`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`
`
`DECLARATION OF ANTHONY J. WECHSELBERGER
`IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE &
`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
`
`
`
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 1
`
`
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`Opinions In Support of Petitioner’s Reply .................................................. 2
`A.
`The Challenged Claims Are Not Supported by the Written
`Description of the ’490 Patent ............................................................... 2
`The Challenged Claims Are Unpatentable. ........................................... 6
`B.
`The Substitute Claims Are Not Supported By The ’413
`Application ..................................................................................................... 9
`A.
`Substitute Claim 41 Is Not Supported by the Specification. ................ 9
`B.
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification. ....................................................................................... 10
`Substitute Claims 44-48 Are Not Supported by the
`Specification. ....................................................................................... 17
`III. Substitute Claim 41-48 Are Unpatentable Over The Prior Art .............. 21
`A.
`Substitute Claim 41 Is Obvious Over Campbell ................................. 21
`B.
`Substitute Claims 42 and 43 Are Obvious Over Seth-Smith .............. 24
`C.
`Substitute Claims 44-48 Are Obvious Over Chandra ......................... 33
`IV. Conclusion .................................................................................................... 39
`
`
`C.
`
`i
`
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 2
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`I, Anthony J. Wechselberger, do hereby declare as follows:
`
`1.
`
`I previously prepared and executed a declaration (Ex. 1001) in IPR2016-
`
`01520. I submit this declaration in support of Petitioner Apple’s opposition
`
`to Patent Owner PMC’s Contingent Motion to Amend. This declaration also
`
`responds to arguments raised in PMC’s Patent Owner Response (Paper 17)
`
`and Dr. Weaver’s declaration (Ex. 2023).
`
`2.
`
`In preparing this declaration, I reviewed and considered the following:
`
`• The Decision Instituting Inter Partes Review (Paper 7)
`• PMC’s Patent Owner Response (Paper 17)
`• Declaration of Dr. Weaver (Ex. 2023)
`• Deposition Testimony of Dr. Weaver (Ex. 1051)
`• Declaration of Dr. Dorney (Ex. 2223)
`• Prior art and state of the art references cited herein
`• Additional materials cited in Sections I-III
`This material is in addition to the material I reviewed and considered
`
`while preparing my original declaration.
`
`
`
`
`
`1
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 3
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`I.
`
`3.
`
`OPINIONS IN SUPPORT OF PETITIONER’S REPLY
`A. The Challenged Claims Are Not Supported by the Written
`Description of the ’490 Patent
`1.
`Claims 18, 20, 32, and 33 Are Not Supported By the Written
`Description of the ’490 Patent
`(1) Telephone Link
`I understand that PMC relies on the ’490 Patent’s description that a signal
`
`processor could “telephone a remote site to get an additional signal or
`
`signals necessary for the proper decryption and/or transfer of incoming
`
`programing transmissions” in support of this limitation. In contrast to
`
`Chandra, the ’490 Patent does not describe that encrypted information is
`
`received over a telephone line. Not everything sent over a telephone line is
`
`encrypted. The ’490 Patent does state that “the signal or signals needed to
`
`operate decryptor/interruptor, 115, correctly may be on a separate channel of
`
`programing that is, itself, encrypted in transmission.” However, that
`
`embodiment describes receiving
`
`information via a cable
`
`television
`
`transmission, not over a telephone line. (Ex. 1004 at 15:8-19.)
`
`4.
`
`The telephone line disclosure that PMC relies on also fails to support other
`
`limitations from claims 18, 20, 32, and 33. For example, claims 32 and 33
`
`respectively require that a “control signal” or “downloadable code” is
`
`received in the “encrypted digital information transmission” and these
`
`signals control the decryption of a second signal received in that
`
`2
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 4
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`transmission. The 1981 specification does not describe that anything
`
`encrypted is received over the telephone line, let alone that two signals, one
`
`of which controls the decryption of the other, are received. Similarly, Dr.
`
`Weaver argues the the signal received over the telephone line discloses the
`
`“code” of claim 18.” (Ex. 2023 ¶209.) However, the information that Dr.
`
`Weaver contends is decrypted on the basis of that code, which must have
`
`been received in the encrypted digital information transmission, is never
`
`described as being received via a telephone line. (Ex. 1004 at 13:13-32.)
