`
`
`
`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
`
`
`PETITIONER’S OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`

`

`
`
`D.
`
`2.
`
`I.
`II.
`
`TABLE OF CONTENTS
`The Substitute Claims Do Not Satisfy § 101. .............................................. 1
`The Substitute Claims Do Not Satisfy § 112. .............................................. 5
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1). .................................. 5
`B.
`Substitute Claim 41 Is Not Supported by the Specification. ................ 8
`C.
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification. ....................................................................................... 10
`Substitute Claims 44-48 Are Not Supported by the
`Specification. ....................................................................................... 12
`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)................................. 13
`receiving an “encrypted digital information transmission
`… unaccompanied by any non-digital information
`transmission” (substitute claims 45-48) .................................... 15
`“communicating … unique digital data to a remote site”
`(substitute claims 44-48) ........................................................... 16
`“selecting, by processing selection criteria, a first signal
`of said plurality of signals including downloadable code”
`(substitute claim 48) .................................................................. 16
`III. Substitute Claims 41-48 Would Have Been Obvious to a Person of
`Ordinary Skill In the Art ............................................................................ 17
`A.
`PMC Failed to Show That Its Substitute Claims Are Patentable ........ 17
`B.
`Claim Construction ............................................................................. 18
`C.
`Substitute Claims 41 Is Unpatentable Over Campbell ........................ 18
`D.
`Substitute Claims 42 and 43 Are Unpatentable Over Seth-Smith ...... 20
`E.
`Substitute Claims 44-48 Are Unpatentable Over Chandra ................. 23
`IV. PMC Has Not Met Its Burden. ................................................................... 25
`
`
`3.
`
`4.
`
`i
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) .............................................................................. 5
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct 2347 (2014) .............................................................................................. 4
`B.E. Tech., L.L.C. v. Google, Inc.,
`No. 2015-1827, 2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) .............................. 7
`Chiron Corp. v. Genentech, Inc.,
`363 F.3d 1247 (Fed. Cir. 2004) ............................................................................ 14
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) .............................................................................. 5
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .............................................................................. 3
`Facebook, Inc. v. EveryMD LLC,
`IPR2014-00242, 2015 WL 2268210 (P.T.A.B. May 12, 2015) .........................7, 8
`Genentech, Inc. v. Novo Nordisk, A/S,
`108 F.3d 1361 (Fed. Cir. 1997) ............................................................................ 14
`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) ............................................................................ 10
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016) .............................................................................. 4
`Martin v. Mayer,
`823 F.2d 500 (Fed. Cir. 1987) .............................................................................. 10
`MasterImage 3D, Inc. v. RealD Inc.,
`IPR2015-00040, 2015 WL 4383224 (P.T.A.B. July 15, 2015) ............................ 19
`
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES (CONT'D)
`
`Page(s)
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, 2013 WL 8352845 (P.T.A.B. June 3, 2013) ...........................7, 8
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013) ....................................................................... 9, 14
`PMC v. Amazon.com, Inc.,
`161 F.Supp.3d 325 (D. Del. 2015),
`aff’d Case No. 2015-2008, 2016 WL 7118532 (Fed. Cir. Dec. 7, 2016) ...........2, 3
`Respironics, Inc. v. Zoll Med. Corp.,
`IPR2013-00322, 2014 WL 4715644 (P.T.A.B. Sept. 17, 2014) ........................7, 9
`Respironics, Inc. v. Zoll Med. Corp.,
`No. 2015–1485, 2016 WL 4056094 (Fed. Cir. July 29, 2016) ............................... 8
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ............................................................................4, 5
`Statutes
`35 U.S.C. § 101 .......................................................................................................... 1
`35 U.S.C. § 112 .......................................................................................................... 1
`37 C.F.R. § 42.100(b) .............................................................................................. 18
`37 C.F.R. § 42.121(b)(1) ............................................................................................ 5
`
`
`
`
`
`
`iii
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`

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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`PMC’s Contingent Motion to Amend the claims of the ’635 patent does not
`
`come close to satisfying the legal requirements for such a motion. The Motion is
`
`filled with conclusory statements, unsupported by any citations to the evidence or
`
`expert testimony, and fails on any one of multiple independent grounds. First,
`
`PMC does not meet its burden to show that the Substitute Claims are directed to
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`patent-eligible subject matter, despite the fact that the Federal Circuit has affirmed
`
`the invalidity of dozens of highly-related PMC claims on this basis. Second, PMC
`
`does not establish that the Substitute Claims, each of which add multiple
`
`limitations, find support in the specification to satisfy 35 U.S.C. § 112. Third, PMC
`
`does not analyze the prior art with any specificity, and fails to address, at any level,
`
`not only the nearly 2,700 references cited in the ’635 patent, but also more than 80
`
`references that PMC itself submitted as exhibits in this proceeding. For any one of
`
`these reasons, PMC’s Motion must be denied.
