim 13.
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`The ’490 patent does describe “signals embedded in programs” (Ex. 1004 at
`
`4:5-6) and the general notion of passing “operating instructions to [] equipment”
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`(Ex. 1004 at 12:11-12). However, PMC argued in its Preliminary Response in
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`IPR2016-00754 that “[a] POSITA would understand that the term ‘executable
`
`instructions’ means ‘instructions of a computer program that cause a computer to
`
`carry out operations on the computer according to the instructions.’” Ex. 1039 at
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`18. In support of this interpretation, PMC cited portions of the ’635 patent which
`
`describe the generation, transmission, receipt, and execution of “a particular
`
`PROGRAM.EXE output file that is said program instruction set.” See id.; Ex. 1003
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`
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`at 187:49-60. There is no analogous disclosure in the ’490 patent, and no
`
`disclosure whatsoever of embedded executable instructions as construed by PMC.
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`Ex. 1001 ¶ 82.
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`B. Claims 18, 20, 32, and 33 Are Not Entitled To The November 3,
`1981 Priority Date of the ’490 Patent
`
`Claims 18, 20, 32, and 33 of the ’635 patent are not entitled to the November
`
`3, 1981 priority date of the ’490 patent, as PMC has sought to apply these claims.
`
`Each of these claims recites “receiving at least one encrypted digital information
`
`transmission … unaccompanied by any non-digital information transmission” or
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`“receiving one or more encrypted digital
`
`information
`
`transmissions …
`
`unaccompanied by any non-digital information transmission.” Ex. 1003 at claims
`
`18, 20, 32, 33. But the ’490 patent never describes the negative limitation that
`
`transmissions are “unaccompanied by any non-digital information transmission.”
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`Ex. 1001 ¶¶ 83-87. Nor does it provide any reason why one would send or receive
`
`such a transmission. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
`
`(Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the
`
`specification describes a reason to exclude the relevant limitation.”).
`
`The ’490 patent does describe receiving a “recipe in encoded digital form,”
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`and that this recipe is received via a cable television channel. Ex. 1004 at 20:28-37.
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`At the time of the ’490 patent, a PHOSITA would have known that digital data
`
`transmitted over a cable television channel would have been embedded in an
`
`
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`analog NTSC transmission. Ex. 1001 ¶ 84. Indeed, the ’490 patent explains that the
`
`techniques of the purported invention “employ signals embedded in programs” and
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`that “[i]n television they may appear on one line in the video portion of the
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`transmission, or on a portion of one line, or on more than one line, and will
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`probably lie outside the range of the television picture displayed on a normally
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`tuned television set.” Ex. 1004 at 4:5-6, 4:18-22.
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`Absent disclosure that the encrypted recipe is transmitted as a “full-channel”
`
`digital transmission, which by definition is an entirely digital information
`
`transmission, a PHOSITA would have understood the information transmission to
`
`be accompanied by conventional analog video programming, and thus not
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`“unaccompanied by any non-digital information transmission.” Ex. 1001 ¶ 84. In
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`an attempt to overcome prior art, PMC argued in its Preliminary Response in
`
`IPR2016-00754 that “[t]his limitation is not satisfied by the receiving of an analog
`
`transmission that includes digital signals, because such a transmission includes
`
`analog components” and that “it has been understood for many decades that analog
`
`transmissions with embedded digital data is not within the ambit of ‘digital’
`
`transmissions,” undermining PMC’s priority argument. Ex. 1039 at 16-17.
`
`The ’490 patent also describes, in a separate embodiment, “a digital
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`information channel,” but does not describe receiving encrypted digital
`
`information over this channel, nor does the relevant figure depict a decryptor
`
`
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`attached thereto. See Ex. 1004 at 19:31-37, Fig. 6C. It is not sufficient for PMC to
`
`argue for the purposes of written description to support a priority claim that such
`
`modifications may have been obvious to a PHOSITA. See Lockwood v. Am.
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`Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) (“Entitlement to a filing
`
`date does not extend to subject matter which is not disclosed, but would be obvious
`
`over what is expressly disclosed. It extends only to that which is disclosed.”).
`
`Rather, Section 112 “requires that the written description actually or inherently
`
`disclose the claim element.” PowerOasis, 522 F.3d at 1306-07 (citing TurboCare
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`Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111,
`
`1118-20 (Fed. Cir. 2001)).
`
`A third embodiment of the ’490 patent describes transmitting to a signal
`
`processor an encrypted book which has been stored on laser discs “[u]sing
`
`conventional laser videodisc equipment and techniques, well known in the art.” Ex.
