Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 41
`Entered: September 19, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00754
`Patent 8,559,635 B1
`_______________
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 1
`
`
`Tel: 571-272-7822
`
`
`
`Paper 41
`Entered: September 19, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00754
`Patent 8,559,635 B1
`_______________
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 1
`
`
`
`IPR2016-00754
`Patent 8,559,635 B1
`
`
`I. INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(b), and this Final Written Decision is issued pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`
`that Petitioner has shown by a preponderance of the evidence that claims 4,
`
`7, 13, 21, and 28–30 (“instituted claims”) of U.S. Patent No. 8,559,635 B1
`
`(Ex. 1003, “the ’635 Patent”) are unpatentable. We also determine that
`
`Patent Owner has not met its burden on its Motion to Amend regarding entry
`
`of the proposed substitute claims, and thus, we deny the Motion to Amend.
`
`
`
`A. Procedural History
`
`Apple Inc. (“Petitioner”) filed a petition to institute an inter partes
`
`review of claims 1–4, 7, 13, 18, 20, 21, 28–30, 32 and 33 of the ’635 Patent.
`
`Paper 1 (“Pet.”). Personalized Media Communications LLC (“Patent
`
`Owner”) filed a preliminary response. Paper 7 (“Prelim. Resp.”). Pursuant
`
`to 35 U.S.C. § 314(a), we instituted an inter partes review on four grounds:
`
`(1) Claims 1, 2, 7, 21, and 29 under 35 U.S.C. § 102 as anticipated by
`
`Guillou,1 (2) Claims 4, 13, 28, and 30 under 35 U.S.C. § 103(a) as
`
`unpatentable in view of Guillou, (3) Claims 21 and 28–30 under 35 U.S.C.
`
`§ 103(a) as unpatentable in view of Aminetzah,2 and (4) Claims 1, 2, and 4
`
`under 35 U.S.C. § 103(a) as unpatentable in view of Aminetzah and Bitzer.3
`
`See Paper 8 (“Dec. to Inst.”), 42.
`
`
`1 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”).
`2 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”).
`3 US Patent No. 3,743,767, issued July 3, 1973 (Ex. 1009) (“Bitzer”).
`
`2
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 2
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`IPR2016-00754
`Patent 8,559,635 B1
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`
`After institution of trial, Patent Owner then filed a Patent Owner
`
`Response (Paper 15, “PO Resp.”), to which Petitioner filed a Reply (Paper
`
`23, “Reply”).
`
`In addition, Patent Owner also filed a Contingent Motion to Amend
`
`(Paper 15), to which Petitioner filed an Opposition (Paper 24). Patent
`
`Owner then filed a Reply to Petitioner’s Opposition to the Contingent
`
`Motion. Paper 27.
`
`An oral argument was held on June 6, 2017. A transcript of the oral
`
`argument is included in the record. Paper 40 (“Tr.”).
`
`
`
`B. Additional Proceedings
`
`Petitioner informs us that the ’635 Patent is the subject of a lawsuit:
`
`Personalized Media Communications, LLC v. Amazon.com, Inc., No. 2:15-
`
`cv-1366-JRG–RSP (E.D. Tex. filed July 30, 2015). Pet. 59. We note that
`
`Petitioner filed a second petition challenging the ’635 Patent, for which we
`
`granted partial institution on February 16, 2017. Apple, Inc. v. Personalized
`
`Media Comm. LLC, IPR2016-01520, slip op. at 58 (PTAB Feb. 16, 2017)
`
`(Paper 7). Petitioner also lists a number of related patents involved in
`
`district court cases and other related patents involved in inter partes reviews.
`
`Pet. 59.
`
`
`
`C. The ’635 Patent
`
`The ’635 Patent is titled “Signal Processing Apparatus and Methods”
`
`and generally relates to a unified system of programming communication.
