Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents Inc.,
`Petitioner
`v.
`
`Personalized Media Communications, LLC,
`Patent Owner
`
`
`
`IPR2015-00521
`
`Patent 7,801,304
`
`
`
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,801,304
`
`
`
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`

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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`TABLE OF CONTENTS
`TABLE OF CONTENTS .......................................................................................... ii
`TABLE OF AUTHORITIES ................................................................................... iv
`EXHIBIT LIST .......................................................................................................... v
`I.
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ........................ 1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel ................................................................... 2
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`E.
`Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`INTRODUCTION ........................................................................................... 3
`II.
`III. OVERVIEW OF THE ’304 PATENT ............................................................ 4
`IV. PRIORITY ....................................................................................................... 9
`V.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................. 10
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`VII. CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“Digital Programming/Mass Medium Presentation
`Signal/Television” ............................................................................... 11
`“Said Decryptor” ................................................................................. 12
`B.
`“A Processor” ...................................................................................... 12
`C.
`VIII. SPECIFIC PROPOSED GROUNDS FOR REJECTION ............................. 13
`A.
`Claims 1, 11, 18, 23, and 24 Would Have Been Obvious Over
`Guillou in View of the Knowledge of a Person Having
`Ordinary Skill in the Art. ..................................................................... 14
`1.
`Claim 1 ...................................................................................... 17
`2.
`Claim 11 .................................................................................... 26
`3.
`Claim 18 .................................................................................... 26
`4.
`Claim 23 .................................................................................... 27
`5.
`Claim 24 .................................................................................... 32
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`B.
`
`C.
`
`Claim 22 Would Have Been Obvious Over Guillou in View of
`Block, Guillou ’011, and the Knowledge of a Person Having
`Ordinary Skill in the Art. ..................................................................... 38
`1.
`Claim 22 .................................................................................... 40
`Claims 11 and 16 Would Have Been Obvious Over Guillou in
`View of Block and the Knowledge of a Person of Ordinary
`Skill in the Art. .................................................................................... 50
`1.
`Claim 11 .................................................................................... 50
`2.
`Claim 16 .................................................................................... 52
`Claims 1, 16, and 18 are Anticipated by FIPS PUB 81. ..................... 53
`D.
`IX. OBVIOUSNESS CONSIDERATIONS ........................................................ 58
`A.
`Reasons to Combine ............................................................................ 58
`B.
`Secondary Considerations Fail to Overcome the Strong
`Evidence of Obviousness. ................................................................... 59
`CONCLUSION ............................................................................................. 60
`
`X.
`
`iii
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`
`TABLE OF AUTHORITIES
`In re Trans Texas Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) ..................................................................... 11
`
`Leapfrog Enters. Inc. v. Fisher–Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ..................................................................... 60
`
`
`Newell Cos., Inc. v. Kenney Mfg. Co.,
`864 F.2d 757 (Fed. Cir. 1988) ....................................................................... 60
`
`Personalized Media Commc’ns., LLC v. Amazon.com, Inc.,
`No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013) ................................... 1
`
`
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 102 .................................................................................................passim
`
`35 U.S.C. § 103 .................................................................................................passim
`
`35 U.S.C. §§ 311–319 ................................................................................................ 1
`
`37 C.F.R. § 42.8 ..................................................................................................... 1, 2
`
`37 C.F.R. § 42.15 ..................................................................................................... 60
`
`37 C.F.R. § 42.100 ............................................................................................... 1, 11
`
`37 C.F.R. § 42.104 ..................................................................................................... 3
`
`
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`
`EXHIBIT LIST
`
`Exhibit
`Description
`No.