`
`1004 at 21:10-43. But nothing in the ’490 patent indicates to a PHOSITA that these
`
`books are encoded in a digital format. Ex. 1001 ¶ 87. By comparison, the recipe of
`
`the earlier embodiment is described as being “in encoded digital form.” Ex. 1004 at
`
`20:28-37. In contrast, a PHOSITA would have known that, at the filing date of the
`
`’490 patent, data was stored on and transmitted from conventional laser videodiscs
`
`in analog form, not digital form. Ex. 1001 ¶ 87; Ex. 1047 at 2; Ex. 1048 at 329-30.
`
`In addition, Claims 18 and 33 recite, respectively, “locating code” and
`
`
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`“selecting, by processing selection criteria, a first signal of said plurality of signals
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`including downloadable code,” and both recite “decrypt[ing] in a specific fashion
`
`on the basis of said [downloadable] code.” Ex. 1003 at Claim 18, 33. In neither
`
`claim are these limitations supported by the disclosure of the ’490 patent.
`
`The
`
`’490 patent does describe
`
`that “signals
`
`that enable
`
`the
`
`decrypter/interrupter, 101, to decrypt and/or transfer programing uninterrupted …
`
`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.” Ex. 1004
`
`at 13:13-32; see also id. at 8:25-40 (“The controller, 20, … can tell decrypter, 10,
`
`when and how to change decryption patterns, fashions, and techniques.”). But such
`
`signals are not “code” as that term is used in Claims 18 and 33. Ex. 1001 ¶ 89.
`
`Also, while the ’490 patent uses the word “code” in a number of places,
`
`these are references to “a code or codes necessary for the decryption of the
`
`transmission,” an altogether different concept than “code,” as that term is used in
`
`Claims 18 and 33. Ex. 1004 at 13:31-32. For example, when the ’490 patent
`
`describes that “a signal word” is decrypted and transferred to a second decryptor
`
`“to serve as the code upon which [that decrytor] will decrypt” or “to serve as the
`
`code basis for [further decryption],” it is referring to “a code or codes necessary
`
`for the decryption of the transmission,” not “code.” Ex. 1004 at 20:28-43, 21:20-
`
`67; Ex. 1001 ¶ 90.
`
`
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`In addition, the ’490 patent does not describe “selecting, by processing
`
`selection criteria, a first signal of said plurality of signals including downloadable
`
`code,” as recited by Claim 33. By contrast, the ’635 patent describes that receiver
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`stations “select [] messages that contain [operating system] instructions of specific
`
`relevance.” Ex. 1003 at 265:40-49. There is no analogous description in the ’490
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`patent, and no disclosure whatsoever of selecting code by processing selection
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`criteria. Ex. 1001 ¶ 91.
`
`To the extent PMC’s arguments regarding Claims 18, 20, 32, and 33 are
`
`accepted, these claims are not supported by the ’490 patent.
`
`C. Claims 21, 28, 29, and 30 Are Not Entitled To The November 3,
`1981 Priority Date of the ’490 Patent
`
`Claims 21, 28, 29, and 30 of the ’635 patent are not entitled to a November
`
`3, 1981 priority date of the ’490 patent, as PMC has sought to apply these claims.
`
`The specification of the ’490 patent does not support the elements of Claim 21
`
`which recite “decrypting under first processor control a first portion of said
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`encrypted materials in said transmission” and “decrypting under second processor
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`control a second portion of said encrypted materials.” Ex. 1003 at Claim 21.
`
`Though the ’490 patent describes decrypting a received transmission using two
`
`decryptors, in the embodiments of the ’490 patent the decryption is carried out
`
`under the control of a single processor, rather than two processors. See Ex. 1004 at
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`14:28-32, 21:20-67. This is evident in the cited figures, 4D and 6E, annotated
`
`
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`10
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`below to highlight the decryptors and controlling processors:
`
`
`
`
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`Ex. 1001 ¶ 92. In an attempt to overcome prior art, PMC argued in its Preliminary
`
`Response in IPR2016-00754 that “the mere passing of data” is not “controlling the
`
`decryption process.” Ex. 1039 at 48. To the extent PMC’s arguments regarding
`
`Claim 21 are accepted, this claim is not supported by the ’490 patent.
`
`Because Claims 28-30 depend from Claim 21, all three claims incorporate
`
`these elements of Claim 21, and thus are likewise not supported by the ’490 patent.