`
`I.
`
`THE SUBSTITUTE CLAIMS DO NOT SATISFY § 101.
`Not only must PMC establish the Substitute Claims claim patent-eligible
`
`subject matter under § 101, but it must do so against the backdrop of dozens of
`
`related and highly-similar PMC claims being found invalid on this basis by the
`
`Federal Circuit. A Delaware district court, in a decision affirmed by the Federal
`
`Circuit, found the claims of seven PMC patents invalid under § 101. PMC v.
`
`Amazon.com, Inc., 161 F.Supp.3d 325 (D. Del. 2015), aff’d Case No. 2015-2008,
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`
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`2016 WL 7118532 (Fed. Cir. Dec. 7, 2016). One of these patents in particular, U.S.
`
`Patent No. 7,801,304, contained very similar claims and limitations to those at
`
`issue here, and PMC does not and cannot explain how the Substitute Claims would
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`merit a different result.
`
`The representative claim of the ’304 patent describes a method for
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`controlling the decryption of programming, including steps of: (1) detecting an
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`encrypted control signal in a received transmission, (2) passing the control signal
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`to a decryptor and decrypting it, and (3) decrypting programming using the
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`decrypted control signal. PMC, 161 F.Supp.3d at 332-33. The limitations of the
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`’304 patent are nearly identical to those of claim 2 of the ’635 patent, from which
`
`substitute claims 42 and 43 depend. Substitute claims 41 and 44-48 similarly
`
`identify a first set of signals/materials, and decrypt a second set of signals/materials
`
`based upon said first set. Mot. at A1-A4. The Delaware court held, and the Federal
`
`Circuit affirmed, that the ’304 patent “recites the abstract idea of decryption,”
`
`which, as a mathematical process used to manipulate information, is not patent
`
`eligible. PMC, 161 F.Supp.3d at 333. The Delaware court also found there was no
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`inventive concept that would transform the abstract idea of encryption into patent-
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`eligible subject matter. Id. at 333-34.
`
`The Substitute Claims are strikingly similar to the claims of the ’304 patent,
`
`and fail to satisfy § 101 for the same reasons. The Substitute Claims are directed to
`
`2
`
`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`the same abstract idea as those invalidated in the ’304 patent—decrypting a
`
`transmission. The first step of a § 101 analysis is to consider the “character as a
`
`whole” of the claims to determine whether they are directed to an abstract idea.
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`Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
`
`Given the substantial overlap in the limitations of the Substitute Claims with those
`
`of the ’304 patent, it is apparent that the “character as a whole” of both sets of
`
`claims is directed to the same abstract idea of decrypting a transmission.
`
`The specific limitations of the Substitute Claims not present (at least
`
`verbatim) in the ’304 patent do not change the analysis. For example, the new
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`limitations in the Substitute Claims about generically communicating a unique
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`digital code do not change the “character as a whole” of the Substitute Claims. And
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`changing the material decrypted from programming to executable instructions to
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`control a device, as in claim 44, does not change the analysis because limiting an
`
`abstract idea to a particular technological field does not render it patent-eligible.
