IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Harvey et al.
`In re Patent of:
`7,752,650
`U.S. Patent No.:
`July 6, 2010
`Issue Date:
`Appl. Serial No.: 08/460,711
`Filing Date:
`June 2, 1995
`Title:
`SIGNAL PROCESSING APPARATUS AND METHODS
`
`IPR Control No.: IPR2017-00291
`
`Attorney Docket No.: 39843-0030IP1
`IPR Control No. IPR2017-00291
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,752,650 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. §§ 42.1-
`42.123
`
`
`
`
`
`

`
`
`
` TABLE OF CONTENTS
`
`IV. 
`
`Page
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8 ................................. 2 
`A. 
`Real Party-In-Interest ............................................................................ 2 
`B. 
`Related Matters ...................................................................................... 2 
`C. 
`Lead and Back-Up Counsel ................................................................... 2 
`D. 
`Service Information ............................................................................... 2 
`PAYMENT ..................................................................................................... 3 
`II. 
`III.  REQUIREMENTS FOR IPR ....................................................................... 3 
`A.  Grounds for Standing ............................................................................ 3 
`B. 
`Challenge and Relief Requested ........................................................... 3 
`INTRODUCTION ......................................................................................... 7 
`A.  Overview of the ‘650 Patent .................................................................. 7 
`1. 
`Description of the Alleged Invention of the ‘650 Patent ............ 7 
`Summary of the Prosecution History of the ‘650 Patent ...................... 8 
`B. 
`Level of Ordinary Skill in the Art as of the Critical Date ..................... 9 
`C. 
`V.  CLAIM CONSTRUCTION ........................................................................ 10 
`A. 
`“digital television signals” (claims 1, 2, 4, 18, 32, 33) ....................... 11 
`B. 
`“digital video signals” (claims 18, 32, 33) .......................................... 13 
`C. 
`“processor” (all Challenged Claims) ................................................... 14 
`D. 
`37 C.F.R. § 42.104(b)(4): How the Claims are Unpatentable ............ 16 
`E. 
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge ................ 16 
`VI.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘650 PATENT IS UNPATENTABLE ......................... 16 
`A. 
`Summary of Grounds of Unpatentability ............................................ 16 
`B. 
`Claim-By-Claim Explanation of Grounds of Unpatentability ............ 17 
`1. 
`Ground 1: The Challenged Claims Are Invalid Over Mustafa . 17 
`
`
`
`i
`
`

`
`
`
`2. 
`
`3. 
`
`Ground 2: In the Alternative to Ground 1, the Challenged
`Claims are Obvious Based on Mustafa in View of Iijima. ....... 33 
`Grounds 3A and 3B: The Challenged Claims Are Invalid Over
`Campbell in View of the Knowledge of A POSITA. ............... 37 
`Ground 4: In the Alternative to Ground 3, the Challenged
`Claims are Obvious Based on Campbell in View of Widergren.
` ................................................................................................... 51 
`VII.  CONCLUSION ............................................................................................ 55 
`
`4. 
`
`ii
`
`
`
`
`
`

`
`SAMSUNG-1001
`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`
`EXHIBITS
`Declaration of Stuart Lipoff Under 37 C.F.R. § 1.68 in
`Support of Petition for Inter Partes Review of U.S. Patent
`No. 7,752,650
`
`SAMSUNG-1002
`
`U.S. Patent No. 7,752,650 to Harvey, et al.
`
`SAMSUNG-1003
`
`U.S. Patent No. 4,694,490 to Harvey, et al.
`
`SAMSUNG-1004
`
`U.S. Patent Appl. No. 08/449,097: 8/27/1996 Non-Final
`Rejection
`
`SAMSUNG-1005
`
`Continuity Data of U.S. Patent Appl. No. 07/096,096
`
`SAMSUNG-1006
`
`U.S. Patent Appl. No. 08/449,097: 4/2/1998 Non-Final
`Rejection
`
`SAMSUNG-1007
`
`U.S. Patent No. 7,752,649 to Harvey, et al.
