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`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 SUR-REPLY IN OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`I.
`II.
`
`2.
`
`3.
`
`4.
`
`TABLE OF CONTENTS
`The Substitute Claims Do Not Satisfy § 101. .............................................. 1
`The Substitute Claims Do Not Satisfy § 112. .............................................. 2
`A.
`Substitute Claim 41 Is Not Supported by the Specification. ................ 3
`B.
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification. ......................................................................................... 4
`Substitute Claims 44-48 Are Not Supported by the
`Specification. ......................................................................................... 5
`1.
`“identifying a cipher algorithm from a plurality of
`preprogrammed cipher algorithms…” (substitute claims
`44, 45, 47, 48) ............................................................................. 5
`receiving an “encrypted digital information transmission
`… unaccompanied by any non-digital information
`transmission” (substitute claims 45-48) ...................................... 6
`“communicating … unique digital data to a remote site”
`(substitute claims 44-48) ............................................................. 7
`“selecting, by processing selection criteria, a first signal
`of said plurality of signals including downloadable code”
`(substitute claim 48) .................................................................... 7
`III. Substitute Claims 41-48 Would Have Been Obvious to a Person of
`Ordinary Skill In the Art .............................................................................. 8
`A.
`Substitute Claims 41 Is Unpatentable Over Campbell. ......................... 8
`B.
`Substitute Claims 42 and 43 Are Unpatentable Over Seth-
`Smith...................................................................................................... 9
`Substitute Claims 44-48 Are Unpatentable Over Chandra. ................ 10
`
`C.
`
`C.
`
`
`
`i
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`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
`758 F.3d 1344 (Fed. Cir. 2014) .............................................................................. 2
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .............................................................................. 3
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013) .............................................................................. 3
`Statutes
`35 U.S.C. §101 ........................................................................................................... 1
`35 U.S.C. §103 ........................................................................................................... 8
`35 U.S.C. §112 .................................................................................................. 1, 2, 3
`
`
`
`
`ii
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`
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Regardless of who carries the burden on PMC’s Motion to Amend, Apple has
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`convincingly demonstrated that the Substitute Claims are not patentable for several
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`independent reasons. As a threshold matter, the Substitute Claims do not satisfy
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`§101, and PMC’s effort to distinguish the Federal Circuit’s §101 invalidation of 58
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`closely-related PMC claims fails. The Substitute Claims also fail to meet the written
`
`description requirement for several limitations and thus are not patentable under
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`§112. Finally, Apple has demonstrated—with unrebutted expert testimony and
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`evidence—that the Substitute Claims are nevertheless obvious, and should be
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`rejected on this basis as well.
`
`I.
`
`THE SUBSTITUTE CLAIMS DO NOT SATISFY § 101.
`PMC’s rhetoric cannot change the fact that its Substitute Claims are in some
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`cases nearly identical to, and in all cases indistinguishable from, dozens of PMC
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`claims the Federal Circuit has already invalidated as failing to claim patentable
`
`subject matter under §101. PMC tries but fails to distinguish the Substitute Claims
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`from Claim 1 of the ’304 patent—affirmed invalid under §101 by the Federal Circuit.
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`For example, the only differences between Claim 1 of the ’304 patent and Substitute
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`Claim 43 of the ’635 patent is the presence of a second decryptor and additional
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`abstract steps PMC proposes to add through amendment. Compare US 7,801,304
`
`with Mot. at A5. But the number of decryptors does not affect the §101 analysis; two
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`decryptors are no less abstract than one. Nor does the amendment impact the §101
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`analysis, as the added step in Substitute Claim 43 of “using one of a plurality of
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`cipher algorithms”—which PMC argues is the “concrete step” in this claim (Reply
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`at 1)—is more abstract than the many other limitations that did not save these claims.
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`See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
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`(Fed. Cir. 2014) (without more, a process that employs “mathematical algorithms”
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`to manipulate and generate information is not patent eligible). The other Substitute
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`Claims likewise repeat abstract and non-transformative steps that have already been
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`found by the Federal Circuit to fall short of creating patentable subject matter, or
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`otherwise claim the same abstract concepts with slightly different words.