`
`Ex. 1003, Abstr. The challenged claims relate to methods of controlling the
`
`3
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 3
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`
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`IPR2016-00754
`Patent 8,559,635 B1
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`decryption of programming at a subscriber station or a receiver station.
`
`Claim 21 is reproduced below:
`
`21. A method for decryptor activation in a network comprising:
`
`receiving a transmission comprising encrypted materials;
`
`decrypting under first processor control a first portion of said
`encrypted materials in said transmission;
`
`inputting said first portion of said encrypted materials to a
`decryptor;
`
`decrypting under second processor control a second portion of
`said encrypted materials based on said step of decrypting said
`first portion of said encrypted materials.
`
`Id. at 288:61–289:3.
`
`The ’635 Patent describes access control to transmitted content at a
`
`receiver station. Ex. 1003, Abstr. Figure 4 of the ’635 Patent, reproduced
`
`below, illustrates a receiver station:
`
`
`
`4
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`APPLE EXHIBIT 1083
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`IPR2016-00754
`Page 4
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`IPR2016-00754
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`As shown above in Figure 4, the ’635 Patent discloses a receiver station
`
`having signal processor 200 to control tuners 214, 215, and 223, the
`
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`
`230. Id. at 148:30–35. In one example described in the Specification, the
`
`“Wall Street Week” program is transmitted to the receiver station by a cable
`
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`
`end “encrypts the digital audio information of said transmission, in a fashion
`
`well known in the art, using particular cipher algorithm C and cipher key Ca,
`
`then transmits the information of said program on cable channel 13.” Id. at
`
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`
`local-cable-enabling-message (#7), is transmitted with instructions that
`
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`
`the instructions causes controller 20 to receive the cable channel
`
`transmission, select the information of a cipher key Ca from among the
`
`information portion, and transfer the cipher key to decryptor 107. Id. at
`
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`
`decryptor 107 then decrypts “using said key information and selected
`
`decryption cipher algorithm C, and output[s] [the] decrypted information of
`
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`
`152:48–51.
`
`Subsequently, a second SPAM message that consists of an “01”
`
`header provides “1st-stage-enable-WSW-program” instructions as the
`
`information segment information. Id. at 153:38–43. Executing the “1st-
`
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`
`first stage of decrypting the video information of the “Wall Street Week”
`
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`
`5
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`APPLE EXHIBIT 1083
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`IPR2016-00754
`Page 5
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`IPR2016-00754
`Patent 8,559,635 B1
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`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`
`received information using decryption cipher key Ba and decryption cipher
`
`algorithm B. Id. at 154:28–33.
`
`A third SPAM message provides “2nd-WSW-program enabling-
`
`message” instructions, causing the controller to affect a second stage of
`
`decrypting the digital video information of “Wall Street Week.” Id. at
`
`156:62–157:5. The second stage of decrypting the video information of the
`
`“Wall Street Week” program transmission is completed using the decryption
`
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`
`station to commence the transfer of the decrypted television information of
`
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`
`Id. at 159:55–59.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act,4 the Board will interpret claims of an unexpired
`
`patent using the broadest reasonable construction in light of the
`
`Specification of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`
`broadest reasonable interpretation standard as the claim interpretation
`
`standard to be applied in inter partes reviews). Petitioner and Patent Owner
`
`dispute several claim terms that require construction.
`
`
`4 Pub. L. No. 112-29,125 Stat. 284 (2011).
`
`6
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 6
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`IPR2016-00754
`Patent 8,559,635 B1
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`
`1. “decrypt”
`
`Independent claims 2, 13, and 21 recite the phrase above. Citing
`
`passages from the ’635 Patent, a related IPR decision, its Declarant, and a
`
`related District Court case, Petitioner contends that decryption and
`
`encryption are not limited to operations on digital information, but include
`
`descrambling and scrambling operations on analog information. See Pet. 3–
`
`4 (citing Ex. 1001 ¶¶ 62–65; Ex. 1003, 160:52–55; Ex. 1011, 7–11; Ex.