`
`SAMSUNG-1008
`
`Plaintiff’s Disclosure of Asserted Claims and
`Infringement Contents, Personalized Media
`Communications, LLC v. Samsung Electronics America,
`Inc. et al., Civil Action No. 2:15-cv-01754-JRG-RSP
`(E.D. Texas Feb. 8, 2016)
`
`SAMSUNG-1009
`
`U.S. Patent No. 4,789,895 to Mustafa, et al.
`
`SAMSUNG-1010
`
`U.S. Patent No. 4,215,369 to Iijima
`
`SAMSUNG-1011
`
`U.S. Patent No. 4,536,791 to Campbell, et al.
`(“Campbell-1B”)
`
`SAMSUNG-1012
`
`U.S. Patent No. 4,302,775 to Widergren, et al.
`
`SAMSUNG-1013
`
`U.S. Patent Appl. No. 08/460,711: 7/22/1996 Non-Final
`Rejection.
`
`ii
`
`

`
`SAMSUNG-1014
`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`U.S. Patent Appl. No. 08/460,711: 11/30/1998 Applicant
`Arguments and Remarks Made in an Amendment
`
`SAMSUNG-1015
`
`U.S. Patent Appl. No. 08/449,097: 10/2/1998
`Amendment
`
`SAMSUNG-1016
`
`U.S. Patent No. 8,559,635 to Harvey, et al.
`
`SAMSUNG-1017
`
`SAMSUNG-1018
`
`SAMSUNG-1019
`
`SAMSUNG-1020
`
`SAMSUNG-1021
`
`Institution Decision, Apple, Inc. v. Personalized Media
`Communications, LLC, IPR2016-00753 (Paper 8) (Sep.
`20, 2016)
`
`Plaintiff’s Identification of Claim Terms Requiring
`Construction, Personalized Media Communications,
`LLC. v. Apple Inc., C.A. No. 2:15-cv-01366-JRG-RSP
`(E.D.T.X. Jan. 27, 2016)
`
`Institution Decision, Amazon.com, Inc. v. Personalized
`Media Communications, LLC, IPR2014-01532 (Paper 8)
`(Mar. 31, 2015)
`
`Plaintiff’s Joint Claim Construction Submission Exhibit
`A, Personalized Media Communications, LLC. v.
`Amazon.com, Inc., C.A. No. 1:13-cv-01608-RGA (D.
`Del. Sept. 23, 2014)
`
`Personalized Media Communications LLC v. Zynga,
`Inc., C.A. No. 2:12-cv-68-JRG-RSP, 2013 WL 4630447
`(E.D.T.X. Aug. 28, 2013)
`
`SAMSUNG-1022
`
`Examiner Interview Summary
`
`SAMSUNG-1023
`
`U.S. Patent Appl. No. 08/460,711 12/21/2009 Ex Parte
`Quayle Action
`
`SAMSUNG-1024
`
`U.S. Patent Appl. No. 08/460,711: 2/17/2010 Index of
`Claims
`
`iii
`
`

`
`SAMSUNG-1025
`
`SAMSUNG-1026
`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Ishiguro, T., et al., Composite Interframe Coding of
`NTSC Color Television Signals, Proc. Nat. Telecommun.
`Conf., Dallas, TX, Dec. 1976, pp. 6.4.1-5.
`
`U.S. Patent Appl. No. 08/460,711: 12/20/1996
`Amendment/Reg. Reconsideration-After Non-final
`Rejection
`
`SAMSUNG-1027
`
`U.S. Patent Appl. No. 08/460,711: 5/29/98 Final
`Rejection
`
`SAMSUNG-1028
`
`SAMSUNG-1029
`
`U.S. Patent Appl. No. 08/460,711: 04/09/99
`Amendment/Reg. Reconsideration-After Non-final
`Rejection
`
`U.S. Patent Appl. No. 08/460,711: 11/30/98
`Amendment/Reg. Reconsideration-After Non-final
`Rejection
`
`SAMSUNG-1030
`
`Earley, A., Closed Captioning with the Line 21 System,
`National Captioning Institute, pp. 180-184.