`
`II. THE SUBSTITUTE CLAIMS DO NOT SATISFY § 112.
`Apple has also established that the Substitute Claims do not satisfy §112. Opp.
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`at 5-17. PMC’s reply argument begins by immediately contradicting itself. PMC
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`states that it “relies on a single embodiment—the embodiment in Example #7—to
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`support each original claim and its proposed amendment” (Reply at 3), yet the
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`primary embodiment relied on for five of the eight Substitute Claims is not Example
`
`#7, but instead the “Exotic Meals of India” example. Opp. at 12. PMC admits both
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`of these examples have “gaps” and tries to backfill the holes by identifying (via
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`hindsight) what it believes is “the obvious choice to fill in the gaps.” Reply at 3.
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`While the “Exotic Meals of India” example and Example #7 occasionally reference
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`Example #4 to describe previously-disclosed features, nothing in the ’413
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`2
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Application even remotely suggests generally combining these three distinct
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`embodiments, as PMC attempts to do. Under the law, PMC cannot rely on a
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`combination of disclosures from different embodiments to satisfy §112 by asserting
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`that the combination is “obvious.” See Lockwood v. Am. Airlines, Inc., 107 F.3d
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`1565, 1571-72 (Fed. Cir. 1997).
`
`PMC’s argument that it is not required “to show support for the original
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`limitation” (Reply at 3) is wrong. The Federal Circuit has made clear that a claim
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`must have §112 support “as an integrated whole,” which includes all limitations.
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`Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed.
`
`Cir. 2013). Respironics follows, and in fact quotes, Novozymes. Opp. at 7-8.
`
`A.
`Substitute Claim 41 Is Not Supported by the Specification.
`Apple has shown that the “incorporate-and-retain-Specific-WSW-Enabling-
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`message instructions,” identified by PMC as the second instruct signal of the claim,
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`are not transmitted by the remote transmitter station, as required. Opp. at 9. Faced
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`with this evidence, PMC reverses course in its Reply and now identifies a different
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`instruction, “enable-WSW instructions,” as allegedly meeting the second instruct
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`signal. Reply at 4. But the enable-WSW instructions also fail to provide written
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`description support because they do not meet other requirements of the claims.
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`In particular, Substitute Claim 41 requires “one or more second instruct
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`signals which operate at the subscriber station to identify and decrypt said unit of
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`3
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`digital programming or said one or more first instruct signals.” Mot. at A2. The
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`enable-WSW instructions do not perform the claimed decrypting functions. Ex. 2208
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`at 296:26-297:2. Rather, the audio of the Wall Street Week program is decrypted by
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`“enable-CC13 instructions,” while the video of that program is decrypted, in two
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`stages, by “1st-stage-enable-WSW-program instructions” and “2nd-stage-enable-
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`WSW-program instructions.” Id. at 294:28-296:3, 298:17-21, 305:9-16. And the
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`“first instruct signal” identified by PMC is not encrypted/decrypted at all. Mot. at
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`B10-11. Additionally, PMC falsely accuses Apple of misquoting the claim language,
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`when Apple did no such thing. Opp. at 8-9; Reply at 4. Apple accurately
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`characterizes the claim as requiring distinct “receiving” and “communicating” steps,
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`whereas it is PMC who attempts to read out the claimed “receiving” step. Id.
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`B.
`
`Substitute Claims 42 and 43 Are Not Supported by the
`Specification.
`Apple has demonstrated that “local-cable-enabling-message (#7),” identified
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`by PMC as the claimed “first encrypted digital control signal portion,” is neither
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`encrypted nor decrypted. Opp. at 10-11. In Reply, PMC argues “[t]here would be no
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`reason to transfer the information to a decryptor unless that information is
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`encrypted.” Reply at 5. But the information of local-cable-enabling-message (#7) is
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`not transferred to a decryptor; it is transferred to controller 20. Ex. 2208 at 291:33-
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`292:6. PMC accuses Apple of taking Dr. Dorney’s admission out of context, but Dr.