`
`D. Claims 3, 4, And 7 Are Not Entitled To The November 3, 1981
`Priority Date of the ’490 Patent
`
`Claims 3, 4, and 7 of the ’635 patent are not entitled to the November 3,
`
`1981 priority date of the ’490 patent, as PMC has sought to apply these claims. As
`
`an initial matter, each of these claims recites the term “programming.” Ex. 1003 at
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`Claim 3 (“identifying a unit of programming”; “transferring said unit of
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`programming”), Claim 4 (“said programming further includes encrypted video”),
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`Claim 7 (“a transmission channel including said programming”). The term
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`“programming” is defined in both the ’490 and ’635 patents, with its meaning
`
`expanding significantly in the ’635 patent. Specifically, the ’490 patent defines
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`programming as “everything transmitted over television or radio intended for
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`communication of entertainment or to instruct or inform” (Ex. 1004 at Abstract),
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`whereas the ’635 patent defines programming as “everything that is transmitted
`
`electronically to entertain, instruct or inform …” (Ex. 1003 at 6:31-34). Indeed,
`
`PMC has not disputed that “the 1981 Specification [i.e., the ’490 patent
`
`specification] describes the term ‘programming’ differently than the 1987
`
`Specification.” Ex. 1037 at 33. Because the broader 1987 definition of
`
`“programming” expands the scope of the subject matter, Claims 3, 4, and 7 are not
`
`entitled to the 1981 priority date as a matter of law. See PowerOasis, 522 F.3d at
`
`1310-11 (where a claim term would receive a broader or more inclusive claim
`
`construction in view of the later specification, the claim is not entitled to the
`
`benefit of the earlier filing date). The Board came to the same conclusion in the
`
`Final Written Decision of a related IPR addressing the same issue in the same
`
`PMC specifications, IPR2014-01527. Ex. 1037 at 34.
`
`PMC has argued previously that the patent abstract cannot be used to
`
`interpret the claims (Ex. 1040 at 14), but this position is explicitly contradicted by
`
`Federal Circuit law, which rejects the argument that courts are (or ever have been)
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`prohibited from relying on the abstract. Hill-Rom Co. v. Kinetic Concepts, Inc.,
`
`209 F.3d 1337, 1341 n. 1 (Fed. Cir. 2000) (“We have frequently looked to the
`
`abstract to determine the scope of the invention.”).
`
`In addition, there is no support in the ’490 patent for PMC’s interpretation of
`
`the limitation of Claim 3 that recites “receiving a control signal which operates at
`
`the remote transmitter station to control the communication of a unit of
`
`programming and one or more first instruct signals and communicating said
`
`control signal to said remote transmitter station.” Ex. 1003 at Claim 3. PMC
`
`argued in its Preliminary Response in IPR2016-00754 that “[t]he plain meaning of
`
`‘communicating said control signal to said remote transmitter station’ is
`
`‘communicating a control signal to the remote transmitter station from a location
`
`different from the remote transmitter station.’” Ex. 1039 at 17. Under PMC’s
`
`interpretation, the entirety of the limitation would require receiving a control signal
`
`at “a location different from the remote transmitter station” and communicating it
`
`to the remote transmitter station. But there is no disclosure of this element as
`
`construed by PMC in the ’490 patent, which describes only that such control
`
`signals are received at the remote transmitter station. See Ex. 1004 at 11:18-31; Ex.
`
`1001 ¶ 95.
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`III.
`
`IDENTIFICATION OF CHALLENGE – 37 C.F.R. § 42.104(B)
`A.
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested
`Apple requests IPR of the Challenged Claims of the ’635 patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based
`IPR of the Challenged Claims is requested in view of the prior art listed
`
`below. As explained in Section II, the Challenged Claims are not supported by the
`
`’490 patent, filed on November 3, 1981, and are at best entitled to a September 11,
`
`1987 priority date, based on PMC’s arguments in IPR2016-00754.
`• U.S. Patent No. 4,817,140 to Chandra et al. (“Chandra”) (Ex. 1041), filed
`November 5, 1986. Chandra is prior art under 35 U.S.C. § 102(e).
`• Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-13,
`1986 (“Nachbar”) (Ex. 1042), published June 1986. Nachbar is prior art under
`35 U.S.C. § 102(b).1
`• U.S. Patent No. 4,866,770 to Seth-Smith et al. (“Seth-Smith”) (Ex. 1043), filed
`August 14, 1986. Seth-Smith is prior art under 35 U.S.C. § 102(e).
`• U.S. Patent No. 4,536,791 to Campbell et al. (“Campbell”) (Ex. 1044), filed
`November 27, 1981, issued August 20, 1985. Campbell is prior art under 35
`U.S.C. § 102(b).