`1001 U.S. Patent No. 4,694,490 (“the ’490 patent”)
`1002 U.S. Patent No. 4,965,825 (“the ’825 patent”)
`1003
`Prosecution File History of U.S. Patent No. 7,769,170
`1004 U.S. Patent No. 7,801,304
`1005
`Prosecution File History of U.S. Patent No. 7,801,304
`1006 Declaration of Anthony J. Wechselberger in Support of Petition for
`Inter Partes Review of U.S. Patent No. 7,801,304
`1007 U.S. Patent No. 4,337,483 (“Guillou”)
`1008 U.S. Patent No. 4,225,884 (“Block”)
`1009 U.S. Patent No. 4,352,011 (“Guillou ’011”)
`1010
`International Patent Application No. WO 80/01636 (“Guillou PCT”)
`1011 Declaration of Annemarie Mattheyse in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,801,304
`Curriculum vitae of Anthony J. Wechselberger
`1012
`List of publications by Anthony J. Wechselberger
`1013
`1014 DES Modes of Operation, Federal Information Processing Standards
`Publication 81), U.S. Dept. of Commerce, Nat’l Bureau of Standards
`(Dec. 2, 1980) (“FIPS PUB 81”)
`1015 Data Encryption Standard, Federal Information Processing Standards
`Publication 81), U.S. Dept. of Commerce, Nat’l Bureau of Standards
`(Jan. 15, 1977) (“FIPS PUB 46”)
`1016 U.S. Patent No. 4,172,213 (“Barnes”)
`1017 U.S. Patent No. 4,182,933 (“Rosenblum”)
`1018 Unified Patents Inc.’s Voluntary Interrogatory Responses
`
`
`
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`Under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq., Petitioner
`
`Unified Patents Inc., (“Unified” or “Petitioner”) requests inter partes review of
`
`U.S. Patent No. 7,801,304 (“the ’304 patent”), assigned to Personalized Media
`
`Communications, LLC (“PMC” or “Patent Owner”). Petitioner files a motion for
`
`joinder concurrently herewith to join this proceeding with Amazon.Com and
`
`Amazon Web Svcs., LLC v. Personalized Media Comm., LLC, Case IPR2014-
`
`01532 (the “Amazon IPR”), in which the Petition was filed on September 22,
`
`2014. This petition is substantively identical to the one in the Amazon IPR.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`The following mandatory notices are provided as part of this petition.
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
` Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the
`
`real party-in-interest, and further certifies that no other party exercised control or
`
`could exercise control over Unified’s participation in this proceeding, the filing of
`
`this petition, or the conduct of any ensuing trial. See Ex. 1018.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’304 patent is involved in the Amazon IPR, which is pending, as well as
`
`in co-pending litigation captioned Personalized Media Commc’ns., LLC v.
`
`Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013).
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`Amazon.com, Inc. and Amazon Web Services, LLC are parties to the litigation.
`
`PMC served its Complaint on September 24, 2013.
`
`C. Lead and Back-Up Counsel
`
`Unified provides the following designation of counsel, all of whom are
`
`included in Customer No. 22,850 identified in Unified’s Power of Attorney.
`
`Lead Counsel
`Michael L. Kiklis (Reg. No. 38,939)
`cpdocketkiklis@oblon.com
`Postal and Hand-Delivery Address:
`1940 Duke Street
`Alexandria, VA 22314
`Telephone: (703) 413-2707
`Facsimile: (703) 413-2220
`
`Back-up Counsel
`Scott A. McKeown (Reg. No. 42,866)
`cpdocketmckeown@oblon.com
`Postal and Hand-Delivery Address:
`1940 Duke Street
`Alexandria, VA 22314
`Telephone: (703) 413-6297
`Facsimile: (703) 413-2220
`
`Katherine D. Cappaert (Reg. No. 71,639)
`cpdocketcappaert@oblon.com
`Postal and Hand-Delivery Address:
`1940 Duke Street
`Alexandria, VA 22314
`Telephone: (703) 236-2674
`Facsimile: (703) 413-2220
`
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Please address all correspondence to lead counsel and back-up counsel at the
`
`address shown above. Unified also consents to electronic service by email to:
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`cpdocketkiklis@oblon.com.
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Unified certifies that the ’304 patent is available for inter partes review and
`
`that Unified is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified in this petition.
`
`II.
`
`INTRODUCTION
`
`In 1981, the inventors filed Patent Application No. 06/317,510, which had a
`
`22-column specification. Ex. 1001. In 1987, they filed a continuation-in-part that
`
`inflated the specification to over 300 columns. Ex. 1002. Right before the
`
`effective date of the GATT legislation, PMC filed 328 patent applications, all
`
`claiming priority to both the 1987 and 1981 applications.