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`Dorney’s assertion was clear: “I asserted that ‘Local-cable-enabling-message (#7) is
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`4
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`unencrypted digital information’ in an effort to demonstrate unencrypted
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`information in the transmission.” Ex. 2224 at 14-15.
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`Apple further demonstrated the ’413 Application fails to enable “digital
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`video,” as claimed. In a detailed opinion analyzing the same specification in a related
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`proceeding, the Board agreed. Ex. 1082 (IPR2016-00755 Final Written Dec.) at 122-
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`32. PMC does not (and cannot) substantively respond to this argument. Rather, PMC
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`argues that the Substitute Claims assert priority to 1987, not 1981. Reply at 6. Mr.
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`Wechselberger’s unrebutted testimony demonstrated that digital video over cable
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`was not enabled as of 1987.1 Ex. 1053 ¶¶21-28. Indeed, as this Board recently noted,
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`PMC’s own expert described digital television as “nascent technology” and agreed
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`“digital television may have been in its infancy in 1981 and 1987.” Ex. 1082 at 128
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`(citing IPR2016-00755, Ex. 2022 ¶¶135, 141).
`
`C.
`
`Substitute Claims 44-48 Are Not Supported by the Specification.
`1.
`“identifying a cipher algorithm from a plurality of
`preprogrammed cipher algorithms…” (substitute claims 44,
`45, 47, 48)
`Apple has shown that the “Exotic Meals of India” embodiment, relied on by
`
`PMC, says nothing of cipher algorithms, and thus fails to support the claims that
`
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`1 In one instance, Apple’s Opposition incorrectly referred to 1981 (rather than
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`1987), but there is no dispute that the issue and evidence pertain to 1987.
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`5
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`recite this limitation. Opp. at 13-15. PMC’s Reply all but concedes this point, citing
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`no relevant disclosure from this embodiment. Instead, PMC argues that “Harvey et
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`al.”—that is, the entire 602-page ’413 Application—“discloses selection of at least
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`cipher algorithms A, B, or C, or decryptor 39K, which has its own cipher algorithm.”
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`Reply at 6. PMC incorrectly concludes on this basis that, to decrypt properly, the
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`receiver station must first identify a cipher algorithm among a plurality of options.
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`Id. at 6-7. However, the ’413 Application specifically contrasts the ability to select
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`decryption algorithms (unique to the Wall Street Week example, Fig. 4) with the use
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`of “preprogrammed,” or fixed, algorithms (in all other examples). See Ex. 2208 at
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`278:24-32, 279:30-280:35. There is simply no indication that receiver stations in the
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`other examples have “a plurality of preprogrammed cipher algorithms.”
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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)
`Apple has demonstrated that the “Exotic Meals of India” example fails to
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`describe an “encrypted digital information transmission … unaccompanied by any
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`non-digital information transmission.” Opp. at 15-16. In reply, PMC argues the
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`output of cable converter box 222 “must … be a digital data channel.” Reply at 7.
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`But PMC’s argument relies on the false premise that the “all signal decoder”
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`referenced in that example can receive only digital signals. Mot. at B50. Not so. The
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`’413 Application describes that the purpose of the all signal decoder is to receive
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`6
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`analog transmissions, such as television and radio, and to detect and extract digital
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`signals embedded therein. Ex. 2208 at 316:19-317:1, 19:18-28, 36:1-14. Nothing in
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`the example describes or necessitates an all-digital transmission.
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`3.
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`“communicating … unique digital data to a remote site”
`(substitute claims 44-48)
`As Apple explained, PMC has failed to identify any relevant disclosure from
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`the “Exotic Meals of India” example. Opp at 16. PMC’s reliance on receipt of “unit
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`code identification information” to support this limitation is misplaced. Reply at 7-
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`8. Nothing in the disclosure cited by PMC from this example describes that the unit
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`code “enables a fee to be charged … by transmission of the meter-monitor
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`information to a billing station,” as PMC argues. Id. That methods described in other
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`embodiments of the ’413 Application may include such a step is no basis for
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`assuming that it is disclosed or otherwise must occur in this embodiment.