`
`SAMSUNG-1031
`
`Curriculum Vitae of Stuart Lipoff
`
`SAMSUNG-1032
`
`Examiner’s Notice of Allowance (Feb. 17, 2010)
`
`SAMSUNG-1033
`
`International Publication No. WO81/02961 (“Campbell-
`1A”)
`
`SAMSUNG-1034
`
`U.S. Patent Appl. Serial No. 06/135,987 (“Campbell-
`1C”)
`
`
`
`iv
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(“Petitioner” or “Samsung”) petitions for inter partes review (“IPR”) under 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. §§ 42.1-42.123 of Claims 1, 2, 4, 18, 32, and 33
`
`(“the Challenged Claims”) of U.S. Patent No. 7,752,650 (“the ‘650 Patent”). As
`
`explained in this petition, Petitioner demonstrates a reasonable likelihood that at
`
`least one of the Challenged Claims is unpatentable. Indeed, the Challenged Claims
`
`are shown unpatentable based on teachings set forth in at least the references
`
`presented in this petition. Moreover, Petitioner respectfully requests institution of
`
`this IPR, and cancelation of the Challenged Claims as unpatentable.
`
`In 1981, the named inventors of the ’650 Patent filed U.S. Patent Appl. No.
`
`06/317,510, which issued as U.S. Patent No. 4,694,490 (“the ’490 Patent”) to
`
`Personalized Media Communications, LLC (“PMC”). Ex. 1003. In 1987, PMC
`
`filed a continuation-in-part of that application, which discarded the original 22
`
`column specification filed in 1981 and substituted a new specification that
`
`extended over 300 columns. Ex. 1002. In the months leading up to June 8, 1995,
`
`PMC filed 328 continuations from that 1987 application, having tens of thousands
`
`of claims and deluging the Patent Office with thousands of prior art references.
`
`Ex. 1004 at 2; Ex. 1005; Ex. 1002 at 1-30; Ex. 1006 at 9. The ’650 Patent is one of
`
`the patents that issued from that flurry of activity.
`
`
`
`
`
`1
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Party-In-Interest
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. are
`
`the real parties-in-interest.
`
`B. Related Matters
`
`PMC filed a complaint alleging infringement of the ’649 patent in a lawsuit
`
`against Petitioner in the Eastern District of Texas (Personalized Media
`
`Communications, LLC. v. Samsung Electronics America, Inc., et al., Civil Action
`
`No. 2:15-cv-01754).
`
`Petitioner petitions for IPR of related patents in IPR control nos. IPR2017-
`
`00288-00295. Petitions for IPR of related patents have also been submitted by
`
`Vizio (IPR control nos. IPR2017-00141-00143), and Apple Inc. (IPR2016-00753).
`
`C. Lead and Back-Up Counsel
`
`Petitioner provides the following designation of counsel.
`Lead Counsel
`Backup Counsel
`W. Karl Renner, Reg. No. 41,265
`Thomas Rozylowicz, Reg. No. 50,620
`3200 RBC Plaza
`Andrew B. Patrick, Reg. No. 63,471
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR39843-0030IP1@fr.com
`
`
`D.
`
`Service Information
`
`Please address all correspondence/service to the address listed above.
`
`2
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Petitioner consents to electronic service by email at IPR39843-0030IP1@fr.com,
`
`with a copy to PTABInbound@fr.com, renner@fr.com, rozylowicz@fr.com, and
`
`patrick@fr.com.
`
`II.
`PAYMENT
`Petitioner authorizes charge of necessary fees to Deposit Acct. 06-1050.