`
`See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct 2347, 2358 (2014); Elec.
`
`Power, 830 F.3d at 1354; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
`
`Cir. 2014).
`
`The Substitute Claims are comparable to a claim at issue in Intellectual
`
`Ventures I LLC v. Symantec Corp. as well. In Symantec, the claim recited a post
`
`office that: (1) received an email (transmission); (2) processed the email to locate
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`3
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`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`the business rule(s) to apply (decryption key); and (3) applied the business rule to
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`the email. 838 F.3d 1307, 1316-17 (Fed. Cir. 2016). The Federal Circuit held that
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`the claim was a way of organizing human activity, an abstract idea. Id. at 1318.
`
`The Substitute Claims are also similar to the claims at issue in Digitech Image
`
`Techs., LLC v. Elecs. for Imaging, Inc., cited by the Delaware court in its § 101
`
`ruling on the ’304 patent, because they use the mathematical algorithm of
`
`encryption “to manipulate existing information to generate additional information.”
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`758 F.3d 1344, 1351 (Fed. Cir. 2014) (claims directed to the abstract idea of taking
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`two data sets and combining them into a single data set not patent-eligible).
`
`Like the claims of the ’304 patent, the Substitute Claims do not include an
`
`inventive concept that would transform the abstract idea to which they are directed
`
`into patent-eligible subject matter. To include an inventive concept, the Substitute
`
`Claims must do “significantly more than simply describe [the] abstract method”
`
`and include “additional features” that are more than “well-understood, routine,
`
`conventional activity.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
`
`1253, 1262 (Fed. Cir. 2016); Ultramercial, 772 F.3d at 715. The Substitute Claims
`
`do not meet either of these requirements.
`
`PMC does not even attempt to argue that its claims include anything more
`
`than conventional components, which is what the specification describes. E.g., Ex.
`
`1003 at 143:59-67, 147:52-148:61, 162:3-8. The additional limitations of the
`
`4
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`

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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Substitute Claims also fail to add an inventive concept. The Substitute Claims
`
`merely set forth steps that describe the abstract method. Similar to the affirmed
`
`Delaware court’s analysis finding no inventive concept, the Substitute Claims
`
`merely describe the abstract method of decrypting a transmission.
`
`PMC’s misleading suggestion, made in a previous IPR proceeding, that a
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`prior district court ruling denying Apple’s §101 motion at the pleadings stage, is
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`somehow dispositive is incorrect. At the time the district court stayed proceedings
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`regarding the ’635 patent, Apple had filed, and the district court was considering, a
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`fully-briefed motion for summary judgment that the claims of the ’635 patent are
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`invalid under §101. See Ex. 1057. Particularly in light of the Federal Circuit’s
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`later-issuing decision affirming §101 invalidity of the highly-similar claims of
`
`PMC’s ’304 patent and rejecting PMC’s arguments, the district court’s prior ruling
`
`at the pleading stage is of no import in this proceeding.
`
`The Substitute Claims are not directed to patent-eligible subject matter, and
`
`PMC has not met its burden to show otherwise.
`
`II. THE SUBSTITUTE CLAIMS DO NOT SATISFY § 112.
`A.
`PMC Did Not Satisfy 37 C.F.R. § 42.121(b)(1).
`A motion to amend must set forth “[t]he support in the original disclosure of
`
`the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1). A
`
`“mere citation in a table to various portions of the original disclosure, without any
`
`5
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`

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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`explanation why a person of ordinary skill in the art would have recognized that
`
`the inventor possessed the claimed subject matter as a whole, is inadequate to
`
`satisfy” this requirement. Facebook, Inc. v. EveryMD LLC, IPR2014-00242, 2015
`
`WL 2268210, at *7 (P.T.A.B. May 12, 2015); see also Nichia Corp. v. Emcore
`
`Corp., IPR2012-00005, 2013 WL 8352845, at *2 (P.T.A.B. June 3, 2013).