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`PMC overwhelmed the Patent Office with a huge number of patent
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`applications, an unclear specification,
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`thousands of prior-art
`
`references,
`
`inconsistent definitions of claim terms, and thousands of pending claims. See Ex.
`
`1003 at 26–27. This, in conjunction with ex parte reexaminations filed against
`
`PMC’s earlier-issued patents, caused the Patent Office to suspend prosecution for
`
`about ten years. Of PMC’s 328 patent applications filed in 1995, one issued in
`
`1999. The next one issued in 2010. Since then, the Patent Office has issued to
`
`PMC approximately 80 additional patents. These 80 patents, along with about 20
`
`pending patent applications, trace their roots back to the 328 patent applications
`
`filed in 1995, and allegedly back to the 1987 and 1981 specifications.
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`IPR Petition – U.S. Pat. 7,801,304
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`With this strategy, PMC has secured patents having about a 50-year span
`
`between the alleged priority date and the expiration date. For example, the ’304
`
`patent expires on September 21, 2027, with an alleged priority of November 3,
`
`1981, a 46-year span. Moreover, PMC has continually broadened the scope of its
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`claims during the 30+ years of prosecution. PMC now alleges that these claims
`
`read on present-day Internet technologies even though they rely on a specification
`
`that describes only point-to-multipoint broadcast technologies such as television
`
`and radio.
`
`PMC’s attempts to obtain broad patent protection have resulted in claims
`
`that encompass the prior art. For the reasons discussed below, the Board should
`
`find that there is a reasonable likelihood that claims 1, 11, 16, 18, and 22–24 of the
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`’304 patent are unpatentable in light of the prior art. Accordingly, Petitioner
`
`requests that the Board to grant this petition and institute this inter partes review.
`
`III. OVERVIEW OF THE ’304 PATENT
`The ’304 patent was filed on May 24, 1995, and issued on September 21,
`
`2010. Ex. 1004. As discussed above, the ’304 patent claims priority to a series of
`
`continuation and continuation-in-part applications dating back to November 3,
`
`1981, and includes a 285-column specification and 32 issued claims.
`
`As issued, the ’304 patent generally relates to the encryption and decryption
`
`of programming. Claim 24 is representative:
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`IPR Petition – U.S. Pat. 7,801,304
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`24. A method for controlling decryption of digital television or
`computer programming at a receiver station, said method comprising
`the steps of:
`storing a procedure for locating or identifying a specific digital
`instruct-to-decrypt signal in a plurality of signal types;
`receiving an information transmission that includes a plurality of
`signal types and at least one unit of digital television or
`computer programming;
`passing at least some of said information transmission to a
`detector;
`detecting data of said plurality of signal types and transferring said
`detected data to a processor;
`identifying or locating said specific digital instruct-to-decrypt
`signal by processing said detected data in accordance with
`said stored information; and
`decrypting at least some of said unit of digital television or
`computer programming on the basis of said identified or
`located specific digital instruct-to-decrypt signal.
`
`Claim 24 recites a method for controlling decryption of encrypted data at a
`
`receiver station using a transmitted decryption signal. Claim 23 recites a similar
`
`method where a decryptor is controlled to alter its decryption pattern or technique.
`
`Claim 1 recites a method of decryption using an encrypted decryption signal,
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`which would be decrypted at the receiver station to then decrypt the encrypted
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`data. Claims 11, 16, and 18 are dependent claims of claim 1 and respectively add
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`IPR Petition – U.S. Pat. 7,801,304
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`limitations requiring two different signal-transmission sources, the storage of data
`
`evidencing receiver processing, and the inclusion of computer data as part of the
`
`programming.
`
` Claim 22 describes a method for transmitting decryption
`
`information to a receiver station in response to a query and using that information
`
`to decrypt encrypted data.
`
`The 32 issued claims of the ’304 patent originated from 7 different
`
`applications: 08/449,263; 08/481,074; 08/469,994; 08/485,775; 08/477,712;
`
`08/449,413; and 08/448,810. Ex. 1005 at 237, 462. Claims 1, 16, and 18 of the
`
`’304 patent were added in a supplemental preliminary amendment in the
`
`08/449,263 application as claims 3, 6, and 10 respectively. Ex. 1005 at 27–29.
