`
`
`
`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 REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`

`

`
`
`I.
`
`B.
`C.
`
`TABLE OF CONTENTS
`The Instituted Claims Are Not Entitled To Priority To the 1981
`Specification. .................................................................................................. 1
`A.
`Claims 3, 4, and 7 Are Not Supported By the 1981
`Specification .......................................................................................... 3
`1.
`“programming” (claims 3, 4, 7) .................................................. 3
`2.
`“receiving a control signal…and communicating said
`control signal to said remote transmitter station”
`(claim 3) ...................................................................................... 6
`Claim 13 Is Not Supported By the 1981 Specification ......................... 6
`Claims 18, 20, 32, and 33 Are Not Supported By the 1981
`Specification .......................................................................................... 8
`1.
`receiving an “encrypted digital information
`transmission…unaccompanied by any non-digital
`information transmission” (claims 18, 20, 32, 33) ..................... 8
`“code” / “downloadable code” (claims 18, 33)......................... 17
`2.
`II. Claim Construction ..................................................................................... 17
`A.
`“decrypt”-related terms (all claims) .................................................... 17
`B.
`“executable instructions” (claim 13) ................................................... 20
`C.
`“encrypted digital information transmission unaccompanied by
`any non-digital information transmission” (claims 18, 20, 32,
`33) ........................................................................................................ 20
`III. The Instituted Claims Are Unpatentable. ................................................. 20
`A.
`Claims 13, 18, 20, and 32 Are Invalid Based on Chandra .................. 20
`1.
`Chandra discloses a “processor” and “controlling a
`decryptor…” (claim 18) ............................................................ 20
`Chandra discloses receiving an “encrypted digital
`information transmission…unaccompanied by any non-
`digital information transmission” (claims 18, 20, 32) .............. 21
`Chandra discloses “passing said decrypted second of said
`plurality of signals to a controllable device” (claim 13) ........... 21
`
`2.
`
`3.
`
`i
`
`
`

`

`
`
`
`
`
`B.
`
`C.
`D.
`
`E.
`
`2.
`
`3.
`
`Claim 33 Is Invalid Based On Chandra and Nachbar ......................... 22
`1.
`Chandra in view of Nachbar suggests “selecting, by
`processing selection criteria…” ................................................ 22
`Chandra discloses an “encrypted digital information
`transmission…unaccompanied by any non-digital
`information transmission” ......................................................... 22
`It would have been obvious to a PHOSITA to modify
`Chandra in view of Nachbar ..................................................... 22
`Claims 4 and 7 Are Invalid Based On Seth-Smith .............................. 23
`Claim 3 Is Invalid Based on Campbell ............................................... 24
`1.
`Campbell discloses “one or more second instruct
`signals…” .................................................................................. 24
`Campbell discloses “receiving a control signal…”; “said
`one or more first instruct signals being transmitted in
`accordance with said control signal” ........................................ 24
`Campbell teaches “a code or datum identifying a unit of
`programming…” ....................................................................... 25
`It would have been obvious to a PHOSITA to modify
`Campbell ................................................................................... 26
`Secondary Considerations Do Not Support Nonobviousness ............. 27
`
`2.
`
`3.
`
`4.
`
`ii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Ariad Pharms., Inc. v. Eli Lilly and Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .............................................................................. 6
`Chiron Corp. v. Genentech, Inc.,
`363 F.3d 1247 (Fed. Cir. 2004) ..........................................................................4, 5
`Crown Operations Int'l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .............................................................................. 8
`Genentech Inc. v. Novo Nordisk A/S,
`108 F.3d 1361 (Fed. Cir. 1997) .............................................................................. 9
`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) ................................................................... 7, 8, 17
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 26
`Lockwood v. Am. Airlines,
`107 F.3d 1565 (Fed. Cir. 1997) ....................................................................... 4, 17
`Martin v. Mayer,
`823 F.2d 500 (Fed. Cir. 1987) ..................................................................... 7, 8, 17
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013) .............................................................................. 7
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ..........................................................................3, 4
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .............................................................................. 4
`X2Y Attenuators, LLC v. Int’l Trade Comm’n,
`757 F.3d 1358 (Fed. Cir. 2014) .............................................................................. 5
`
`
`
`
`iii
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`

`

`TABLE OF AUTHORITIES (CONT'D)
`
`Page(s)
`
`Statutes
`37 C.F.R. §42.64 ........................................................................................................ 2
`
`
`
`
`
`iv
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`

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`
`
`PMC spends the majority of its Response attempting to explain how the
`
`instituted claims have priority to its 1981 filing, to avoid the prior art that renders
`
`these claims unpatentable. PMC’s priority arguments
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`require so much
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`“explanation” because the disclosure simply is not there. It is not enough for PMC
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`to argue that a PHOSITA might have been able to practice an embodiment
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`consistent with the instituted claims, or that it would have been obvious to do so.