`
`
`1 Nachbar is a § 102(b) prior art reference used to invalidate claims of a related
`
`patent in IPR2014-01528.
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`Apple requests IPR of the Challenged Claims on the following grounds:
`
`Ground
`1
`
`Proposed Statutory Rejections for the ’635 Patent
`Chandra anticipates Claims 13, 18, 20, and 32 under 35 U.S.C. § 102.
`
`2
`
`3
`
`4
`
`Chandra, in view of Nachbar, renders obvious Claim 33 under 35 U.S.C.
`§ 103.
`Seth-Smith anticipates Claims 4, 7, 21, and 28-30 under 35 U.S.C. § 102.
`
`Campbell renders obvious Claim 3 under 35 U.S.C. § 103.
`
`C.
`37 C.F.R. § 42.104(b)(3): Claim Construction
`A claim in an IPR is given its broadest reasonable interpretation (“BRI”) in
`
`light of the specification. 37 C.F.R. § 42.100(b).
`
`(1)
`
`“executable instructions” (Claim 13)
`
`Apple submits, for purposes of this IPR only, that the BRI of “executable
`
`instructions” is “instructions that can be executed” and is not limited to instructions
`
`of a “computer program” that are limited to causing “a computer to carry out
`
`operations on the computers.” This construction is consistent with the plain
`
`meaning of the phrase in the context of the ’635 patent.
`
`In
`
`its Preliminary Response
`
`in IPR2016-00754, PMC argued
`
`that
`
`“executable instructions” means “instructions of a computer program that cause a
`
`computer to carry out operations on the computer according to instructions.” Ex.
`
`1039 at 18. PMC cited only to portions of the 1987 specification to allegedly
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`support its narrow construction, and did not and cannot attempt to support its
`
`construction with any support from the 1981 specification, to which PMC
`
`previously alleged priority. Id. The 1981 specification makes no reference to
`
`“computer programs.” Ex. 1004. Rather, it refers to “instructions that disable
`
`decryptor/interruptor,
`
`107”
`
`and
`
`“pass[ing]
`
`instructions
`
`to multiple
`
`decryptor/interrupters.” Id. at 14:17-27, 14:33-37.
`
`The additional evidence relied on by PMC to support its narrow construction
`
`is similarly unavailing. PMC’s reliance on a dictionary published in 1984, years
`
`after its previously alleged priority date, and for the altogether different term
`
`“execution (software),” as somehow providing a definition for the claim term
`
`“executable instructions” is inapposite. Likewise, PMC’s exclusive reliance on
`
`portions of the 1987 specification that refer to “program instructions” and
`
`“program code” has no bearing on how the term “executable instructions” should
`
`be construed, and does not support altering the plain meaning of the term. At
`
`bottom, PMC’s attempt to import “computer program” into the construction and to
`
`limit the term to causing “a computer to carry out operations on the computer” is
`
`not the broadest reasonable construction.
`
`(2)
`
`“encrypted digital information transmission … unaccompanied
`by any non-digital information transmission” (Claims 18, 20, 32,
`33)
`
`Apple submits, for purposes of this IPR only, that the BRI of an “encrypted
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,559,635
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`digital information transmission … unaccompanied by any non-digital information
`
`transmission” is “a digital information transmission, unaccompanied by any non-
`
`digital information transmission, at least a portion of which is encrypted.” This
`
`construction is consistent with the plain meaning of the phrase in the context of the
`
`’635 patent.
`
`The entire digital information transmission does not need to be encrypted for
`
`it to be an “encrypted digital information transmission.” The parent ’490 patent, to
`
`which PMC previously asserted the Challenged Claims are entitled to priority,
`
`explains that “Encrypted transmissions may be only partially encrypted. For
`
`example, only the video portion of the transmission may be encrypted. The audio
`
`portion may remain unencrypted.” Ex. 1004 at 14:1-14:4. Thus, as long as some
`
`digital information is encrypted, it is an encrypted digital information transmission.
`
`The plain language of the claim does not require that the transmission be of only
`
`encrypted information.
`
`Similar to Apple’s proposed construction, PMC previously proposed in the
`
`district court that “encrypted digital information transmission” should be construed
`
`as “signals sent or passed from one location to another location to convey digital
`
`information which is in encrypted form” and that “unaccompanied by any non-
`
`digital information transmission” should be construed as “a transmission of
`
`digitally encoded content only, absent any content encoded in an analog format.”
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`17
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`Petition for Inter Partes Revi
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