`
`III. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`
`Petitioner certifies that the ‘650 Patent is available for IPR. The Patent
`
`Owner filed suit on November 10, 2015, in a case captioned as Personalized Media
`
`Communications, LLC, Case No. 2:15-cv-01754-JRG-RSP in the U.S. District
`
`Court for the Eastern District of Texas. This Petition is being filed within one year
`
`of service of a complaint against Petitioner, which occurred on November 18,
`
`2015. Petitioner is not barred or estopped from requesting this review of the
`
`Challenged Claims on the following grounds.
`
`B. Challenge and Relief Requested
`
`Petitioner requests a IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed
`
`description that follows, indicating where each element can be found in the cited
`
`3
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`prior art, and the relevance of that prior art. Additional explanation and support for
`
`each ground of rejection is set forth in SAMSUNG 1001, Declaration of Stuart
`
`Lipoff, referenced throughout this Petition.
`
`Ground
`
`‘650 Patent Claims
`
`Ground
`
`1
`2
`3A
`3B
`4
`
`
`
`1, 2, 4, 18, 32, and 33
`1, 2, 4, 18, 32, and 33
`1, 2, 4, 18, 32, and 33
`1, 2, 4, 18, 32, and 33
`1, 2, 4, 18, 32, and 33
`
`§ 103: Mustafa.
`§ 103: Mustafa in view of Iijima
`§ 103: Campbell-1A
`§ 103: Campbell-1B
`§ 103: Campbell-1A/1B, in view of
`Widergren
`
`The ’650 Patent issued from U.S. Patent Application Serial No. 08/460,711
`
`(the ‘711 App.), which was filed on June 2, 1995, and claims priority through a
`
`string of continuation applications to September 11, 1987. In a document served
`
`on February 8, 2016 in the corresponding district court action, Patent Owner
`
`contended that the ’650 Patent should be entitled to the priority of U.S. Patent
`
`Application Serial No. 07/096,096, which was filed on September 11, 1987. Ex.
`
`1008, 10. Therefore, the earliest priority date to which the ’650 Patent should be
`
`entitled is September 11, 1987. As shown below, each reference pre-dates this
`
`date and qualifies as prior art:
`
`4
`
`

`
`Reference
`Mustafa
` Iijima
`Campbell-1A
`
`Campbell-1B
`
`Widergren
`
`
`
`Date
`Filed April 30, 1987
`Issued July 29, 1980
`Published October 15,
`1981
`Issued Aug. 20, 1985 with
`priority of March 15, 1980
`Issued Nov. 24, 1981
`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Prior art §
`35 U.S.C. § 102(e)1
`35 U.S.C. § 102(b)
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. § 102(b)
`
`While Campbell-1B was issued in 1985, it is entitled to priority of Mar. 31,
`
`1980. Campbell-1B was published on August 20, 1985, and was filed June 4,
`
`1984, with claims that are fully supported based on subject matter that appeared
`
`within Campbell-1C, filed Mar. 31, 1980. Campbell-1B is a continuation of U.S.
`
`Application Serial No. 06/348,937 (“’937 Application”), which was filed on Nov.
`
`27, 1981 as a CIP of Application No. 06/135,987 (“Campbell-1C”), filed on Mar.
`
`31, 1980. Co-pendency existed at each mentioned filing. The validity of the
`
`Campbell-1B priority claim to the Campbell-1C Application is illustrated through
`
`citations that appear below relative to claim 1 of Campbell-1B. Dynamic
`
`Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
`
`Campbell ‘791 Claim 1
`
`1. In a television communications system having a
`central station for transmitting a plurality
`
`Campbell ‘987 Priority
`Application Support
`Claim 1; see also 1:24-2:2, 3:10-
`14, 5:1-27, FIGS. 1, 2, 6.
`
`
`1 Cites to 35 U.S.C. §§ 102 and 103 are to the pre-AIA versions applicable here.