`
`(2) Wall Street Week (Fig. 6C) and Julia Child (Fig. 6D)
`Examples
`Dr. Weaver’s argument in support of his contention that, in the “primary”
`
`5.
`
`embodiment of the Julia Child example, the encrypted digital recipe would
`
`have been received over a “digital information channel” is technically
`
`unsound. Dr. Weaver states that “[c]able converter boxes did not perform
`
`NTSC demodulation; they converted the variable input carrier to a fixed
`
`output carrier” and “cable converter box 222 simply converted the carrier
`
`frequency of the transmission received by the box to … a standard
`
`frequency.” (Ex. 2023 ¶183.) He argues, on the basis of that premise, that “if
`
`the output transmission from cable converter 222 was an all-digital
`
`information transmission, it follows that the input transmission tuned by
`
`3
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 5
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`cable converter 22[2] was an all-digital information transmission.” (Ex. 2023
`
`¶183.)
`
`6.
`
`Dr. Weaver’s premise is incorrect and so, as a result, is his conclusion.
`
`Digital data transmitted over cable systems such as that in the ’490 Patent,
`
`whether embedded in conventional television programming or on a “digital
`
`data channel,” would have been modulated onto an analog carrier signal. In
`
`the 1980s (as today), conventional cable systems did not transmit digital
`
`baseband signals. A demodulator or digital detector would have been
`
`necessary to extract the digital data from the carrier signal in order to supply
`
`the “one digital data ch.” signal to microcomputer 205. If there were no
`
`demodulator, the information on the digital data channel would remain
`
`inaccessible to the microcomputer.
`
`7.
`
`Since the information received over the digital data channel at cable
`
`converter box 222 is intended to be output as a digital signal, a person of
`
`ordinary skill in the art would have understood that cable converter box 222
`
`included demodulation or digital detection circuitry. That same circuitry
`
`would be equally capable of extracting digital data embedded
`
`in
`
`conventional television programming. Given this, there is simply no reason
`
`to assume that the encrypted recipe of the Julia Child example would, or
`
`must, be received over the digital data channel of Fig. 6C.
`
`4
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 6
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`8.
`
`I note Dr. Weaver states that he “used cable converter boxes in this
`
`timeframe.” (Ex. 2023 ¶183.) Not only did I also use cable converter boxes
`
`in this timeframe, at Oak Communications in this period I was personally
`
`involved in the design of a variety of cable set top converter boxes that
`
`included demodulation/remodulation circuits.
`
`(3) How to Grow Grass Example (Fig. 6E)
`PMC and Dr. Weaver mischaracterize the teachings of the Marsh article.
`
`9.
`
`(Response at 38-39.) The portions of the Marsh article that PMC points to in
`
`its Response are from a section relating to Philips’ experimental “optical
`
`digital disc technology.” (Ex. 1047 at 13-14.) That technology is entirely
`
`distinct from the “optical videodisc” technology described in the section
`
`from which I quoted. (Ex. 1047 at 8-9.) The two technologies require
`
`different discs, different encoding and decoding methodologies, and
`
`different equipment. (Ex. 1047 at 8-14.)
`
`10. There is nothing in the ’490 Patent that would indicate to a person of
`
`ordinary skill in the art that the inventors meant to refer to this experimental
`
`Philips technology. Rather, the patent describes using “conventional” laser
`
`videodisc equipment and techniques, “well known in the art.” (Ex. 1004,
`
`21:10-15.) It is the optical videodisc technology that would have been
`
`considered conventional at the time, as I testified at my deposition.
`
`5
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 7
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`11. The Marsh article itself supports this view as it explains that only the
`
`“DiscoVision disc” used in consumer optical videodisc systems was useful
`
`for the mass distribution of films, the primary use of conventional videodisc
`
`systems. (Ex. 1047 at 8.) Moreover, Marsh states that “no computer
`
`manufacturer is known to have integrated an optical digital disc with its
`
`systems.” (Ex. 1047 at 14.) A person of ordinary skill in the art would not
`
`have considered such a system “conventional” or “well known.”
`
`B.
`
`The Challenged Claims Are Unpatentable.
`1.