`
`1012, 2–5; Ex. 1013, 25–26; Ex. 1014, 2–4; Ex. 1017, 29).
`
`Patent Owner, citing the ’635 Patent, which claims priority to U.S.
`
`Patent No. 4,694,490 (“’490 patent”), related patent reexaminations, a
`
`District Court case, and other evidence, contends that in line with
`
`convention, the ‘635 Patent makes a distinction between encryption and
`
`scrambling, with the former limited to digital data and the latter limited to
`
`analog data. See PO Resp. 6–18 (citing Ex. 1003, 13:65–17, 16:40–45,
`
`144:9–19, 148:11–16; 160:40–55; Ex. 1004, 3:56–60; 7:36–49, 8:35–44,
`
`19:41–20:7, 19:57–20:2, 20:11–68; Ex. 1027, 4–5; Ex. 1035, 10–11;
`
`Ex. 1037, 10–11; Ex. 1039, 10; Ex. 2001 ¶¶46–71; Ex. 2003, 68–69; Ex.
`
`2005, 53–54; Ex. 2006, 41; Ex. 2008, 70:12–23, 98:10–99:5, 135:2–8; Ex.
`
`2009, 30; Ex. 2010, 2, n. 1; Ex. 2011 ¶¶ 16, 18–19; Ex. 2016, 1330, 1362;
`
`Ex. 2019, ¶¶ 48–53, 62–70; Ex. 2022 ¶¶ 92–94; Ex. 2023, 16–17; Ex. 2025,
`
`16–17; Ex. 2031, 77).
`
`The ’635 Patent discloses that programming includes all manner of
`
`programming, including conventional analog television signals. “The term
`
`‘programming’ refers to everything that is transmitted electronically to
`
`entertain, instruct or inform, including television, radio, broadcast print, and
`
`computer programming was well as combined medium programming.”
`
`7
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 7
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`IPR2016-00754
`Patent 8,559,635 B1
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`Ex. 1003, 6:31–34. Similar to the challenged claims, and as the cited
`
`passages by Patent Owner show, the ’490 patent and the ’635 Patent
`
`describe decryptors as applying to programming. For example, “[a]s regards
`
`decoders and decryptors, many different systems exist, at present, that
`
`enable programming suppliers to restrict the use of transmitted programming
`
`to only duly authorized subscribers.” Ex. 1003, 5:28–31. The ’635 Patent
`
`also states that “[t]his prior art, too, is limited. It has no capacity for
`
`decrypting combined media programming.” Id. at 5:38–39 (emphasis
`
`added). Similarly, the ’490 patent discloses that “[t]he signals that enable
`
`the decrypt[o]r/interrupter, 101, to decrypt and/or transfer program[m]ing
`
`uninterrupted may be embedded in the program[m]ing or may be
`
`elsewhere.” Ex. 1004, 13:17–20 (emphasis added).
`
`These passages (and others) explicitly show that decrypting
`
`programming includes decrypting the programming itself (i.e., including
`
`analog signals) and the digital keys “embedded in the program[m]ing.” See
`
`id. During the Oral Hearing, Patent Owner acknowledged that the ’490
`
`patent and the ’635 Patent deal with protecting all types of programming
`
`(after arguing that the “Julia Child’s” “The French Chef” television show
`
`example involves “decryption” of a digital recipe):
`
`JUDGE EASTHOM: I understand there are digital --
`
` MR. KLINE: Right.
`
`JUDGE EASTHOM: -- the recipe was digitally encrypted, I
`understand that. So my question is, wasn’t the thrust of the
`whole patent to protect all manner of transmissions?
` MR. KLINE: I certainly -- in a variety of ways, and it's
`very -- even -- you know, relative to the ’87 specification, the
`’490 specification, it certainly is not as voluminous, but it is
`still quite thorough on its own, longer than most applications.
`So it certainly describes a wide variety of transmissions and a
`
`8
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`APPLE EXHIBIT 1083
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`IPR2016-00754
`Page 8
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`
`wide variety of programming.