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`The law requires actual disclosure—demonstrating conception and possession—of
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`the now-claimed embodiments. The liberties that PMC takes—injecting disclosure
`
`where none exists, layering supposition onto supposition to suggest “inherent”
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`disclosure of unidentified
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`features, and mixing and matching distinct
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`embodiments—do not withstand scrutiny or meet its burden. Rather, a careful
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`examination of the evidence confirms that the instituted claims, drafted 30 years
`
`after the 1981 specification, are not supported by that 24-column specification, and
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`are at best supported by the 290-column 1987 specification.
`
`PMC rehashes the same arguments it made in its Preliminary Response, and
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`at this stage the evidence is even stronger in Apple’s favor. The evidence
`
`establishes that PMC is not entitled to 1981 priority and the instituted claims are
`
`unpatentable.
`
`I.
`
`THE INSTITUTED CLAIMS ARE NOT ENTITLED TO PRIORITY
`TO THE 1981 SPECIFICATION.
`PMC’s deficiencies in §112 support in the 1981 specification span across a
`
`1
`
`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
`
`number of limitations, including key limitations that were the basis upon which
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`PMC has distinguished the prior art. For example, in IPR2016-00754, PMC
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`successfully argued against institution of several claims requiring an “encrypted
`
`digital information transmission … unaccompanied by any non-digital information
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`transmission.” PMC now must face the reality that the 1981 specification contains
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`no disclosure of “all-digital, analog-free” transmissions of encrypted information.
`
`To prop up its strained priority arguments, PMC acts as if the priority
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`analysis hinges on expert testimony, and then attempts to exclude Apple’s expert’s
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`declaration with misleading objections.1 To the extent there was any ambiguity in
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`the date used to analyze support for the instituted claims in the 1981 specification,
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`Mr. Wechselberger clarified that he “examined them in light of that earlier patent
`
`and what one of ordinary skill in the art would think in the earlier date.” Ex. 2020,
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`17:4-9; see also 18:4-20:8 (“I can tell you I did.”). Similarly, Mr. Wechselberger’s
`
`application of claim constructions proposed by the parties implicates, at most, the
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`scope of his opinions, not their reliability.
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`If any expert’s testimony is of dubious relevance, and entitled to little
`
`
`1 Despite PMC’s call for the Board to exclude Mr. Wechselberger’s declaration
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`as allegedly “defective” and “unreliable,” PMC never objected to this evidence
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`under 37 C.F.R. §42.64.
`
`2
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`weight, it is PMC’s. PMC’s expert applies the wrong legal standard and admits to
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`not even being an expert in analog/digital television systems, the technology upon
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`which the 1981 specification is grounded. Ex. 1049, 216:6-20. PMC cannot fill in
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`the gaps of its priority arguments with expert disclosure, and even if it could it
`
`loses this battle as well.
`
`A. Claims 3, 4, and 7 Are Not Supported By the 1981 Specification
`1.
`“programming” (claims 3, 4, 7)
`PMC falsely argues “Apple does not dispute that the ’490 Patent provides
`
`written description support for the term ‘programming.’” Response 13. PMC’s
`
`argument is premised on a misunderstanding of law: the question is not whether
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`the 1981 specification mentions or defines the word “programming,” but whether it
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`supports that term as construed based on the 1987 specification. PowerOasis, Inc.
`
`v. T-Mobile USA, Inc., 522 F.3d 1299, 1310-11 (Fed. Cir. 2008).