`It Would Have Been Obvious To A PHOSITA To Modify
`Chandra In View Of Nachbar
`12. PMC and Dr. Weaver’s argument that the proposal to provide modifications
`
`to the firmware of Chandra would open the system to malicious tampering
`
`by third parties is incorrect. A person of ordinary skill in the art would have
`
`understood that only the manufacturer of a given system would be entitled
`
`(allowed) to provide firmware updates. Additionally, it is incorrect that
`
`saving security firmware in non-volatile RAM would “leave the security
`
`algorithm and encryption keys completely exposed to manipulation.”
`
`Chandra explains that the non-volatile RAM is protected from unauthorized
`
`access:
`
`[T]he higher privilege level, implemented in the ROM
`resident firmware, controls access to the non-volatile
`
`6
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 8
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`RAM 153 …. This structure in the coprocessor prevents a
`software vendor from writing a monitor which would run
`on the coprocessor to access the … non-volatile memory
`(including
`the decryption keys) and make
`that
`information available to the host 10.
`
`(Ex. 1041 at 18:52-60.) The system’s manufacturer would have the
`
`capability to access the non-volatile RAM in order to provide system
`
`updates. A third party would not.
`
`2.
`
`Campbell Teaches “a code or datum identifying a unit of
`programming to be transmitted by the remote transmitter
`station”
`13. PMC and Dr. Weaver’s argument that “the program identification code 204
`
`does not identify the television program” is wrong. A person of ordinary
`
`skill in the art would understand that the “program identification code”
`
`identifies a program, as stated in its name. Campbell does state that the
`
`“program identification code 204 … indicate[s] whether the television
`
`program in question is a special event.” (Ex. 1044, 13:9-14.) To a person of
`
`ordinary skill in the art that would indicate additional functionality. If the
`
`only purpose were to indicate the presence of special event programming, a
`
`single-bit flag would be sufficient, rather than a program identification code.
`
`7
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 9
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`3.
`
`It Would Have Been Obvious To A PHOSITA To Modify
`The System Of Campbell
`14. PMC and Dr. Weaver’s argument that there would be no benefit to moving
`
`functions of the PCS to the remote computer because “Campbell’s system
`
`already allowed the ability to control the head-end stations using the remote
`
`computer” rests on incorrect assumptions. Most of their criticisms are
`
`directed to modifications that I have not suggested would be made. I have
`
`not suggested that all functions of the PCS would be moved to the remote
`
`computer. Those functions that deal with subscriber specific information,
`
`where there is a benefit to distributing the workload, would remain at the
`
`individual head ends.
`
`15. What I have suggested is that the “channel control word” would be
`
`generated at the remote computer, rather than at each individual head end.
`
`The channel control word generated by the PCS is the same at every head
`
`end station. There is no question that generating the channel control word
`
`once at the remote computer, rather than at each head end, would have
`
`substantial benefits. At the very least, generating the channel control word
`
`once rather than multiple times is more efficient. Generating the channel
`
`control word once also reduces the opportunities for errors to arise and
`
`makes it more likely that any errors that do arise will be identified.
`
`Moreover, generating the channel control word in one location simplifies the
`
`8
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 10
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`process of making any necessary changes. PMC and Dr. Weaver fail to
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`consider this simple modification, instead only considering a larger set of
`
`modifications not proposed.
`
`16. PMC and Dr. Weaver also mischaracterize the teachings of Campbell when
`
`they argue that “the PCS must receive the descrambler code from each head-
`
`end unit’s HVP.” In fact, what Campbell says is that “preferably” the
`
`descrambling code would be generated by the HVP unit. (Ex. 1044 at 13:21-
`
`24.) That it is “preferable” to generate the descrambling code in the HVP
`
`indicates that it is not necessary. A person of ordinary skill in the art would
`
`have understood that, alternatively, a scrambler/descrambler code could be
`
`distributed to each head ends by the remote computer, along with the rest of
`
`the data in the channel control word, to provide centralized control.
`
`II. THE SUBSTITUTE CLAIMS ARE NOT SUPPORTED BY THE ’413
`APPLICATION
`A.
`Substitute Claim 41 Is Not Supported by the Specification.