`This will come up again quite a bit when we talk about
`priority, which is in the next IPR proceeding that we are going
`to move on to. So the ’490 specification certainly describes a
`variety of programming as a subject of its disclosure,
`absolutely.
`
`Tr. 39:5–18 (emphases added).
`
`Patent Owner also argued “we don’t even use the word ‘scrambling’
`
`in the 1981 application.” Id. at 38:1–2; accord PO Resp. 62 (“the 1981
`
`specification is completely devoid of any discussion of
`
`scrambling/descrambling.”). But, as the panel pointed out during the Oral
`
`Hearing, if the ’490 patent does not mention scrambling (or descrambling)
`
`anywhere, and it protects analog programming, then decrypting and
`
`encrypting must mean the same thing as descrambling and scrambling, i.e.,
`
`they apply to analog programming in the context of the ’490 patent. See id.
`
`at 38:15–18 (“if you say you don’t have anything about descrambling in
`
`there, then you must be talking about protecting [programs] with decrypting,
`
`which is the same thing as descrambling because [the programs include]
`
`analog.”).
`
`In other words, notwithstanding Patent Owner’s evidence and
`
`arguments, the ’490 patent and the ‘635 Patent describe encrypting and
`
`decrypting analog data, because both encompass decrypting general or
`
`conventional television programming, as also discussed above.
`
`The ’635 Patent states that “the invention is not to be unduly
`
`restricted” and lists “for example, the ‘Wall Street Week’ transmission may
`
`be of conventional analog television, and the decrypt[o]rs, 107, 224, and
`
`231, may be conventional descramblers, well known in the art, that
`
`descramble analog television transmissions and are actuated by receiving
`
`9
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`APPLE EXHIBIT 1083
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`IPR2016-00754
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`digital key information.” Ex. 1003, 160:51–55 (emphasis added). This
`
`passage further supports Petitioner’s view by equating decryption and
`
`descrambling with respect to certain embodiments, using “digital key
`
`information.” See Pet. 3 (citing Ex. 1003, 160:52–55; Ex. 1013, 25–26); Pet
`
`Reply 1–4 (discussing the “controversial” passage).
`
`In response, Patent Owner contends the passage supports its view.
`
`Patent Owner explains that Petitioner, a prior Board decision, one District
`
`Court (see Ex. 1017, 29), and this panel, all interpret this particular
`
`disclosure out of context, because the passage refers to alternative
`
`embodiments, and “contrasts, rather than conflates, digital decryption with
`
`analog descrambling since it confirms a conventional analog television
`
`transmission requires conventional (analog) descramblers instead of digital
`
`decryptors.” PO Resp. 9–11 (citing Pet. 7; Ex. 1003, 160:40–55; Ex. 2019
`
`¶¶ 67–70); but see Ex. 1017, 29 (“The court rejects PMC’s attempt to limit
`
`the encrypt/decrypt terms to digital data.”) (emphasis added).
`
`Contrary to Patent Owner’s view, the disputed passage in the
`
`’635 Patent specifically lists descramblers as one example of a type of
`
`decryptor “without . . . departing from the spirit of the invention.” Ex. 1003,
`
`160:44–45. The “controversial” sentence states “the decryptors, 107, 224,
`
`and 231, may be conventional descramblers.” Ex. 1003, 159:46–61
`
`(emphasis added). It does not say “decryptors . . . may be replaced by . . .
`
`descramblers,” which is what Patent Owner urges. PO Resp. 10 (arguing the
`
`sentence actually means “‘conventional (analog) descramblers’ would be
`
`used in place of, or as an alternative to, the ‘decryptors, 107, 224, and 231’
`
`if and when “the ‘Wall Street Week’ transmission [is] of conventional
`
`analog television” instead of digital television programming”). As Patent
`
`10
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`APPLE EXHIBIT 1083
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`Owner recognizes, the passage lists the “Wall Street Week” conventional
`
`analog television example as using descramblers. See Ex. 1003, 160:40–55;
`
`PO Resp. 9–11.