`
`5
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`
`of television signals at different frequency
`channels to a plurality of user stations remote from
`said central stations, each having a tuner for
`selecting one of said television signals, a method
`of utilizing said central station to limit access of
`said user stations to only certain ones of
`said television signals, comprising:
`transmitting each of said category codes from the
`central station to its respective user station to
`precondition each user station by authorization
`from the central station to selectively access said
`predetermined categories of television signals;
`generating a plurality of program codes at said
`central station to limit user access to said
`predetermined categories of television signals, one
`of said program codes being generated for
`each television signal, each of said program codes
`including predetermined control data for enabling
`access to one of said television signals;
`transmitting one of said program codes with each
`of said television signals to each of said user
`stations being tuned to receive one of
`said television signals;
`comparing the control data of said program code
`to the enabling data of the category code provided
`by the central station to each user station; and
`enabling only each user station which has a
`category code with enabling data corresponding to
`the control data of said program code, whereby
`said enabled user station can receive and process
`any said tuned television signal within a
`predetermined category of said television signals
`corresponding to said category code.
`
`
`Claim 1; see also 6:18-26, 7:20-25,
`8:1-2, 8:30-37, 16:20-28, 17:21-33,
`FIG. 11.
`
`Claim 1; see also FIG. 11, 1:24-
`2:2, 3:10-14, 6:18-26, 17:1-20.
`
`Claim 1; see also FIG. 11, 6:18-26,
`17:1-20.
`
`Claim 1; see also 3:22-25, 21:1-
`22:18, FIG. 12.
`
`Claim 1; see also 15:13-22, 21:1-
`22:18, FIG. 12.
`
`String citations throughout this Petition indicate the overlapping disclosures
`
`of Campbell-1A/1B/1C (collectively “Campbell”). Campbell-1A and Campbell-1B
`
`are asserted in separate, contingent grounds of this Petition–Grounds-3A&3B–to
`
`6
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`account for any chance that Patent Owner may attempt to avoid full vetting of the
`
`Challenged Claims by swearing behind the prior art date of Campbell-1A.
`
`IV.
`
`INTRODUCTION
`A. Overview of the ‘650 Patent
`
`1.
`Description of the Alleged Invention of the ‘650 Patent
`The ’650 Patent is titled “Signal Processing Apparatus and Methods” and
`
`generally relates to the transmission, reception, processing and presentation of
`
`information carried on various types of electrical signals (i.e., standard radio and
`
`television signals). Ex. 1002 at Face, Abstr.; Ex. 1001 ¶ 31-32. The Challenged
`
`Claims relate to methods of processing television and/or video signals at receiver
`
`stations. A receiver accepts a conventional television broadcast transmission via a
`
`conventional antenna. Ex. 1002 at 10:44-46. Digital information, including
`
`information that causes the receiver to perform particular functions, is embedded in
`
`the broadcast. Ex. 1002 at 7:51-63, 23:34-37. A TV connected to the receiver
`
`presents received video and audio information. Ex. 1002 at Fig. 1, 11:20-23. Aside
`
`from the general description above, the Challenged Claims are not embodied in
`
`any specific example in the ’650 Patent specification.
`
`Claim 1 is an example of the Challenged Claims:
`
`1. A method of television signal processing at a receiver
`station, said receiver station having a plurality of processors and a
`digital switch, said method
`
`7
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`
`comprising the steps of:
`[a] receiving an information transmission including digital
`television signals and a message stream;
`[b] detecting said message stream in said information
`transmission;
`[c] programming a control processor to control said digital
`switch on the basis of information included in said message stream;
`[d] inputting a plurality of commands received in said message
`stream to a said control processor;
`[e] selecting a plurality of said digital television signals
`included in said information transmission in response to said
`commands, said selected plurality of said digital television signals
`being information segments of said information transmission;
`[f] controlling said digital switch to communicate each one of
`said selected plurality of said digital television signals to a signal
`processor; and
`[g] processing said selected plurality of said digital television
`signals to communicate video and audio signals to a television
`monitor.
`B.