`
`The portion of PMC’s Motion purportedly addressed to “support for the
`
`substitute claims” offers nothing of the sort. Instead, PMC offers broad
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`generalizations regarding the allegedly relevant embodiments of the ’413
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`Application that issued as the ’635 Patent. This approach “amount[s] to little more
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`than an invitation to [the Board] … to peruse the cited evidence and piece together
`
`a coherent argument for them.” B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827,
`
`2016 WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016) (quoting Respironics, Inc. v.
`
`Zoll Med. Corp., IPR2013-00322, 2014 WL 4715644, at *13 (P.T.A.B. Sept. 17,
`
`2014) (vacated and remanded on other grounds, No. 2015–1485, 2016 WL
`
`4056094, at *1 (Fed. Cir. July 29, 2016))).
`
`PMC directs the Board to Appendix B and a declaration from one of its
`
`employees, Timothy Dorney, for alleged support. Mot. at 9. Dr. Dorney is not an
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`expert in the field and was not a PHOSITA at the time of the invention. Ex. 1058 at
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`6:22-7:3, 118:6-121:6. The relevant portion of his declaration repeats verbatim the
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`claim chart that appears in appendix B to PMC’s motion. More importantly, the
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`6
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`

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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Declaration fails to explain how the application supports the Substitute Claims,
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`how a PHOSITA would understand the quoted sections, or how a PHOSITA would
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`recognize from those quotations that the inventor possessed the subject matter of
`
`the Substitute Claims. This is exactly the type of bare-bones recitation the Board
`
`has found insufficient to support a motion to amend. Facebook, 2015 WL
`
`2268210, at *7; Nichia, 2013 WL 8352845, at *2 (“merely indicating where each
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`claim limitation individually described in the original disclosure may be
`
`insufficient to demonstrate support for the claimed subject matter as a whole”)
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`(emphasis in original).
`
`The Board has also held that extensive modifications “require[] a more
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`detailed showing of how each limitation of the proposed claim not only is
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`disclosed in the original and benefit applications, but also is disclosed in
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`combination with all of the other claim limitations.” Respironics, 2014 WL
`
`4715644, at *13 (citing Novozymes A/S v. DuPont Nutrition Biosciences APS, 723
`
`F.3d 1336, 1349 (Fed. Cir. 2013)). This requirement applies here, where the
`
`Substitute Claims contain extensive changes. Claim 4 went from just 12 words to
`
`125 in substitute claim 42, a difference of 113 words. Similarly, claim 41 has 58
`
`additional words, claim 43 has 59 additional words, claim 44 has 87 additional
`
`words, claim 45 has 101 additional words, claim 46 has 101 additional words,
`
`claim 47 has 134 additional words, and claim 48 has 72 additional words. Mot. at
`
`7
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`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
`
`A1-A15.
`
`The simple fact is that, though PMC claims to identify support for each
`
`limitation of the substitute claims somewhere in the specification, that is
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`insufficient to establish §112 support. See Novozymes, 723 F.3d at 1349 (“formal
`
`textual support for each individual limitation recited in the claims” is insufficient,
`
`each claim must be supported “as an integrated whole”). Even what disclosure
`
`PMC manages to cobble together fails to describe the claim limitations clearly and
`
`unambiguously. Hyatt v. Boone, 146 F.3d 1348, 1354 (Fed. Cir. 1998) (“It is
`
`insufficient as written description … to provide a specification that does not
`
`unambiguously describe all limitations of the count.”); Martin v. Mayer, 823 F.2d
`
`500, 505 (Fed. Cir. 1987) (“It is ‘not a question of whether one skilled in the art
`
`might be able to construct the patentee’s device from the teachings of the
`
`disclosure.... Rather, it is a question whether the application necessarily discloses
`
`that particular device.’”).