`17. Substitute claim 41 is not supported by the ’413 Application. Substitute
`
`claim 41 recites “receiving a control signal … and communicating said
`
`control signal to said remote transmitter station.” The claim requires two
`
`distinct steps: (1) receiving a control signal at a first location and (2)
`
`communicating that control signal from the first location to the remote
`
`transmitter station. The disclosure cited by PMC does not even attempt to
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`9
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 11
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`support these two distinct steps, and no such disclosure exists. At most, the
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`cited disclosure supports the communicating step of the limitation. (Mot. at
`
`B8-11.)
`
`18. Substitute claim 41 also recites “receiving at said remote transmitter station
`
`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” and “transmitting from said remote transmitter station an
`
`information transmission comprising … said one or more second instruct
`
`signals.” PMC identifies “incorporate-and-retain-Specific-WSW-Enabling-
`
`message instructions” as the “one or more second instruct signals” received
`
`at the remote transmitter station. (Mot. at B13.) These instructions are not
`
`transmitted by the remote transmitter station. Rather, the incorporate-and-
`
`retain-Specific-WSW-Enabling-message
`
`instructions cause
`
`the remote
`
`transmitter station to “generate a Specific-WSW-Enabling-message.” (Ex.
`
`2208 at 433:9-15.) It is this Specific-WSW-Enabling-message, which is not
`
`received at the remote transmitter station as required by the claim, that is
`
`transmitted by the remote transmitter station to provide a decryption key for
`
`the encrypted programming. (Ex. 2208 at 433:9-15, 438:19-35, 439:1-27.)
`
`B.
`
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification.
`
`10
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 12
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`19. Substitute claims 42 and 43, which depend from claim 2, are not supported
`
`by the ’413 Application. Claim 2 recites “receiving programming, said
`
`programming having a first encrypted digital control signal portion and an
`
`encrypted digital
`
`information portion.” PMC
`
`identifies “local-cable-
`
`enabling-message (#7)” as the “first encrypted digital control signal
`
`portion.” (Mot. at B2-5.) The ’413 Application does not describe local-
`
`cable-enabling message (#7) as encrypted. In fact, Dr. Dorney himself
`
`previously submitted a declaration that explicitly stated that “[l]ocal-cable-
`
`enabling-message (#7) is unencrypted digital information.” (Ex. 1059 at 12,
`
`23, 34 (emphasis added).) Local-cable-enabling message (#7) does not
`
`support the claimed “encrypted digital control signal portion.” The ’413
`
`Application also fails to describe the decryption of local-cable-enabling
`
`message (#7), leaving unsupported the limitation of Claim 2 that requires
`
`“decrypting said first encrypted digital control signal portion of said
`
`programming” and that of claim 43 which recites “a second control signal
`
`portion used to decrypt the first control signal portion.”
`
`20. As its name implies, local-cable-enabling message (#7) appears in example
`
`#7. PMC, however, cites disclosures pertaining to the “first message of
`
`example #4.” (Mot. at B1-3 (citing Ex. 2208 at 198:10-29), B4-5 (citing
`
`198:10-199:2, 205:5-13, 206:32-34), B26-28 (citing 198:10-199:2).) In
`
`11
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 13
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`doing so, PMC improperly equates local-cable-enabling message (#7) and
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`the first message of example #4, relying on a sentence that states that a
`
`matrix switch has the capacity “to cause the transfer of the information of
`
`[local-cable-enabling message (#7)] to controller, 20, in the fashion in
`
`which information of first message of example #4 is transferred … to
`
`decryptor, 39K.” (Mot. at B1-3 (citing Ex. 2208 at 291:33-292:6), B4-5
`
`(same).) This language simply explains the role “matrix switch, 39I” plays
`
`in the transit of the two messages. It does not support equating local-cable-
`
`enabling message (#7) and the first message of example #4, as PMC
`
`suggests, particularly given that the sentence states that the information of
`
`local-cable-enabling message (#7) is transferred to “controller, 20,” unlike
`
`the first message of example #4, which is transferred to “decryptor, 39K.”
`
`(Ex. 2208 at 291:33-292:6.) The language cited by PMC does not state or
`
`suggest that local-cable-enabling message (#7) is encrypted or decrypted.
`
`Because Claim 2 is not supported by the disclosure of the ’413 Application,
`
`Claims 42 and 43 which depend from Claim 2 are not supported either.