`
`Having defined “programming” broadly, as discussed above, Patent
`
`Owner does not clearly narrow it to “digital programming” by lexicography,
`
`prosecution history, or otherwise. As noted above, according to the
`
`’635 Patent, “[t]he term ‘programming’ refers to everything that is
`
`transmitted electronically to entertain, instruct or inform, including
`
`television, radio, broadcast print, and computer programming was well as
`
`combined medium programming.” Ex. 1003, 6:31–34. Of course,
`
`“embedded signals contain digital information,” according to the
`
`’635 Patent. Id. at 7:58–59. Patent Owner, however, does not dispute that
`
`“programming” includes “everything that is transmitted electronically.” As
`
`discussed above, the ’635 Patent describes encrypted programming and
`
`encrypted signals in programming––thereby showing that encrypting or
`
`decrypting programming does not transform the programming into digital
`
`programming. For example, “[i]n FIG. 4E, the signal or signals needed to
`
`operate decryptor/interrupt[e]r, 115, correctly may be on a separate channel
`
`of programing that is, itself, encrypted in transmission.” Ex. 1004, 15:11–
`
`14 (emphasis added).
`
`Petitioner contends that “PMC’s argument that the ‘controversial’
`
`sentence reflects an alternative embodiment is inconsistent with the text and
`
`presumes that ‘decrypting’ must include solely digital information.”
`
`Pet. Reply 2. In context, Petitioner persuasively points out “[t]he
`
`‘controversial’ sentence is consistent with [mixed analog/digital signal
`
`embodiments], as it states that the decryptors may be conventional
`
`11
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`descramblers ‘that descramble analog television transmissions and are
`
`actuated by receiving digital key information.’” Id. at 3 (quoting Ex. 1003,
`
`160:51–55) (emphasis added). As Petitioner also persuasively points out,
`
`“[t]he specification lists changes that could be made to the example that
`
`would still fall within the spirit of the invention—such as descrambling
`
`where a device is labeled ‘decryptor.’” Id. at 2 (citing Ex. 1003, 160:40–
`
`161:21).
`
`a. Past Statements by Mr. Wechselberger
`
`Patent Owner’s contentions that Petitioner’s expert,
`
`Mr. Wechselberger, supports Patent Owner based on an article he wrote, and
`
`his prior testimony, fail to account for the fact that the ’635 Patent and ’490
`
`patent conflate the meaning of terms as discussed above. See PO Resp. 15–
`
`16 (citing Ex. 2010 ¶¶ 18–20, Ex. 1027, 4–5). Furthermore, contrary to
`
`Patent Owner’s characterizations, Mr. Wechselberger’s article and prior
`
`testimony do not contradict his declaration testimony that he attempted to
`
`clarify confusion between use of the terms scrambling and encryption during
`
`the mid-1980s––the period between the filing of the’490 patent in 1981 and
`
`the continuation-in-part application in 1987, which issued as U.S. Patent No.
`
`4,965,825 (“’825 patent”). See Ex. 1001 ¶¶ 62–63 (describing confusion
`
`over the terms encryption and scrambling and addressing his 1983 article
`
`(Ex. 1027)); Ex. 2011 ¶ 18 & n.2 (noting that in 1987, “due to the evolution
`
`of the technology,” he would not be “surpris[ed]” to find scrambling used
`
`“incorrectly” in some references to refer to “hard encryption processes
`
`performed on digital signals”); Ex. 1027, 1 (“One major area of confusion
`
`lies in the technical differences between encryption and scrambling.”).
`
`Patent Owner responds to these preliminary findings in the Institution
`
`12
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`Decision by focusing on a statement by Mr. Wechselberger about a
`
`convention “[b]y the mid-1980s” (citing Ex. 2011 ¶ 18), and also about an
`
`understanding of scrambling in February 1987, but Patent Owner does not
`
`address the current Declaration of Mr. Wechselberger noted above (Ex.