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`4.
`
`“selecting, by processing selection criteria, a first signal of
`said plurality of signals including downloadable code”
`(substitute claim 48)
`Apple has shown the disclosure cited by PMC for this limitation does not
`
`support the proposed claim language. Opp. at 16-17. PMC’s argument, that the
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`header of a particular message “informs the receiving station which format … [is]
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`appropriate to understand the pieces of a given transmission,” is unsupported. Reply
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`at 8. Nothing in the disclosure cited by PMC or elsewhere in the ’413 Application
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`describes a receiver station selecting from among a plurality of signals on the basis
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`7
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`of the header. The header merely indicates whether a particular command includes
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`“meter-monitor” and “information segments” as well as an “execution segment.” Ex.
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`2208 at 45:4-19. Curiously, PMC argues that it may rely on disclosure from Example
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`#7 because “the inventors allow decryption using ‘any of the methods described
`
`above.’” Reply at 8. Decryption, however, is not recited in this limitation.
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`III. SUBSTITUTE CLAIMS 41-48 WOULD HAVE BEEN OBVIOUS TO
`A PERSON OF ORDINARY SKILL IN THE ART
`Apple has demonstrated the Substitute Claims in any event would have been
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`obvious under §103. Apple’s showing is fully supported by the expert declaration of
`
`Mr. Wechselberger. Ex. 1053. By contrast, PMC’s flawed arguments lack any expert
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`support and are unsupported by the record.
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`A.
`Substitute Claims 41 Is Unpatentable Over Campbell.
`PMC fails to respond to Apple’s argument, supported by expert testimony,
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`that a PHOSITA would have been motivated to use Campbell’s pay-per-view system
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`to deliver pay-per-listen digital audio. Opp. at 18; Reply at 9. PMC states only that
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`Campbell is “silent” as to digital audio, but fails to rebut Apple’s obviousness
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`argument. Reply at 9. As Mr. Wechselberger explained, a PHOSITA would have
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`recognized that pay-per-listen digital audio would have provided subscribers access
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`to additional digital programming and broadcasters with additional revenue streams.
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`Ex. 1053 ¶¶38-39. PMC asserts Apple’s argument regarding the obviousness of
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`digital video (to the extent it was enabled) uses “hindsight,” but does not address
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`8
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Apple’s substantive arguments as to why it would have been obvious at the time of
`
`the alleged invention. Reply at 9. As Mr. Wechselberger explained, digital video has
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`several well-known advantages over analog video. Ex. 1053 ¶40.
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`Furthermore, PMC’s arguments regarding the “plurality of cipher algorithms”
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`assume a hyper-literal combination of the systems of Campbell and Pailen where
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`none was suggested. As Mr. Wechselberger explained, the enhanced security of
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`Pailen’s method is just as useful in the context of Campbell, and can be readily
`
`applied to pay-per-listen digital audio. Ex. 1053 ¶¶41-43.
`
`B.
`Substitute Claims 42 and 43 Are Unpatentable Over Seth-Smith.
`For these claims, PMC labels Apple’s argument regarding digital video as
`
`“hindsight bias” without explanation. Reply at 10. PMC fails to address, with its own
`
`expert testimony or otherwise, the substantive arguments of Apple’s expert. PMC
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`also ignores Apple’s argument, recently adopted by this Board, that teletext can
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`include video. Ex. 1083 (IPR2016-00754 Final Written Dec.) at 28-30.
`
`PMC argues that Seth-Smith “stores the fixed-size packets directly into RAM
`
`124 without a computer file system.” Reply at 10. But Seth-Smith does not object to
`
`the use of file systems, and it would have been obvious to a PHOSITA to employ
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`one of the many such well-known systems that utilized file extensions. Opp. at 21-
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`22. PMC’s argument that authorized tier data is not subscriber-specific fails to
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`account for the subscriber’s role in choosing, and paying for, the authorized tiers.