`
`Initially, the Patent Office rejected claims 3 and 6 as being anticipated by Guillou
`
`(U.S. Patent No. 4,337,483) and rejected claim 10 as being obvious in light of
`
`Guillou. Ex. 1005 at 67–70. The Patent Office also rejected these claims for
`
`double patenting and indefiniteness. Id. at 46–67 and 72–73.
`
`In response, PMC amended claims 3 and 10 and argued that Guillou does
`
`not disclose every claim element:
`
`Guillou fails to disclose the step of decrypting a control signal portion
`of some programming to select or decrypt the information portion of
`the programming. Guillou does not suggest decrypting a control signal
`portion to select or decrypt an information portion. Guillou decrypts
`encoded text-video at a receiver station, but nothing in Guillou
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`IPR Petition – U.S. Pat. 7,801,304
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`suggests decrypting something in order to select or decrypt something
`else. Furthermore, Guillou fails to disclose the step of decrypting a
`control signal which causes at least one of passing an information
`portion to a decryptor and decrypting an information portion of some
`programming.
`
`Ex. 1005 at 84–86 and 107–10. The Patent Office rejected PMC’s arguments and
`
`amendments for claims 3, 6, and 10, and reasserted its § 102 rejection of claims 3
`
`and 6, and its § 103 rejection of claim 10, under Guillou, finding every limitation
`
`disclosed in Guillou and noting that PMC’s arguments and characterization of
`
`Guillou were unpersuasive. Ex. 1005 at 143–49.
`
`PMC then amended claims 3, 6, and 10, including adding over ten lines of
`
`limitations to claim 3 (these limitations were later deleted). Ex. 1005 at 194–97.
`
`In a separate Amendment, PMC added claim 21 from the 08/481,074 application,
`
`which became claim 64 and issued as claim 22. Ex. 1005 at 223–24, 237.
`
`PMC never overcame the rejections based on Guillou. Rather, in the next
`
`Office Action, a new examiner simply took a different approach to rejecting the
`
`claims. Compare Ex. 1005 at 241, with id. at 128. Under this new approach,
`
`PMC’s claims were rejected on multiple grounds, including under § 103. But these
`
`rejections were global and not claim specific, and did not include the prior
`
`rejections under Guillou. See Ex. 1005 at 353–90. The examiner never suggested
`
`that PMC had overcome the rejections based on Guillou.
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`IPR Petition – U.S. Pat. 7,801,304
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`In response to the new rejections, PMC again added new claims from co-
`
`pending applications. These included claim 4 from the 08/485,775 application,
`
`which became claim 92 and later issued as claim 23; claim 15 from the 08/477,712
`
`application, which became claim 123 and later issued as claim 11; and claim 3
`
`from the 08/448,810 application, which became claim 156 and later issued as claim
`
`24. Ex. 1005 at 465, 480, 497, and 462.
`
`PMC then filed a 1358-page response, which included amendments to
`
`claims 3, 6, 10, 92, 123, and 156. Ex. 1005 at 518–20, 558, 569, and 584–85.
`
`Claim 3 was amended to delete over twelve lines of limitations, including the ten
`
`lines that were added in the August 5, 1998 Amendment; claim 6 was amended to
`
`add the limitation “wherein said subscriber station stored information that
`
`evidences processing said programming”; and claim 92 was amended to add the
`
`limitation “in accordance with a varying pattern of timing or location.” Ex. 1005
`
`at 518–19, 558.
`
`The Patent Office then issued a miscellaneous action that was later expunged
`
`from the file history and is not part of the ’304 patent’s certified file history. See
`
`Ex. 1005 at 1963 (cover page to Sept. 10, 2001 Notice of Nonresponsiveness) and
`
`2021 (withdrawing the Sept. 10, 2001 Notice of Nonresponsiveness). In response,
`
`PMC made minor amendments to claims 3, 64, 92, and 156. Ex. 1005 at 1972,
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`1982, 1993–94.