`
`The Board has repeatedly found that the 1987 specification’s definition of
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`“programming” is not supported by the 1981 disclosure.2 PMC presents no new
`
`evidence or argument here. PMC again argues that unspecified “other electronic
`
`transmissions” make the 1981 specification definition as broad as the 1987
`
`specification’s definition. The Board correctly rejected that argument because
`
`
`2 Institution Decision 8-10; Ex. 1037, 32-34; Ex. 1050, 22-25.
`
`3
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`those “other electronic transmissions” are limited to single channel, single medium
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`transmissions, whereas “the broad disclosure in the ’635 patent potentially includes
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`not only ‘combined medium programming’ and ‘computer programming,’ it also
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`includes ‘everything … transmitted electronically.’” Institution Decision 8-9.
`
`Allusions to unspecified “other” transmissions do not provide the requisite support.
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
`
`PMC misapplies Ariad and Vas-Cath when arguing “[w]hether additional
`
`examples of ‘programming’ were known or developed after November 3, 1981 is
`
`not relevant to the priority analysis.” Response 19. By definition, PMC could not
`
`have possession of, and disclose, subject matter that did not exist at the time of the
`
`1981 specification. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255 (Fed.
`
`Cir. 2004) (axiomatically, there cannot be written description support for subject
`
`matter that did not exist); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564
`
`(Fed. Cir. 1991) (“[T]he invention is, for purposes of the ‘written description’
`
`inquiry, whatever is now claimed.”); PowerOasis, 522 F.3d at 1311.
`
`PMC’s reliance on BPAI decisions for the proposition that “any alleged
`
`difference in the scope of the term would ‘go to the scope of the claim in question
`
`and not to a question of priority’” is misplaced. Response 14-15. As the Board
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`noted, those decisions “simply do[] not account for the holding in PowerOasis.”
`
`Ex. 1037, 33-34; X2Y Attenuators, LLC v. ITC, 757 F.3d 1358, 1366 (Fed. Cir.
`
`4
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`2014) (Reyna, J., concurring) (scope of claims in a CIP is not limited to what is
`
`disclosed in a priority application).
`
`PMC attempts to locate support for “combined medium programming” in
`
`the 1981 specification, yet the excerpt that PMC cites explicitly states only “single
`
`medium presentations” are “transmitted electronically.” Response 16-17 (quoting
`
`Ex. 1004, 3:48-60). The “combining” only happens after-the-fact when those
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`single medium transmissions are “co-ordinated in time with other programing
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`previously
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`transmitted and recorded” or with “presentations
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`from a
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`microcomputer working with data supplied earlier.” Ex. 1004, 3:48-60.
`
`PMC also fails when trying to identify support for “computer programming”
`
`in the 1981 specification. PMC points to “instruction and information signals
`
`embedded in programing.” Response 17 (quoting Ex. 1004, 3:3-41). These signals
`
`are not computer programming, they are merely signals to which receiver stations
`
`are “preprogramed to respond in a predetermined fashion.” Ex. 1004, 19:42-44;
`
`see also 17:34-18:7.
`
`The 1981 specification also fails to disclose digital video/television, among
`
`other technologies. As PMC’s expert admitted, transmission of digital video in
`
`television signals was, at best, “experimental” in 1981. Ex. 1049, 42:18-43:11,
`
`77:21-79:5, 88:11-15. Such “[n]ascent technology … must be enabled with a
`
`‘specific and useful teaching.’” Chiron, 363 F.3d at 1254.
`
`5
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`2.
`
`“receiving a control signal…and communicating said
`control signal to said remote transmitter station” (claim 3)
`PMC does not actually dispute that the 1981 specification fails to support the
`
`two distinct steps of this limitation; PMC only disputes Apple’s characterization of
`
`its prior position. Response 20. There is no separate disclosure of receiving a
`
`control signal at one location, then communicating the control signal to the remote
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`transmitter station. Petition 13; Ex. 1001 ¶95.
`
`B. Claim 13 Is Not Supported By the 1981 Specification
`PMC describes a number of embodiments that allegedly support this claim,
`
`but not one describes executable instructions embedded in decrypted signals, as
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`required by the claims. Response 25-28.