`
`B.
`Substitute Claim 41 Is Not Supported by the Specification.
`Substitute claim 41 is not supported by the ’413 Application under § 112.
`
`Ex. 1053 ¶¶17-18. First, there is insufficient support for the “receiving” and
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`“communicating” steps of substitute claim 41. Ex. 1053 ¶17. Substitute claim 41
`
`recites “receiving a control signal … and communicating said control signal to said
`
`remote transmitter station.” The claim thus requires two distinct steps: (1)
`
`8
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`

`

`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`receiving a control signal at a first location and (2) communicating that control
`
`signal from the first location to the remote transmitter station. But the disclosure
`
`cited by PMC fails to support these two steps, at best describing only the
`
`“communicating” step. Mot. at B8-11; Ex. 1053 ¶17.
`
`Second, the disclosure identified by PMC fails to support the “first instruct
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`signal” limitations of substitute claim 41. Ex. 1053 ¶18. Substitute claim 41 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
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`programming or said one or more first instruct signals” and “transmitting from said
`
`remote transmitter station an information transmission comprising … said one or
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`more second instruct signals.” PMC identifies “incorporate-and-retain-Specific-
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`WSW-Enabling-message instructions” as the “one or more second instruct signals”
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`received at the remote transmitter station. Mot. at B13. But 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;
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`Ex. 1053 ¶18. 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
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`the remote transmitter station to provide a decryption key for the encrypted
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`programming. Id. at 433:9-15, 438:19-35, 439:1-27; Ex. 1053 ¶18.
`
`9
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`C.
`
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification.
`Substitute claims 42 and 43, which depend from claim 2, are not supported
`
`by the ’413 Application under § 112. Ex. 1053 ¶¶19-20. First, PMC’s cited support
`
`fails to include the claimed “first encrypted digital control signal portion.” Claim 2
`
`recites “receiving programming, said programming having a first encrypted digital
`
`control signal portion and an encrypted digital information portion.” PMC has
`
`identified “local-cable-enabling-message (#7)” as the “first encrypted digital
`
`control signal portion.” Mot. at B2-5. But the ’413 Application never describes
`
`local-cable-enabling message (#7) as encrypted. Ex. 1053 ¶19. In fact, Dr. Dorney
`
`himself previously submitted a declaration to this Board that explicitly stated that
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`“[l]ocal-cable-enabling-message (#7) is unencrypted digital information.” Ex.
`
`1059 at 12, 23, 34 (emphasis added); Ex. 1053 ¶19. As such, local-cable-enabling
`
`message (#7) cannot possibly 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.” Ex. 1053 ¶19.
`
`To attempt to rectify what is lacking from local-cable-enabling message
`
`(#7)—which, as its name implies, appears in example #7—PMC cites disclosures
`
`10
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`pertaining to the “first message of example #4.” See 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); Ex. 1053 ¶20. In doing so, PMC improperly equates local-cable-
`
`enabling message (#7) and 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,
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`39K.” Mot. at B1-3 (citing Ex. 2208 at 291:33-292:6), B4-5 (same); Ex. 1053 ¶20.
`
`But this language simply explains the role “matrix switch, 39I” plays in the transit
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`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; Ex. 1053 ¶20. Nothing
`
`in the language cited by PMC dictates or implies that local-cable-enabling message
`
`(#7) is encrypted or decrypted. Ex. 1053 ¶20.
`
`Second, the ’413 Application does not enable the claimed “digital video.”
`
`Substitute claim 42 has been amended to require that “said programming further
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`includes encrypted digital video.” The transmission of “so-called ‘digital video’”
`
`over conventional cable television is not enabled by the specification. See Mot. at
`
`11
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`B18-19 (citing Ex. 2208, 288:30-289:21); Ex. 1053 ¶¶21-28. As of 1981,
`
`transmission of digital video in television signals was, at best, experimental. Ex.