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`IPR Petition – U.S. Pat. 7,801,304
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`This essentially marked the end of the substantive examination of the
`
`application. Prosecution of the application appears to have been suspended until
`
`late 2009, when the Patent Office filed its next Interview Summary. See Ex. 1005
`
`at 2018–2033. After a series of interviews and minor claim amendments, claims 3,
`
`123, 6, 10, 64, 92, 156 were allowed, and issued as claims 1, 11, 16, 18, and 22–
`
`24, respectively. Ex. 1005 at 2029–2045. No office actions were issued by the
`
`Patent Office after 2001.
`
`In the Notice of Allowability, the examiner amended the claims and noted
`
`that the prior art did not disclose “decrypting said first encrypted digital control
`
`signal portion of said programming using said decryptor at said subscriber station;
`
`passing said encrypted digital information portion of said programming to said
`
`decryptor; decrypting said encrypted digital information of said programming
`
`using said decryptor at said subscriber station based on the decrypted control signal
`
`portion.” Ex. 1005 at 2063. Yet, these limitations only applied to claim 3, which
`
`issued as claim 1.
`
`IV. PRIORITY
`For this review, Petitioner only asserts prior art dated before the November
`
`3, 1981 filing date. Petitioner therefore believes it is unnecessary to address
`
`priority but reserves the right to do so should PMC attempt to antedate the prior
`
`art.
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`IPR Petition – U.S. Pat. 7,801,304
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`V.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that the Board cancel claims 1, 11, 16, 18, and 22–24 of
`
`the ’304 patent based on the following grounds for unpatentability:
`
`Ground 1: Claims 1, 11, 18, 23, and 24 are unpatentable under 35 U.S.C.
`
`§ 103 as obvious over Guillou in view of the knowledge of a person having
`
`ordinary skill in the art;
`
`Ground 2: Claim 22 is unpatentable under 35 U.S.C. § 103 as obvious over
`
`Guillou in view of Block, Guillou ’011, and the knowledge of a person having
`
`ordinary skill in the art;
`
`Ground 3: Claims 11 and 16 are unpatentable under 35 U.S.C. § 103 as
`
`obvious over Guillou in view of the knowledge of a person having ordinary skill in
`
`the art, and in further view of Block;
`
`Ground 4: Claims 1, 16, and 18 are unpatentable under 35 U.S.C. § 102(a)
`
`as anticipated by FIPS PUB 81.
`
`A detailed explanation of how claims 1, 11, 16, 18, and 22–24 are
`
`unpatentable is set forth below in Section VIII. Additional explanation and support
`
`are included in the Declaration of Anthony J. Wechselberger. Ex. 1006.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A person having ordinary skill in the art for purposes of the ’304 patent
`
`would be an individual having a bachelor’s degree in electrical engineering, or
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`equivalent experience, and two to four years of experience in the broadcast or
`
`cablecast television transmission fields. Ex. 1006 ¶¶ 26–30.
`
`VII. CLAIM CONSTRUCTION
`The claim terms in the ’304 patent are presumed to take on their ordinary and
`
`customary meaning based on the broadest reasonable interpretation of the claim
`
`language in light of the specification. 37 C.F.R. § 42.100(b); In re Trans Texas
`
`Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007). Unified’s position
`
`regarding the scope of the claims should not be taken as an assertion regarding the
`
`appropriate claim scope in other forums where a different standard of claim
`
`construction applies. Unified sets forth the following to clarify certain claim terms
`
`under the “broadest reasonable interpretation” standard.
`
`A.
`
`“Digital Programming/Mass Medium Presentation
`Signal/Television”
`
`The terms “digital programming,” and “digital mass medium presentation
`
`signal” do not appear in the ’304 patent outside of the claims. The term “digital
`
`television” appears in the specification once, but it does not provide a definition of
`
`the term. Ex. 1004 at 235:9. Throughout the specification, digital signals are
`
`discussed as embedded in analog television. See, e.g., Ex. 1004 at Fig. 1; 10:49–62
`
`(“The video transmission is inputted to video transmission divider, 4, which is a
`
`conventional divider that splits the transmission into two paths. One is inputted
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`continuously to TV signal decoder, 203, and the other to microcomputer, 205. TV
`
`signal decoder, 203, which is described more fully below, has capacity for
`
`receiving a composite video transmission; detecting digital information embedded
`
`there in . . . .”); id. at 160:33–37; 234:39–235:43. Therefore, under the broadest
`
`reasonable
`
`interpretation, “digital programming,” “digital mass medium
`
`presentation signal,” and “digital television” can include broadcast transmissions
`
`containing digital signals with analog television signals.