`
`PMC relies primarily on the “Wall Street Week example,” falsely claiming
`
`that this embodiment includes “decrypted signals.” Response 25 (citing Ex. 1004,
`
`19:42-20:2), 27 (citing Ex. 1004, 19:42-20:7). The specification, however, never
`
`describes that any signals in that example are encrypted/decrypted, disclosing
`
`instead only that they are “embedded.” Ex. 1004, 19:42-20:7; Ex. 1051, 44:2-10.
`
`PMC’s assertion that the programming “includes encrypted signals” has no support
`
`in the cited evidence. Response 28 n.4 (citing Ex. 1004, 8:20-35). PMC’s
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`supposition of what may have been possible is insufficient to support the claim’s
`
`requirement of decrypted signals. Ariad Pharms., Inc. v. Eli Lilly and Co., 598
`
`F.3d 1336, 1352 (Fed. Cir. 2010) (“a description that merely renders the invention
`
`6
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`obvious does not satisfy the requirement[s]” of §112); Novozymes A/S v. DuPont
`
`Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (each claim must
`
`be supported “as an integrated whole”); Hyatt v. Boone, 146 F.3d 1348, 1354 (Fed.
`
`Cir. 1998) (written description
`
`insufficient
`
`if “specification [] 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 [] it is a question whether the application necessarily discloses that
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`particular device.’”).
`
`PMC also cites the specification’s description of an “instruction for the
`
`apparatus to contact a remote telephone unit” (Response 26-27 (citing Ex. 1004,
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`8:56-65)) and, in the Julia Child example, “a signal word … to serve as the code
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`upon which decrypter, 224, will decrypt the incoming encrypted recipe” (Response
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`28 (citing Ex. 1004, 13:31-32, 20:37-42)). Again, the instruction to contact a
`
`remote telephone unit is never described as embedded in a decrypted signal. Ex.
`
`1004, 8:56-65. And the signal word in the Julia Child example is decrypted “in a
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`predetermined fashion,” not “on the basis of [a] changed decryption technique” as
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`required by claim 13. Ex. 1004, 20:38-43. Nor is the signal word “embedded with
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`executable instructions.” Id. Rather, as PMC’s expert admitted, the decrypted
`
`7
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`signal word, i.e., “the code upon which decrypter, 224, will decrypt,” is merely a
`
`decryption key. Ex. 2023 ¶214.
`
`C. Claims 18, 20, 32, and 33 Are Not Supported By the 1981
`Specification
`1.
`receiving an “encrypted digital information
`transmission…unaccompanied by any non-digital
`information transmission” (claims 18, 20, 32, 33)
`This claim requirement, one that PMC successfully distinguished from the
`
`prior art in related IPR2016-00754, is simply nowhere in the 1981 disclosure.
`
`Lacking any express disclosure in the 1981 specification, PMC rummages through
`
`various embodiments to attempt to argue there is inherent disclosure of this
`
`limitation, but none of the embodiments teaches transmissions that are digital-only
`
`and encrypted.
`
`PMC’s arguments about whether it might have been possible to implement
`
`an embodiment consistent with the claims is legally misplaced—the inquiry does
`
`not focus on what might have been enabled or possible or obvious, but rather what
`
`is actually and unambiguously disclosed. See Hyatt, 146 F.3d at 1354; Martin, 823
`
`F.2d at 505. Indeed, having relied on this limitation for allowance, it must be
`
`expressly disclosed. Ex. 2012, 1319-21, 1323-24, 1330-31, 1362; Crown
`
`Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1380 (Fed. Cir. 2002) (novel
`
`aspect of invention must be expressly disclosed); Genentech Inc. v. Novo Nordisk
`
`8
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) (knowledge of PHOSITA cannot be
`
`used to supply the patentable aspects of the invention). PMC fails this test.
`
`a.
`Telephone Link
`PMC first relies on the description of a “telephone or other data transfer
`
`network,” citing the statement that a signal processor may “telephone a remote site
`
`to get an additional signal or signals necessary for the proper decryption and/or
`
`transfer of incoming programing transmissions.” Response 29-31 (citing Ex. 1004,
`
`15:20-25). But the 1981 specification never describes receiving an “encrypted
`
`digital information transmission” over a telephone line. Although PMC argues “the
`
`signals themselves may be encrypted” (Response 30-31 (citing Ex. 1004, 15:7-10,
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`15:11-14)), the disclosure PMC relies on describes, not a telephone transmission,
`
`but a cable television transmission in which “the signal or signals … may be on a
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`separate channel of programing that is, itself, encrypted.” Ex. 1004, 14:33-15:14;
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`Ex. 1053 ¶3.3
`
`The same problem arises with PMC’s incorrect argument that Apple’s
`
`positions regarding the 1981 specification and Chandra are contradictory.