`
`1049 at 43:6-11, 77:21-78:19, 80:21-81:1, 88:11-15. Such “[n]ascent technology
`
`… must be enabled with a ‘specific and useful teaching.’” Chiron, 363 F.3d at
`
`1254 (quoting Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1368 (Fed.
`
`Cir. 1997)).
`
`D.
`Substitute Claims 44-48 Are Not Supported by the Specification.
`Substitute claims 44-48 are not supported by the ’413 Application under
`
`§ 112. PMC generally relies on the “Exotic Meals of India” embodiment for its
`
`supporting disclosure, in each case 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). But this embodiment does not include
`
`sufficient disclosure to support many of the claim limitations. Ex. 1053 ¶29.
`
`Lacking a singular embodiment disclosing all of the elements of those claims,
`
`PMC attempts to improperly cobble together support from as many as five separate
`
`embodiments. Novozymes, 723 F.3d at 1349. As described below, numerous
`
`limitations from these claims are not supported by the ’413 Application.
`
`12
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`1.
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`“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)
`Each of substitute claims 44, 45, 47, and 48 recites some variation of the
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`limitation “identifying a cipher algorithm from a plurality of preprogrammed
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`cipher algorithms at said receiver station based on a received signal from external
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`said receiver station.” The “Exotic Meals of India” embodiment makes no
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`reference to cipher algorithms. Ex. 1053 ¶30. Instead, PMC relies on the ’413
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`Application’s statement that “the information of said second message can be
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`encrypted and caused to be decrypted in any of the methods described above.” Ex.
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`2208 at 478:1-5.
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`However, PMC does not rely on the disclosure of a singular method from
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`another embodiment in the application. Instead, PMC concocts its own method
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`based on a combination of disclosures from example #4 and example #7. Ex. 1053
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`¶31. Specifically, PMC argues that “the second message is encrypted with cipher
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`algorithm C using cipher key Ca, as in Example #7, and the key Ca is transmitted
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`in a message according to Example #4.” Mot. at B32, B46, B97, B122; see also id.
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`at B74.1 No such method actually appears in the ’413 Application. Ex. 1053 ¶31.
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`1 Though substitute claim 46 does not reference “cipher algorithms,” here too
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`PMC relies on a combination of disclosures from the Exotic Meals of India,
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`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Even PMC’s contrived method fails to disclose the limitations of the claims.
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`Example #4 says nothing of “cipher algorithms,” let alone selecting one on the
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`basis of a received signal. Rather, PMC argues that “[u]se of decryption key G …,
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`J, or Z indicates a different cipher algorithm than cipher algorithm A, B, or C.”
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`Mot. at B56; see also id. at B114 (“decryptor 39K decrypts using a particular
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`cipher algorithm because key Z was used.”), B137 (same); Ex. 1053 ¶32. That is,
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`PMC would have the Board assume that signals that simply identify a decryption
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`key implicitly “identify[] a cipher algorithm.” They do not. Portions of the ’413
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`Application cited by PMC itself show that multiple decryption keys would work
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`with the same cipher algorithm. Mot. at B37 (citing Ex. 2208 at 280:1-14, 440:1-
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`10). Ex. 1053 ¶32.
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`Nor is this deficiency cured by PMC’s references to example #7. PMC
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`argues that, in that embodiment, “[t]he SPAM message contains the cipher key Ca,
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`which also indicates the cipher algorithm C should be used.” Mot. at 9. But cipher
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`key Ca and cipher algorithm C are used to decrypt information received in an
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`entirely separate transmission. Ex. 2208 at 289:12-21, 291:9-19; Ex. 1053 ¶33.
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`Thus, applying the method of example #7 in the context of the Exotic Meals of
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`example #4, and example #7 embodiments. Mot. at B74, B84-88.