`
`Summary of the Prosecution History of the ‘650 Patent
`
`U.S. Patent Appl. No. 08/460,711, which led to the ’650 Patent, was filed on
`
`June 2, 1995. Ex. 1002 at Cover. It claims priority to a series of continuation and
`
`continuation-in-part applications beginning with U.S. Patent Appl. No. 06/317,510,
`
`which was filed on November 3, 1981, and issued as the ’490 Patent. Id. The ’650
`
`Patent did not issue until July 6, 2010. Id.
`
`8
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Initially, the Examiner rejected pending claim 2 under § 112, paragraph 1,
`
`because the meaning of “digital television” was unclear, and the means used to
`
`transmit digitally formatted television signals were not the same as the means used
`
`to transmit analog television signals and the applicant only disclosed “transmit[ing]
`
`over the same TV channel that was used to carry conventional analog TV
`
`broadcasts.” Ex. 1013 at 3; Ex. 1006 at 13-18; Ex. 1001 ¶ 62. The applicant
`
`responded that “digital television” merely required “the usage of digital data in a
`
`television signal.” Ex. 1014 at 30. The applicant subsequently amended the claims
`
`at the Examiner’s recommendation. Ex. 1022 at 2; Ex. 1023 at 6-10. Application
`
`claims 2, 7, 9, 57, 96, and 101 correspond to issued claims 1, 2, 4, 18, 32, and 33,
`
`respectively. Ex. 1024. After the applicant accepted the Examiner’s proposed claim
`
`amendments, the Examiner issued a Notice of Allowance. See generally, Ex. 1001
`
`at ¶¶ 66-71.
`
`C. Level of Ordinary Skill in the Art as of the Critical Date
`
`A person of ordinary skill in the art as of the Critical Date of the ‘650 Patent
`
`(hereinafter a “POSITA”) would have had a Bachelor of Science or Art Degree (or
`
`higher degree) in an academic area emphasizing the design of electrical, computer,
`
`or software technologies, or related field, and two years of experience in
`
`communications devices and systems. Ex. 1001, ¶¶72-76. Additional education or
`
`industrial experience may compensate for a deficit in one of the other aspects of
`
`9
`
`

`
`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`
`the requirements stated above. Id.
`
`V. CLAIM CONSTRUCTION
`The claims of the ’650 Patent should be given their broadest reasonable
`
`interpretation. Pursuant to PTO regulations, “[a] claim in an unexpired patent . . .
`
`shall be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (The regulation calling for the
`
`use of the Broadest Reasonable Interpretation (BRI) “represents a reasonable
`
`exercise of the rulemaking authority that Congress delegated to the Patent
`
`Office.”). This means that the claim terms of the ’650 Patent should be given a
`
`meaning “consistent with the ordinary and customary meaning of the term (unless
`
`the term has been given a special definition in the specification),” and “must be
`
`consistent with the use of the claim term in the interpretation that those skilled in
`
`the art would reach.” MPEP § 2111 (citing In re Cortright, 165 F.3d 1353, 1359
`
`(Fed. Cir. 1999)).2
`
`
`2 Petitioner expressly reserves the right to advance different constructions in the
`
`matter now pending in the district court, as the applicable claim construction
`
`standard for that proceeding (“ordinary and customary meaning”) is different than
`
`the broadest reasonable interpretation standard applied in IPR. Further, due to the
`
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`“digital television signals” (claims 1, 2, 4, 18, 32, 33)
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`A.
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`Petitioner submits, for purposes of this IPR only, the BRI of “digital
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`television signals” is “television signals entirely or partially encoded in a digital
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`format.” Petitioner’s proposed construction is identical to the Board’s construction
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`of “digital television signals” in Apple, Inc. v. Personalized Media
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`Communications, Inc., IPR2016-00753 (the “Apple IPR”), challenging the validity
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`of related U.S. Patent No. 7,752,649 (“the ’649 Patent”). See Ex. 1017 at 14-16.