`
`
`3 Encrypting this transmission was not even obvious. Notably, PMC’s expert
`
`opined that “[i]n 1981, there were no security concerns in using a phone line to
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`transmit data” that would have necessitated encryption. Ex. 1052 ¶226.
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`9
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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`Response 30. PMC points to Chandra’s transmission of data over a telephone line
`
`to argue that Apple does not “dispute[] that a telephone transmission containing
`
`digital data constitutes ‘at least one encrypted digital information transmission …
`
`unaccompanied by any non-digital information transmission.’” Id. But digital data
`
`transmitted by telephone is not always or necessarily encrypted. Ex. 1053 ¶3. A
`
`transmission without encrypted digital data cannot be the claimed “encrypted
`
`digital information transmission.” It is undisputed that Chandra specifically
`
`describes transmitting encrypted digital data over a telephone line. See Section
`
`III.A.2. The 1981 specification does not.
`
`Nor would PMC’s alleged disclosure support other limitations of the claims.
`
`For example, claims 32 and 33 require controlling a decryptor on the basis of a
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`control signal or downloadable code detected in the “encrypted digital information
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`transmission … unaccompanied by any non-digital information transmission,” and
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`then decrypting a second signal detected in that same transmission. There is no
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`such second signal. Ex. 1053 ¶4. PMC has not even ventured to explain how these
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`limitations are supported. Response 29-31.
`
`b. Wall Street Week (Fig. 6C) and Julia Child (Fig. 6D)
`Examples
`In the 1981 specification, the receiver stations in Figs. 6C and 6D receive
`
`“multi-channel cable transmission[s],” but these are nowhere described as digital-
`
`only transmissions (and PMC does not really contend that they are). Ex. 1004,
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`10
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`

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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`18:49-52. PMC purports to rely on the “one digital data channel” in Fig. 6C, but
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`concedes that this is “one channel of several available channels” received together
`
`in the multi-channel cable transmission. Response 35; Ex. 1049, 48:19-49:8.
`
`
`
`
`
`It is undisputed that this transmission includes “conventional analog
`
`television,” such as the French Chef program, which conforms to the NTSC
`
`standard. Response 34, 35 (agreeing multi-channel cable transmission includes “an
`
`analog NTSC transmission”); Ex. 1004, 20:11-68, Figs. 6C, 6D. In addition to
`
`analog video, such programming would include analog synchronization signals.
`
`Ex. 1051, 16:2-18, 37:24-38:19; Ex. 2020, 54:18-24. PMC’s expert admitted “an
`
`NTSC … television transmission that contained analog synchronization signals
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`could not meet the requirement … of a digital information transmission
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`11
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`

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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`unaccompanied by any non-digital information transmission.” Ex. 1051, 20:16-
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`21:3, 22:6-13; Ex. 1054, 23-25.
`
`PMC ignores that this “multi-channel cable transmission” will always be
`
`accompanied by non-digital information, instead focusing on the “one digital data
`
`channel” referenced in Fig. 6C. But even if it was proper to myopically focus on
`
`this single channel (it is not), PMC cannot even establish an “encrypted digital
`
`information
`
`transmission” over
`
`this channel. Rather, PMC combines
`
`the
`
`disclosures of two unrelated embodiments. Response 31-37. PMC first points to
`
`the Wall Street Week example in which closing stock prices are received over the
`
`“digital data channel” of Fig. 6C. Response 31-33. But the stock price information
`
`is never encrypted/decrypted. Ex. 1004, 19:35-41; Ex. 1001 ¶86; Ex. 1051, 44:2-
`
`10. The digital data channel of Fig. 6C is not even connected to a decryptor. Ex.
`
`1004, Fig. 6C. A transmission without encrypted data cannot be the claimed
`
`“encrypted digital information transmission.”