`
`2011 ¶ 18 & n.2), which puts the prior testimony and article statement in
`
`context. See PO Resp. 15–17; Dec. to Inst., 7–8 (citing Ex. 1001 ¶¶ 62–65).
`
`In the cited footnote, Mr. Wechselberger notes the incorrect use of the terms
`
`at issue and also cogently predicts the situation involved here: “However,
`
`the specific system described would typically indicate to one of skill in the
`
`art which meaning was intended.” Ex. 2011 ¶ 18 n.2.
`
`The evidence shows the meaning of the terms to be in flux, with no
`
`established convention in 1981 existing at the time of filing of the
`
`’490 patent, and with the “incorrect” use of “scrambling” and
`
`“encrypting” continuing up to 1987. The fact that the ’635 Patent claims
`
`CIP status back to the ’490 patent further obscures what interpretations of
`
`various claim terms carry over to the 1987 filing of the ’825 patent.
`
`Nevertheless, if anything, the cited ’635 Patent passages and other
`
`cited passages in the ’490 patent support Mr. Wechselberger’s testimony,
`
`because they refer to the Wall Street Week television program and
`
`decrypting programming, each of which includes analog and digital
`
`information, and the Wall Street Week example specifically refers to
`
`decryptors as being descramblers activated via digital keys (as discussed
`
`above). In other words, the two patents indicate that with respect to mixed
`
`analog and digital systems, the terms encryption and scrambling, or
`
`decryption and descrambling, were being used interchangeably (including in
`
`the ’635 Patent and ’490 patent––just as Mr. Wechselberger testifies in
`
`13
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 13
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`IPR2016-00754
`Patent 8,559,635 B1
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`describing the industry during and/or prior to the mid-1980s. See Ex. 1001
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`¶¶ 62–63; Ex. 1003, 160:40–55; Reply Br. 11–12. None of Mr.
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`Wechselberger’s cited prior statements selected by Patent Owner relate to
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`the context of the claims and disclosures at issue here.
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`Accordingly, and considering the discussion below in section b
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`(“Prior Proceedings”) and section c (“Prosecution History”), we construe the
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`term “decrypt” with respect to the ‘635 Patent to include descrambling. See
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`Ex. 1003, 160:40–55.
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`b. Prior Proceedings
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`Patent Owner also provides arguments that rely on past Board
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`decisions and other court decisions. See PO Resp. 14–15 (citing Ex. 2003,
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`68–69; Ex. 2005, 53–54; Ex. 2010, 2, n.1; Ex. 2025, 16). Those arguments,
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`however, fail to acknowledge that the prior decisions did not have the
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`benefit of this record evidence, and specifically did not consider the cited
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`passage in the ’635 Patent regarding decryptors that may be descramblers or
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`the cited passages in the ’635 Patent and ’490 patent that specifically
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`describe decrypting signals and signals within programming––the latter a
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`generic term that includes “everything that is transmitted electronically.”
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`Furthermore, in at least one relied upon reexamination proceeding
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`(Reexam. Control No. 90/006,563 (“’563 reexamination”)), Patentee
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`contended (in a reply brief to the Board) that the inventor was acting as a
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`“lexicographer,” so that “the inventor expressly advised the reader that by
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`the terms ‘encryption’ and ‘decryption’ he meant something beyond the
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`conventional scrambling/descrambling relied upon by the Examiner, such as
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`the use of a decryption key, which is not disclosed or suggested in any of the
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`references relied upon by the Examiner.” Ex. 2006, 41 (emphases added).