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`The term “digital television signal” did not have a well-known meaning in
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`the art. Ex. 1001 ¶ 78. A person of ordinary skill in the art (“POSITA”) reading the
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`’650 Patent would have recognized that television signals that included both digital
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`and analog components constitute “digital television signals.” Ex. 1002 at Figs. 1,
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`2A, 10:43-11:6, 18:54-61, 18:64-19:14; Ex. 1001 ¶ 78. To the extent there is any
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`ambiguity, the ’490 Patent (a parent to the ’650 Patent) supports that only a portion
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`of the digital television signal needs to be digital. Ex. 1003 at 14:1-4 (discussing
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`different claim construction standards in the proceedings, Petitioner identifying
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`any feature in the cited references as teaching a claim term of the ‘650 Patent is not
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`an admission by Petitioner that that claim term is met by any feature for
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`infringement purposes, or that the claim term is enabled or meets the requirements
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`for written description.
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
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`partial encryption).
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`Petitioner’s proposed construction is also supported by the prosecution
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`history. Because of the lack of a well-known meaning for this term, the Examiner
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`asked “[w]hat do applicants mean by ‘digital television’?” during prosecution and
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`rejected several claims under § 112 based on the use of “digital television.” Ex.
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`1013 at 3. In response, the applicant stated the claimed digital television signals
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`merely required “the usage of digital data in a television signal.” Ex. 1014 at 30.
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`The applicant provided further detail in responding to similar rejections
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`during prosecution of the ’649 Patent, which is closely related to the ’650 Patent
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`and which shares a common specification and descends directly from the same
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`parent (US Patent No. 7,856,650). There, the applicant responded to the
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`Examiner’s question regarding the meaning of “digital television” that digital
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`detectors 34 and 37 determine whether there are encoded digital signals present in
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`portions of the analog video or audio portions of the television signal, and digital
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`detector 38 “receives a separately defined, and clearly digital, transmission.” Ex.
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`1015 at 34-35. The applicant further explained that “[s]ince the television
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`programming transmission is disclosed to be comprised of a video portion, an
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`audio portion and embedded encoded digital signals, the separately defined
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`transmission is at least some of the television programming transmission that
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`contains the encoded digital signals.” Id. The applicant concluded that “the audio
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`portion, video portion and signal portion of the television programming
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`transmission may be entirely or partially encoded in digital format, separately
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`defined from analog format, thereby comprising ‘digital television.’” Id. (emphasis
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`added).
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`The construction is also consistent with the claims of U.S. Patent No.
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`8,559,635 (the “’635 Patent”), a patent in the same family as the ’650 Patent with
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`the same specification. For example, claim 18 of the ’635 Patent recites “wherein
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`the at least one encrypted digital information transmission is unaccompanied by
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`any non-digital information transmission.” Ex. 1016 at claim 18. Absent the “is
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`unaccompanied by any non-digital information transmission” language, the
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`“encrypted digital information transmission” may otherwise include both digital
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`and non-digital information. Similarly, the Challenged Claims are without
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`qualifying language and therefore may include both digital and non-digital
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`information.3
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`B.
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`“digital video signals” (claims 18, 32, 33)
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`Petitioner submits, for purposes of this IPR only, the BRI of “digital video
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`signals” is “digital information embedded in the video portion of a television
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`3 In litigation, PMC argued that “digital television signals” means “television
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`programming that includes digital audio and digital video signals.” Ex. 1018 at 3.
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`transmission signal.” Petitioner’s proposed construction is identical to the Board’s
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`construction of this term in the Apple IPR. See Ex. 1017 at 18-19.
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`The Board in the Apple IPR found the specification specifically refers to
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`encrypted “digital audio” and “digital video” as the encrypted digital information
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`embedded in either the audio or video portion, respectively, of a television
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`program transmission. See Ex. 1017 at 18. Further, as explained in Section C.1
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`above, the applicant stated during prosecution that the ’650 Patent discloses
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`embedding digital signals in portions of analog video. See Section C.1. Therefore,
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`the BRI of digital video signals encompasses “digital information embedded in the
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`video portion of a television transmission signal.” Id. 4
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`C.