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`India embodiment requires PMC to assume an additional transmission not
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`described anywhere in that embodiment. Ex. 1053 ¶33.
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`2.
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`receiving an “encrypted digital information transmission …
`unaccompanied by any non-digital information
`transmission” (substitute claims 45-48)
`Substitute claims 45-48 each recite “receiving [at least one/one or more]
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`encrypted digital information transmission[s] … unaccompanied by any non-
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`digital information transmission.” PMC argues that “[i]n one embodiment, the
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`‘Exotic Meals’ message is received by the receiver station over an all-digital
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`communication channel.” Mot. at 11. But the Exotic Meals of India embodiment
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`describes no such thing. Ex. 1053 ¶34. Rather, the disclosure of a digital channel
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`upon which PMC relies comes from an entirely unrelated embodiment, which
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`describes the transmission of “news service” information on “digital data channels
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`A and B.” Mot. at B47-52 (citing 419:34-420:2, 420:21-421:6, Fig. 7C); B75-80
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`(same), B98-104 (same), B123-28 (same); Ex. 1053 ¶34.
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`PMC attempts to tie these two disparate embodiments together on the basis
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`of the statement that “[a]n alternate method for inputting said second message to
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`the microcomputers … is to embed said message in a particular second
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`transmission that is different from the transmission of said ‘Exotic Meals of India’
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`programming.” Mot. at B50 (citing Ex. 2208 at 476:34-477:29). But nowhere does
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`the application describe that this “different transmission” utilizes digital data
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`channels A and B. Ex. 1053 ¶35. The “one digital data channel” of Fig. 7C, upon
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`which PMC relies, does not appear anywhere in Fig. 7F, which is the figure
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`referenced by the Exotic Meals of India example. Ex. 2208 at 469:3-6, Fig. 7F; Ex.
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`1053 ¶35.
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`3.
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`“communicating … unique digital data to a remote site”
`(substitute claims 44-48)
`Each of substitute claims 44-48 recites some variation of “communicating
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`… unique digital data to a remote site.” Despite generally saying that it relies on
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`the “Exotic Meals of India” example for its § 112 support, PMC cites nothing from
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`this embodiment in support of these limitations. Ex. 1053 ¶36. PMC relies instead
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`on disclosures from entirely unrelated portions of the ’413 Application. Mot. at
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`B38-41 (citing Ex. 2208 at 3:9-20, 28:25-35; 31:30-32:20, 93:11-16), B69-71
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`(same), B88-90 (same), B115-18 (same), B141-43 (same); Ex. 1053 ¶36.
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`4.
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`“selecting, by processing selection criteria, a first signal of
`said plurality of signals including downloadable code”
`(substitute claim 48)
`Substitute claim 48 recites “selecting, by processing selection criteria, a first
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`signal of said plurality of signals including downloadable code.” Yet the allegedly
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`supporting disclosure identified by PMC describes neither “selecting … a first of
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`said plurality of signals” nor “selection criteria.” Mot. at B-134; Ex. 1053 ¶37. The
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`portion of the application excerpted by PMC addresses operations performed at a
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`cable head end, not at the receiver station of the claim. Ex. 2208 at 291:9-19; Ex.
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`1053 ¶37. Additionally, the cited disclosure comes from example #7, which is
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`entirely unrelated to the “second SPAM message” of the Exotic Meals of India
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`embodiment that PMC identified as the claimed transmission. Mot. at B123-28;
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`Ex. 1053 ¶37.
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`III. SUBSTITUTE CLAIMS 41-48 WOULD HAVE BEEN OBVIOUS TO
`A PERSON OF ORDINARY SKILL IN THE ART
`A.
`PMC Failed to Show That Its Substitute Claims Are Patentable
`PMC’s attempt to show that the substitute claims are patentable over the
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`massive amount of cited prior art is woefully insufficient. PMC’s argument that the
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`substitute claims are patentable over the prior art is premised e