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`14
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 14
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`IPR2016-00754
`Patent 8,559,635 B1
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`This reexamination argument contradicts Patent Owner’s arguments here
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`that its construction tracks the plain meaning of encrypting and decrypting
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`programming, because a lexicographer’s definition necessarily departs from
`
`the plain meaning of a term, indicating that skilled artisans normally
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`interchanged scrambling and encrypting at time of invention (at least when
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`scrambling employs some type of a decryption key). Patent Owner does not
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`argue here that the ’635 Patent sets forth a lexicographic definition of a
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`decryption or encryption. Furthermore, (then) Patentee’s reexamination
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`argument in its reply brief shows that Patentee attempted to capture
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`“conventional scrambling/descrambling” that includes “the use of a
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`decryption key, which is not disclosed or suggested in any of the references
`
`relied upon by the Examiner.” See Ex. 2006, 41 (emphasis added).
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`Patent Owner also points to a BPAI appeal decision in combined
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`reexamination proceedings (Ex. 2003, 68–69, ’563 reexamination) and
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`another District Court proceeding (Ex. 2025, 16). PO Resp. 14–15. In the
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`’563 reexamination, Patent Owner cites to the Board’s finding, inter alia,
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`that encryption is “distinct from scrambling.” See Ex. 2003, 68
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`(“interpreting a decryptor . . . more generically as a decoder is an improper
`
`broadening of the claim term”). Significantly, the Board noted in the
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`’563 patent reexamination that there was “nothing in the instant [’563
`
`patent] Specification that would guide such an interpretation” of decryption
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`to include descrambling. Id. (emphasis added). Here, however, the opposite
`
`is true. The Specification of the ’635 Patent expressly provides that the term
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`decrypting, used within the ’635 Patent, includes descrambling. See Ex.
`
`1003, 160:40–55.
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`In short, in the cited prior proceedings, neither the Board nor the
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`15
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 15
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`IPR2016-00754
`Patent 8,559,635 B1
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`District Court discussed how the ’490 patent and ’635 Patent describe both
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`decrypting of programming and decrypting signals embedded in
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`programming, which implies decrypting programming relates to analog
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`information. In the cited District Court case (Ex. 2025, 16), the District
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`Court relies on the above-discussed ’536 reexamination reply brief
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`disclaimer and reasons, in part, “[i]n essence, the inventor expressly advised
`
`the reader that terms ‘encryption’ and ‘decryption’ in the patent meant
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`something beyond conventional scrambling/descrambling.” But the phrase
`
`at issue, as discussed above, states going “beyond the conventional
`
`scrambling/descrambling relied upon by the Examiner, such as the use of a
`
`decryption key.” Ex. 2006, 41 (emphasis added). That decryption key goes
`
`beyond conventional scrambling, according to Patent Owner’s prior reply
`
`brief arguments.
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`Although some of the evidence here overlaps with the District Court
`
`proceeding (Ex. 2025), in addition to a different claim construction standard,
`
`that Court had before it different evidence and argument that did not take
`
`into account the broad nature of “programming,” and broad disclosures
`
`describing decrypting programming that include analog television with
`
`further disclosures separately describing decrypting digital information
`
`embedded in the (analog) programming (which itself is described as
`
`decrypted).
`
`Another District Court, relying on similar evidence, reached the same
`
`conclusion as this Board panel that encryption and decryption are not limited
`
`to digital data. See Ex. 1017, 29 (“The court rejects PMC’s attempt to limit
`
`the encrypt/decrypt terms to digital data.”). The distinct claim terms at issue
`
`here cannot be attached to an alleged disclaimer that involves different
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`16
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 16
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`IPR2016-00754
`Patent 8,559,635 B1
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`surrounding claim language for terms related to encryption. At a minimum,
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`the various previous arguments show that any purported disclaimer does not
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`satisfy the legal requirement that a disclaimer must be clear and
`
`unequivocal. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,
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`1309 (Fed. Cir. 2014) (“The standards for finding lexicography and
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`disavowal are exacting.”); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
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`1314, 1325–26 (Fed. Cir. 2003) (“[F]or prosecution disclaimer to attach,
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`our precedent requires that the alleged disavowing actions or statements
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`made during prosecution be both clear and unmistakable.”).