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`“processor” (all Challenged Claims)
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`Under BRI, a “processor” should be construed as “a device or module that
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`operates on analog or digital signals.” While the term “processor” appears
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`throughout the specification, the term is not defined with respect to a limitation on
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`the functionality of the processor.
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`The term processor had a well-known meaning in the art as a component
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`4 In litigation, PMC argued that “digital video signals” means “video signals
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`encoded as discrete numerical values instead of an analog representation.” Ex.
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`1018 at 3.
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`which “operates on data.” Nothing in the specification suggests deviation from
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`this well-accepted definition. The specification recites many different types of
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`processors which perform different types of operation on data. The claims here,
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`though, do not recite any specific type of processor, instead claiming broadly the
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`generic term “processor.”
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`In the context of other PMC patents that share the same or a similar
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`specification, the Board has consistently interpreted a “processor” as “a device that
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`operates on data.” See IPR-2014-01532, Paper 57, 12; IPR2016-00753, Paper, 12;
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`IPR2014-01534, Paper 55, 12. In fact, the PMC itself has proposed a similar
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`construction in district court litigation for a related patent having the same
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`specification: “any device capable of performing operations on data.” Ex
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`SAMSUNG-1020, 12.
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`In addition, Board decisions have recognized that a “processor” operates on
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`more than just digital data. For example, the Board was “satisfied” that
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`components of Campbell-1A which unambiguously operate on both digital and
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`analog information “collectively form a ‘video output processor.’” See IPR2016-
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`00753, Paper 8, 48; see also id. at 11(rejecting Patent Owner’s proposed
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`constructions as “a device that execute[s] instructions or process[es] data according
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`to instructions. In addition, nothing in the specification suggests that “processors”
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`operate only on digital data. For example, FIG. 2 shows a “signal processor”
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`which unambiguously operates on analog data as well.
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`D.
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`37 C.F.R. § 42.104(b)(4): How the Claims are Unpatentable
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`How the Challenged Claims are unpatentable is detailed in Section II.D.
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`E.
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge
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`An Appendix of Exhibits is attached. Relevance of the evidence, including
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`identifying the specific portions of the evidence that support the challenge, is found
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`in Section II.D. Petitioner submits a declaration of Dr. Stuart Lipoff, an expert with
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`nearly 50 years of experience in the relevant fields, in support of this petition in
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`accordance with 37 C.F.R. § 1.68. Ex. 1001.
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘650 PATENT IS UNPATENTABLE
`As detailed below, this petition shows a reasonable likelihood that the
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`Petitioner will prevail with respect to the Challenged Claims of the ‘650 Patent.
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`Petitioner provides a detailed discussion of how the Challenged Claims of the ’650
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`Patent are rendered obvious.
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`A.
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`Summary of Grounds of Unpatentability
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`Ground 1: Mustafa teaches a system where user terminals receive video,
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`digital audio, and digital control information. Mustafa in view of the knowledge of
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`a POSITA renders obvious the Challenged Claims.
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`Ground 2: In the alternative to Ground 1, if “digital television
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`signals”/”digital video signals” require the signals to be completely digital, then
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`Attorney Docket No. 39843-0030IP1
`IPR of U.S. Patent No. 7,752,650
`Mustafa in view of Iijima renders obvious the Challenged Claims. Iijima describes
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`a digital transmission system for television signals.
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`Grounds 3A and 3B: Campbell is a cable television system having a receiver
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`that accepts digital data transmissions in video format. Campbell in view of the
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`knowledge of a POSITA renders obvious the Challenged Claims.
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`Ground 4: In the alternative to Grounds 3A and 3B, if “digital television
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`signals”/“digital video signals” require the signals to be completely digital, then
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`Campbell in view of Widergren renders obvious the Challenged Claims.
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`Widergren describes a digital data transmission system. Mustafa was not
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`cited during prosecuti