`
`21. Additionally, substitute claim 42 has been amended to require that “said
`
`programming further includes encrypted digital digital video.” I understand
`
`that PMC has previously asserted that static text or images, particularly
`
`teletext and closed captioning, are not within the ambit of “video.” The ’413
`
`12
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 14
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`Application does not enable as person of ordinary skill in the art to transmit
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`“digital video,” as PMC interprets the phrase, over conventional cable
`
`television channels. (Ex. 2208 at 288:30-289:21.) The ’413 Application does
`
`mention “so-called ‘digital video,’” but it does not define that phrase.
`
`Additionally, there is no disclosure of any circuits capable of processing
`
`digital video as PMC interprets the phrase. (Ex. 2208 at Figs. 2, 2A, 4.) The
`
`specification also lacks description of how the television signals containing
`
`such digital video are formatted or compressed for transmission over the
`
`conventional television distribution system.
`
`22. Reception and processing of analog television signals is technically different
`
`than reception and processing of digital television signals, as PMC interprets
`
`the phrase. Because of large differences in bandwidth requirements, the
`
`means used to transmit and receive digitally formatted television signals
`
`were not—and still are not—interchangeable with the means conventionally
`
`used to transmit analog television signals.
`
`23.
`
`In 1987, the conventional transmission standard approved by the FCC for in-
`
`home television viewing in the United States was NTSC television. All
`
`widely available televisions at that time were CRT displays with receivers
`
`designed to be used for viewing an NTSC compliant broadcast or cablecast
`
`transmission. As such, in the 1980s, the term digital television programming
`
`13
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 15
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`would not have been used in the same sense as we use that term today. It
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`was not until the 1990s that standards and technologies, such as MPEG-2,
`
`became sufficiently advanced to enable digital television as that term is used
`
`today.
`
`24.
`
`In 1987, a person of ordinary skill in the art would have understood that the
`
`broadcast of digitized television signals (as they are broadcast or cablecast
`
`today) was not practical, because the bandwidth reduction (compression)
`
`and digital signal processing technologies had not yet matured to meet
`
`transmission bandwidth constraints. For example, in the mid 1980s
`
`transmission of digitally formatted television signals at broadcast or network
`
`quality required transmission channel bit rates on the order of 30Mbps to
`
`45Mpbs, which could not be implemented for broadcast or cablecast
`
`applications which used standard 6MHz channels. (Ex. 1067 , pp. 104-107;
`
`Ex. 1068 (requires a 22 MHZ channel to carry the digital signal wherein 22
`
`MHZ bandwidth is almost 4 times that of a standard 6 MHz analog TV
`
`channel); Ex. 1069 at 5:18-23 (“Due to the limited bandwidth of the
`
`transmission channel, the scrambled digital video cannot be transmitted
`
`through the channel in digital form.”).) In fact, the FCC’s 1996 digital
`
`television broadcast standard (adopted nearly a decade after the alleged
`
`14
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 16
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`invention of the substitute claims) realizes a data throughput of only
`
`19.3Mbps per 6MHZ broadcast channel.
`
`25.
`
`It wasn’t until the 1990s that advances in digital signal processing and
`
`compression
`
`technologies allowed for
`
`the
`
`transmission of “digital
`
`television” as we understand the term today. Until June of 1990 every single
`
`proposed advanced television system concept before the FCC was an analog,
`
`or hybrid analog/digital system. In June 1990 General Instruments
`
`demonstrated their all-digital television encoding and decoding prototype
`
`system, which eventually changed the course of advanced television systems
`
`development, and in August of that year I was approached by General
`
`Instruments executives to be the project manager for this new technology
`
`called “DigiCipher.”
`
`26. Additionally, during the prosecution of a related patent, the examiner stated
`
`that Example #7, where digital video is mentioned several times, “provide[s]
`
`no clues as to how such digital television signals were actually handled and
`
`transmitted by Applicant’s invention.” (Ex. 1070 at 16.) The examiner
`
`explained that
`
`. . . the process of transmitting digital television signals
`through a transmission given medium was not equivalent
`to, and was not interchangeable with, the process used to
`transmit said same television signals through said same
`
`15
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 17
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`medium in an analog signal format; i.e. applicant’s
`original disclosure at least failed to disclose or describe
`the digital signal format which enabled the transmission
`of digitally formatted television signals in the manner
`that was disclosed by applicant.
`
`(Ex. 1070 at 15.)