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`9
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`As Apple explained, PMC’s argument that Seth-Smith teaches away from
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`two-way communications mischaracterizes what Seth-Smith presents as a mere
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`design choice. Opp. at 22-23; Reply at 10-11. PMC’s conclusory dismissal of
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`employing Pailen’s method in Seth-Smith (Reply at 11) ignores that Seth-Smith
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`already employs a similar method for descrambling. Ex. 1043 at 8:15-20.
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`C.
`Substitute Claims 44-48 Are Unpatentable Over Chandra.
`PMC’s arguments against the combination of Chandra and Thomas are
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`unsupported by the evidence. PMC does not dispute that Chandra discloses
`
`transmitting unique encrypted digital tokens. Opp. at 23-24. Chandra’s disclosure
`
`that it could be “advantageous if all software distribution media could be identical”
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`is the premise for an alternate embodiment, and is not inconsistent with the use of
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`unique tokens. Ex. 1041 at 8:45-60. Likewise, Chandra’s preference for maintaining
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`the security of tokens in no way precludes their transmission to a remote site. The
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`tokens would merely be re-encrypted prior to transmission.
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`PMC argues Chandra and Bergland cannot be combined because they employ
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`different systems. Apple does not propose incorporation of the “system” of
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`Bergland, but merely its food service program, which is easily implemented in
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`Chandra’s system. Opp. at 24-25. PMC’s arguments regarding the combination of
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`Chandra and Pailen again assume a combination of entire systems. Reply at 12. But
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`it is Pailen’s method Apple proposes to employ in Chandra’s system. Opp. at 24.
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`10
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`Date: October 18, 2017
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel (Reg. No. 55,606)
`Joel R. Merkin (Reg. No. 58,600)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`
`Attorneys For Petitioner
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`11
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`
`
`PETITIONER’S UPDATED APPENDIX OF EXHIBITS
`Exhibit No.
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`July 29, 2016 Declaration of Anthony J. Wechselberger Under
`37 C.F.R. § 1.68 in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,559,635.
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`Curriculum Vitae of Anthony J. Wechselberger.
`
`U.S. Patent No. 8,559,635 to Harvey, et al.
`
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`
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`
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`
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`12
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`PETITIONER’S UPDATED APPENDIX OF EXHIBITS
`Exhibit No.
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`
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`
`1015
`
`1016
`
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`
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`
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`
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`
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`
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`
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`
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`
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`13
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
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`PETITIONER’S UPDATED APPENDIX OF EXHIBITS
`Exhibit No.
`Description
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
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`
`1030
`
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`
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`
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`
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`
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`
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`
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
`
`PETITIONER’S UPDATED APPENDIX OF EXHIBITS
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
`
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`Petitioner’s Sur-Reply in Opposition to Patent Owner’s Contingent Motion to Amend: IPR2016-01520
`
`PETITIONER’S UPDATED APPENDIX OF EXHIBITS
`Exhibit No.
`Description
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`
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`
`19
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONER’S SUR-REPLY IN OPPOSITION TO PATENT OWNER’S
`
`CONTINGENT MOTION TO AMEND was served on October 18, 2017 to the
`
`following attorneys of record by electronic transmission:
`
`Douglas Kline
`GOODWIN PROCTER LLP
`Exchange Place, 53 State Street
`Boston, Massachusetts 02109
`dkline@goodwinlaw.com
`DG-PMC-
`Apple@goodwinprocter.com
`
`Jennifer Albert
`Stephen Schreiner
`Krupa K. Parikh
`April E. Weisbruch
`GOODWIN PROCTER LLP
`901 New York Avenue N.W.
`Washington, D.C. 20001
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`kparikh@goodwinlaw.com
`aweisbruch@goodwinlaw.com
`DG-PMC-Apple@goodwinprocter.com
`
`
`
`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`14090 Southwest Freeway, Suite 450
`Sugar Land, TX 77478
`tscott@pmcip.com
`
`
`
`Date: October 18, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/Marcus E. Sernel
`Marcus E. Sernel
`
`
`
`
`
`
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