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`c. Prosecution History
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`Although a brief discussion of the prosecution history occurs in the
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`proceeding section based on Patent Owner’s arguments, in related
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`arguments, Patent Owner maintains in a separate section of its Response that
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`it “repeatedly and consistently confirmed during prosecution, reexamination,
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`and litigation proceedings that the claimed ‘decrypting’ terms are limited to
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`a digital context.” PO Resp. 12–14.
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`Patent Owner’s citation to general statements allegedly disavowing
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`the scope of encryption and decryption as not including scrambling, and
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`descrambling during prosecution of other patents similarly do not account
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`for the specific claim terms at issue in this proceeding. See PO Resp. 12–13
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`(citing Ex. 2009, 30; Ex. 2006, 41; Ex. 2031, 77). For example, our
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`construction here is consistent with that of the ’563 reexamination, because
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`Patent Owner argues “encryption and decryption” only differ “beyond . . .
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`conventional scrambling/descrambling” by “the use of a decryption key.”
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`Ex. 2006, 41 (Patent Owner’s reply brief in the 90/006,563 reexamination
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`proceeding).
`
`17
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 17
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`IPR2016-00754
`Patent 8,559,635 B1
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`The “doctrine [of prosecution history (file wrapper) estoppel] is an
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`equitable tool for determining the permissible scope of patent claims.”
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`Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255,
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`258 (Fed. Cir. 1985). Because the prosecution history does not reveal a
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`clear disavowal of claim scope, the public should not be bound via a
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`doctrine of equity to a construction that would render the claims superfluous,
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`and contradict the meaning of decrypting and programming as described in
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`the patents by stripping their breadth to all-digital applications. See Tempo
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`Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014) (The court
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`“observes that the PTO is under no obligation to accept a claim construction
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`proffered as a prosecution history disclaimer.” (Emphasis added)).
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`Accordingly, we construe the term “decrypt” with respect to the
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`’635 Patent to include descrambling.
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`
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`2. “processor”
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`Claim 18 recites a “processor” and claim 21 recites a “decrypting
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`under a first processor control” and “decrypting under a second processor
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`control.” In the Institution Decision, we preliminarily determined “a
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`processor means ‘a device that operates on data.’” Dec. to Inst., 8–9.
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`Petitioner agrees with the construction. See Pet. Reply 7. Patent
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`Owner disputes the construction of “processor.” PO Resp. 22–27.
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`According to Patent Owner, “processor” should be construed according to its
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`plain ordinary meaning as “a device that performs operations according to
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`instructions.” Id. at 22 (citing 2019 ¶¶79–88). Patent Owner contends the
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`specifications “consistently describe[] processors as devices that operate
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`pursuant to instructions.” Id. at 23.
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`18
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`APPLE EXHIBIT 1083
`APPLE v. PMC
`IPR2016-00754
`Page 18
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`IPR2016-00754
`Patent 8,559,635 B1
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`Petitioner contends that the ’635 Patent describes a variety of
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`processors, including hardwired devices that process data. Pet. 5 (citing
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`Ex. 1003, 135:10–15 (decoders 30 and 40 process information), 75:49–55
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`(buffer/comparator 8 processes data)). The ’490 patent describes “pass[ing]
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`a signal word to signal processor, 200, which, in a predetermined fashion,
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`signal processor, 200, decrypts and transfers to decrypt[o]r, 224, to serve as
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`the code upon which decrypt[o]r, 224, will decrypt the incoming encrypted
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`recipe.” Ex. 1004, 20:39–43. With respect to processor instructions,
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`Petitioner also notes “the specification discloses that an ‘interrupt signal’
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`informs a control processor and causes the control processor to act in a
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`‘predetermined fashion.’” Pet. Reply 14 (citing Ex. 1003, 110:44–54).
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`Moreover, the ’635 Patent sta
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