`
`B.
`
`“Said Decryptor”
`
`In the ’304 patent, some embodiments use a single decryptor, while other
`
`embodiments use multiple decryptors. See, e.g., Ex. 1004 at Figs. 3A, 4, 7. The
`
`’304 patent also discusses a decryptor as being part of a controller. See, e.g., Ex.
`
`1004 at Fig. 2C; 137:53–61. In light of these ambiguities and under the broadest
`
`reasonable interpretation, “said decryptor” in limitations 1(e) and 1(f) of claim 1
`
`can refer to a single decryptor as well as multiple decryptors. The term can also
`
`refer to a single logical decryptor comprising a plurality of physical (or logical)
`
`decrypting circuits.
`
`C.
`
`“A Processor”
`
`Claim 24 refers to “a processor,” ostensibly as the circuitry that performs the
`
`“decrypting.” The ’304 patent includes many instances of the term “processor,”
`
`including ones that perform a decrypting function. See, e.g., Ex. 1004 at 75:30–34.
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`IPR Petition – U.S. Pat. 7,801,304
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`The ’304 patent also describes decryptors having the same functionality as a
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`decryptor that is found within a processor. See, e.g., Ex. 1004 at Fig. 2; 83:43–45
`
`(“Said decryptor, 39K, is a conventional decryptor that is identical to decryptor,
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`10, of signal processor, 200.”). In claim 24, the only functionality associated with
`
`the “processor” in limitation 24(d) is “identifying or locating,” “processing,”
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`(limitation 24(e)) and “decrypting” (limitation 24(f)). These are not functions
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`exclusive to a “processor”—a decryptor or other circuits can perform these
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`functions. Under the broadest reasonable interpretation, the term “a processor” can
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`refer to a decryptor or a decryption circuit, as well as a decoder, a detector, a
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`discriminator, an unscrambler, or other similar components.1
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`VIII. SPECIFIC PROPOSED GROUNDS FOR REJECTION
`Claims 1, 11, 16, 18, and 22–24 of the ’304 patent are unpatentable for the
`
`reasons set forth below.
`
`
`1 As further support for this construction, PMC proposed in the related
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`district court litigation that “processor” in claim 24 of the ’304 patent means “any
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`device capable of performing operations on data.”
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`Unified v. Personalized Media
`IPR Petition – U.S. Pat. 7,801,304
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`A. Claims 1, 11, 18, 23, and 24 Would Have Been Obvious Over
`Guillou in View of the Knowledge of a Person Having Ordinary
`Skill in the Art.
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`Guillou was filed on January 31, 1980, and issued on June 29, 1982. Ex. 1007.
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`Guillou is therefore prior art to the ’304 patent at least under § 102(e). Guillou’s
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`disclosure is prior art under § 102(b) by virtue of its publication on August 7, 1980
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`as WO 80/01636. See Ex. 1010, 1011. PMC never disputed that Guillou is prior
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`art during prosecution of the ’304 patent.
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`Guillou traces its roots back to the development of the French ANTIOPE
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`system in the late 1970s. Ex. 1007 at 1:7–62 (stating that the invention could be
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`used with the ANTIOPE system and incorporating by reference a number of
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`documents relating to the ANTIOPE system). Guillou discloses an access-control
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`video-transmission system that controls a subscriber’s access to transmitted data.