`
`27. As I explained above, in 1987, transmission of digitally formatted television
`
`signals was known, but high quality video (referred to as broadcast or
`
`network quality) was achievable only under circumstances in which
`
`sufficient bandwidth could be devoted to the transmission of such signals.
`
`This required transmission channel bandwidths on the order of 30Mbps to
`
`45Mpbs, assuming extensive and expensive bit rate reduction processing
`
`was performed. Such channel bandwidth was not available in the
`
`“conventional television broadcast” received by the subscriber stations
`
`described in the PMC specifications. (Ex. 2208, Figs. 1-2, 19:5-20:20.) In
`
`fact, transmission of digitally formatted television signals to an end-user’s
`
`television receiver would require expensive and large equipment which was
`
`discouraged by the inventors. (Ex. 2208, 16:15-27.)
`
`28. Because the ’413 Application provides no direction or guidance or working
`
`examples, one skilled in the art, after reading the specification, could not
`
`16
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 18
`
`
`
`
`
`develop a system to transmit and receive digital video signals, as PMC
`
`interprets the phrase, without a great deal of experimentation.
`
`C.
`Substitute Claims 44-48 Are Not Supported by the Specification.
`29. Substitute claims 44-48 are not supported by the ’413 Application. PMC
`
`relies on the “Exotic Meals of India” embodiment for its supporting
`
`disclosure, identifying the “second SPAM message” embedded in that
`
`program as the claimed “transmission.” (Mot. at B31-33 (citing Ex. 2208 at
`
`473:3-13, 473:29-474:1, 476:34-477:29); B45-51 (same), B73-80 (same),
`
`B96-104 (same), B121-28 (same).) This embodiment does not include
`
`disclosure to support many of the claim limitations, as described below.
`
`1.
`
`“identifying a cipher algorithm from a plurality of
`preprogrammed cipher algorithms at said receiver station
`based on a received signal from external said receiver
`station” (substitute claims 44, 45, 47, 48)
`30. Each of substitute claims 44, 45, 47, and 48 recites some variation of the
`
`limitation “identifying a cipher algorithm from a plurality of preprogrammed
`
`cipher algorithms at said receiver station based on a received signal from
`
`external said receiver station.” The “Exotic Meals of India” embodiment
`
`does not reference cipher algorithms. Instead, PMC relies on the ’413
`
`Application’s statement that “the information of said second message can be
`
`encrypted and caused to be decrypted in any of the methods described
`
`above.” (Ex. 2208 at 478:1-5.)
`
`17
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 19
`
`
`
`
`
`31. However, PMC does not rely on the disclosure of an actual method from
`
`another embodiment in the ’413 Application. Instead, PMC devises its own
`
`method based on combination of disclosures from example #4 and example
`
`#7. Specifically, PMC argues that “the second message is encrypted with
`
`cipher algorithm C using cipher key Ca, as in Example #7, and the key Ca is
`
`transmitted in a message according to Example #4.” (Mot. at B32, B46, B74,
`
`B97, B122.) This is not described in the ’413 Application.
`
`32. Even PMC’s devised method fails to disclose the limitations of the claims.
`
`There is no reference to “cipher algorithms” in Example #4 or to selecting a
`
`cipher algorithm on the basis of a received signal. Rather, PMC argues
`
`“[u]se of decryption key G …, J, or Z indicates a different cipher algorithm
`
`than cipher algorithm A, B, or C.” (Mot. at B56; see also B114 (“decryptor
`
`39K decrypts using a particular cipher algorithm because key Z was used.”),
`
`B137 (same).) The identification of a particular key does not dictate or imply
`
`that a particular cipher algorithm is to be used. Portions of the ’413
`
`Application that PMC itself cites describe multiple decryption keys that
`
`work with the same cipher algorithm. (Mot. at B37 (citing Ex. 2208 at
`
`280:1-14, 440:1-10).)
`
`33. This deficiency is not cured by PMC’s references to example #7. PMC
`
`argues that, in that embodiment, “[t]he SPAM message contains the cipher
`
`18
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 20
`
`
`
`
`
`key Ca, which also indicates the cipher algorithm C should be used.” (Mot.
`
`at 9.) Cipher key Ca and cipher algorithm C are used to decrypt information
`
`received in an entirely separate transmission. (Ex. 2208 at 289:12-21, 291:9-
`
`19.) Thus, applying the method of example #7 in the context of the Exotic
`
`Meals of India embodiment requires PMC to assume an additional
`
`transmission not described anywhere in that embodiment.