`
`Realizing the Wall Street Week example fails, PMC falsely argues “Fig.
`
`6C’s technique of receiving an all-digital information transmission is also applied
`
`in the Julia Child’s example.” Response 35. But the Julia Child example never
`
`refers to Fig. 6C or a “digital data channel.” Ex. 1004, 20:11-68. PMC argues that
`
`because the 1981 specification describes “[a]n alternate method” in which the
`
`recipe is “located in encoded digital form in the programing transmission received
`
`12
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`

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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
`
`by TV set,” it should be inferred that “in the primary embodiment, the digital
`
`recipe is received in a transmission that is separate from any cable television
`
`transmission.” Response 35. However, the “primary embodiment” merely states
`
`“signal processor, 200, should … instruct tuner, 223, to tune cable converter box,
`
`222, to the appropriate channel to receive the recipe in encoded digital form.” Ex.
`
`1004, 20:32-38. If the recipe were received over an all-digital data channel, the
`
`inventors would have said so, but no such disclosure exists.
`
`The 1981 specification never suggests “the appropriate channel” is anything
`
`but a conventional cable television channel, albeit different from the one on which
`
`the French Chef program is broadcast. Ex. 1004, 20:11-68; Ex. 1001 ¶¶84-85.
`
`While Dr. Weaver argued the encrypted digital recipe must be received over the
`
`“digital data channel” of Fig. 6C, the premise on which he relied—that “cable
`
`converter box 222 simply converted the carrier frequency of the transmission
`
`received by the box to … a standard frequency”—is technically flawed. Ex. 2023
`
`¶183. A PHOSITA would have understood that the circuitry necessary to process
`
`and output digital data received over the “digital data channel” of Fig. 6C could
`
`also extract such data from conventional television programming. Ex. 1053 ¶¶5-8.
`
`This basic error appears to stem from the fact that Dr. Weaver, admittedly, is not
`
`an expert in analog or digital cable television systems. Ex. 1049, 156:2-6, 216:6-
`
`20; Ex. 2023 ¶183 (relying on personal use).
`
`13
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`

`

`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
`
`The Julia Child example further fails to support other elements of claims 20,
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`32, and 33. No “control signal” or “downloadable code” controlling decryption is
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`received via cable converter box 222. The “signal word” Dr. Weaver referenced is
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`received in the analog programming transmission. Ex. 1004, 20:38-43. And the
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`1981 specification only describes receiving a “signal indicat[ing] that the recipe,
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`itself, has been received,” not instructions to store that signal. Ex. 1004, 20:50-59.
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`c.
`How to Grow Grass Example (Fig. 6E)
`PMC argues the receiver station in the 1981 specification may receive an all-
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`digital transmission from a laser videodisc system.4 Response 37. But the 1981
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`specification never describes, or even suggests, that the videodiscs employ all-
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`digital information transmission. Ex. 1004, 21:1-22:4. The evidence establishes
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`that any “conventional laser videodisc” system in 1981 in fact would have been
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`analog, not all-digital. Ex. 1001 ¶87; Ex. 1047, 2-8; Ex. 1048, 329-30.
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`4 Though PMC argues the proximity of the laserdisc player to the receiver station
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`“does not preclude this embodiment from” supporting the claims (Response 39
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`n.5), Dr. Weaver previously testified that information from a device, such as a
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`videodisc player, connected to the receiver is not “transmitted” (Ex. 1049,
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`31:22-32:19).
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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`PMC argues
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`that
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`the
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`laserdisc
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`transmission “contains only digital
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`information, including: signal words of the text of the book,” citing to Mr.
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`Wechselberger for the proposition that “signal words” are digital. Response 38.
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`This is a mischaracterization—as PMC’s expert admitted, the 1981 specification
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`never describes sending the text of the book in digital “signal words.” Ex. 1051,
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`82:11-15. The signal words described in that embodiment, once decrypted, serve
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`only as decryption keys. Ex. 1004, 21:35-43; Ex. 1051, 82:2-10; Response 40.