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`Id. at Figs. 2, 7; 4:4–58. Figure 7 shows an embodiment of the invention:
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`IPR Petition – U.S. Pat. 7,801,304
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`Id. at Fig. 7. As shown above, Guillou discloses an apparatus for encrypting and
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`decrypting digital signals and data using a “double-key” (two layer) encryption
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`scheme2 that changes periodically. Id. at 8:5–24. Notably, Guillou contemplates
`
`
`2 Guillou also refers to FIPS PUB 46 in describing its encryption/decryption
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`system. Ex. 1007 at 11:3–10; Ex. 1015. The use of double-key encryption was
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`well known, and numerous other prior-art references disclose double-key
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`encryption and the use of DES and its modes of operation, including FIPS PUB 81
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`IPR Petition – U.S. Pat. 7,801,304
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`the use of this access-control scheme as an add-on to both unidirectional broadcast
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`systems and two-directional interactive systems. Id. at 21:23–28 (“It also goes
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`without saying that the disclosed broadcasting system is used only by way of an
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`example and that the invention could be applied to other systems without any
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`difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE
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`systems or the VIEWDATA or PRESTEL systems.”); 1:10–20. A person having
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`ordinary skill in the art in 1981 would know that the foregoing examples of teletext
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`systems supported the broadcast of supplementary information as digital data
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`embedded in the vertical blanking interval (VBI) or in full fields of analog
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`television signals. Ex. 1006 ¶¶ 38–40, 46, 52.
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`More specifically, Guillou discloses that data is encrypted at the emitting
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`center 2 using an operating key K. Ex. 1007 at Fig. 7; 10:4–36. The operating key
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`K changes randomly at intervals determined by the emitting center. Id. at 8:39–43;
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`10:4–7. In addition to encrypting the data, the emitting center also encrypts the
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`operating key K using subscribers’ keys Ci, resulting in messages Mi. Id. at 8:44–
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`58; 15:52–65. The subscribers’ keys Ci are generated by the subscription center
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`100, which distributes these keys to both the emitting center and to the subscribers.
`
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`(showing modes of operation based on FIPS PUB 46), Barnes (U.S. Pat. No.
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`4,172,213), and Rosenblum (U.S. Pat. No. 4,182,933). Exs. 1014, 1016, 1017.
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`IPR Petition – U.S. Pat. 7,801,304
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`Id. at 15:46–50; 16:26–29. The encrypted data and the encrypted messages Mi are
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`transmitted to receiver stations 4, each of which uses a stored subscribers’ key Ci to
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`decrypt and extract the operating key K from the encrypted messages Mi. Id. at
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`15:66–16:10; 20:34–21:12. After decrypting operating key K, the receiver station
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`uses this operating key K to decrypt the encrypted data. Id. at 10:41–66.
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`As demonstrated below, it would have been obvious to a person having
`
`ordinary skill in the art to modify the teachings of Guillou to arrive at the methods
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`recited in claims 1, 11, 18, 23, and 24 of the ’304 patent.3
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`1.
`
`Claim 1
`
`Guillou
`Guillou discloses a method for controlling the decryption of
`programming at a subscriber station. Ex. 1007 at Abstract;
`Figs. 2, 7–10; 9:48–10:66; 15:42–16:17.
`
`Claim 1
`1(pre) A method
`for controlling the
`decryption of
`programming at a
`subscriber station,
`Said method
`comprising the
`steps of:
`Guillou discloses a digital encrypted key delivery process,
`1(a) receiving
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`3 Unified believes that Guillou discloses each and every limitation of claims
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`1, 11, 18, 23, and 24 as discussed herein and therefore anticipates these claims.
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`Nevertheless, Unified asserts Guillou under an obviousness ground of rejection
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`because Unified cannot predict which, if any, limitations PMC might argue are not
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`disclosed by Guillou, or how the Board might construe the claims.
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`IPR Petition – U.S. Pat. 7,801,304
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`
`Claim 1
`programming,
`said programming
`having a first
`encrypted digital
`control signal
`portion and an
`encrypted digital
`Information
`portion;
`
`Guillou
`which controls the decryption of encrypted digital data, where
`the encrypted digital data along with the encrypted digital key
`are transmitted from an emitter center and are received by a
`subscriber station. Id. at Figs. 1, 2, 7, 9; 2:8–14; 6:62–68; 8:5–
`43; 9:60–64.
`
`“first encrypted digital control signal portion”
`The encrypted digital control signal is message Mi, which
`contains the operating key K (i.e., digital control signal). Mi is
`encrypted but is detectable, readable, and capable of being
`decrypted to obtain the key K. The messages Mi are sent