`
`2.
`
`receiving an “encrypted digital information transmission …
`unaccompanied by any non-digital information
`transmission” (substitute claims 45-48)
`34. Substitute claims 45-48 each recite “receiving [at least one/one or more]
`
`encrypted digital information transmission[s] … unaccompanied by any
`
`non-digital
`
`information
`
`transmission.” PMC argues
`
`that “[i]n one
`
`embodiment, the ‘Exotic Meals’ message is received by the receiver station
`
`over an all-digital communication channel.” (Mot. at 11.) The Exotic Meals
`
`of India embodiment does not describe an all-digital communication
`
`channel. Rather, the disclosure of a digital channel upon which PMC relies
`
`comes from a different embodiment that describes the transmission of “news
`
`service” information on “digital data channels A and B.” (Mot. at B47-52
`
`(citing 419:34-420:2, 420:21-421:6, Fig. 7C); B75-80 (same), B98-104
`
`(same), B123-28 (same).)
`
`19
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 21
`
`
`
`
`
`35. PMC attempts to tie these two unrelated embodiments together on the basis
`
`of the statement that “[a]n alternate method for inputting said second
`
`message to the microcomputers … is to embed said message in a particular
`
`second transmission that is different from the transmission of said ‘Exotic
`
`Meals of India’ programming.” (Mot. at B50 (citing Ex. 2208 at 476:34-
`
`477:29).) Nowhere does the ’413 Application describe that this “different
`
`transmission” utilizes digital data channels A and B. The “one digital data
`
`channel” of Fig. 7C, upon which PMC relies, does not appear in Fig. 7F,
`
`which is the figure referenced by the Exotic Meals of India example. (Ex.
`
`2208 at 469:3-6, Fig. 7F.)
`
`3.
`
`“communicating … unique digital data to a remote site”
`(substitute claims 44-48)
`36. Each of substitute claims 44-48 recites some variation of “communicating
`
`… unique digital data to a remote site.” Even though PMC purports to rely
`
`on the “Exotic Meals of India” example for support, PMC cites nothing from
`
`this embodiment in support of these limitations. PMC relies instead on
`
`disclosures from different portions of the ’413 Application. (Mot. at B38-41
`
`(citing Ex. 2208 at 3:9-20, 28:25-35; 31:30-32:20, 93:11-16), B69-71
`
`(same), B88-90 (same), B115-18 (same), B141-43 (same).)
`
`20
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 22
`
`
`
`
`
`4.
`
`“selecting, by processing selection criteria, a first signal of
`said plurality of signals including downloadable code”
`(substitute claim 48)
`37. Substitute claim 48 recites “selecting, by processing selection criteria, a first
`
`signal of said plurality of signals including downloadable code.” The
`
`allegedly supporting disclosure identified by PMC describes neither
`
`“selecting … a first of said plurality of signals” nor “selection criteria.”
`
`(Mot. at B-134.) Additionally, the portion of the ’413 Application excerpted
`
`by PMC addresses operations performed at a cable head end, not at the
`
`receiver station of the claim. (Ex. 2208 at 291:9-19.) The cited disclosure
`
`also comes from example #7, which says nothing about the “second SPAM
`
`message” of the Exotic Meals of India embodiment that PMC identified as
`
`the claimed transmission. (Mot. at B123-28.)
`
`III. SUBSTITUTE CLAIM 41-48 ARE UNPATENTABLE OVER THE
`PRIOR ART
`A.
`Substitute Claim 41 Is Obvious Over Campbell
`1.
`Digital Programming
`I understand that substitute claim 41 has been amended to require “digital”
`
`38.
`
`programming. A person of ordinary skill in the art would have known that
`
`the pay-per-view capabilities described by Campbell could be used to
`
`deliver digital programming. For instance, by 1987, a number of authors had
`
`described “‘pay-per-listen’ digital audio.” (Ex. 1060 at 4; Ex. 1043, 9:46-
`
`21
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-01520
`Page 23
`
`
`
`
`
`55.) A person of ordinary skill in the art would have been motivated to
`
`provide such digital pay-per-listen digital audio distribution as it would
`
`provide s
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