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`To try and overcome this deficiency, PMC cites to an entirely separate
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`embodiment, stating that the 1981 specification “describes that printed text data
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`destined to be sent and printed by printer 221 (e.g., the text of the ‘How to Grow
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`Grass’ book) are sent in ‘encoded digital form.’” Response 38. But the reference to
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`“encoded digital form” is for the Julia Child recipe, not printed material generally.
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`Ex. 1004, 20:16-38. If anything, the explicit description of one as digitally encoded
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`highlights the absence of such a description in the other. Ex. 1001 ¶87. It does not
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`imply that all material to be printed is received in encoded digital form.
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`PMC further argues print data “would have been encoded in all-digital form,
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`such as ASCII.” Response 39-40. The 1981 specification says nothing of the sort.
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`Ex. 1004, 21:1-22:4; Ex. 1051, 166:24-167:3. In fact, a contemporaneous reference
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`states “one of the first image-document filing models to use a videodisc technology
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`… stores images in binary FM form, not data in digital form.” Ex. 1047, 2.
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`15
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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`Finally, PMC argues “videodiscs could be used to store only digital
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`information in a digital format.”5 Response 38. But PMC relies on portions of
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`Marsh describing “optical digital disc technology.” Ex. 1047, 13-14. As PMC’s
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`expert admitted, Marsh distinguishes “optical digital disc technology” from
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`“consumer videodisc systems … [which] are analog systems.” Ex. 1051, 77:8-12,
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`80:25-81:4; Ex. 1047, 7-14; Ex. 1053 ¶9. It is undisputed that analog laser
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`videodisc systems were available as of November 1981. Ex. 1051, 75:13-16. In
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`contrast, “no computer manufacturer is known to have integrated an optical digital
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`disc with its systems.” Ex. 1047, 14. The “conventional laser videodisc equipment
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`and techniques, well known in the art,” described by the 1981 specification thus
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`could not be an optical, digital system. Ex. 2020, 87:5-12; Ex. 1004, 21:10-15; Ex.
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`1053 ¶¶10-11.
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`PMC does not dispute that conventional laser videodiscs stored and
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`transmitted data in analog form. Response 37-40; Ex. 1051, 66:9-12. Even if
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`conventional laser discs could also store information in digital form, absent an
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`express description of all-digital encoding and transmission in the How to Grow
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`5 Mr. Wechselberger’s reference to Marsh, published in 1981, further confirms he
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`analyzed the 1981 specification as of 1981.
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`16
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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`Grass example, the standard for §112 support is not met. Hyatt, 146 F.3d at 1354;
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`Martin, 823 F.2d at 505; Lockwood, 107 F.3d at 1571-72.
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`2.
`“code” / “downloadable code” (claims 18, 33)
`PMC argues the 1981 specification discloses “code” and “downloadable
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`code” by describing “a code or codes necessary for the decryption of the
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`transmission.” Response 42. The claimed “code,” however, is altogether different
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`than “a code” or “codes,” and PMC’s attempt to conflate the terminology should
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`be rejected. Compare claims 18, 33 (“code”) with claim 3 (“a code”). Moreover,
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`PMC does not even attempt to explain how the 1981 specification supports the
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`claim 33 limitation “selecting, by processing selection criteria, a first signal of said
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`plurality of signals including downloadable code.” Response 42.
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`II. CLAIM CONSTRUCTION6
`A.
`“decrypt”-related terms (all claims)
`PMC re-argues that “decryption” is “a process applied to digital data” and
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`“distinct from ‘descrambling.’” Response 45. PMC’s arguments are just as
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`unavailing as before. The Board’s rejection of PMC’s attempt to exclude
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`6 PMC does not contest Apple’s constructions of “communicating said control
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`signal …” and “processor.”
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`17
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`Petitioner’s Reply to Patent Owner’s Response: IPR2016-01520
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`descrambling of an analog television signal should stand. Institution Decision 19-
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`21.
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`PMC criticizes Apple and the Board for relying “on a single sentence” in the
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`specification. Response 47. That statement, considered in its full context, continues
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`to support Apple’s position (and the Board’s multiple determinations7) that
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`descrambling of analog
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`television
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`transmissions
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`is within
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`the scope of
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`“decrypting.” Ex. 1003, 160:40-65. By stating “decryptors, 107, 224, and 231, may
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`be conventional descramblers, well[] known in the art, that descramble analog
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`te