Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: Sept. 20, 2016
`
`
`
`
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00753
`Patent 7,752,649 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
`
`
`Paper No. 8
`Filed: Sept. 20, 2016
`
`
`
`
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00753
`Patent 7,752,649 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-00753
`Patent 7,752,649 B1
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 39, 54, 62, and 67 of U.S. Patent No.
`7,752,649 B1 (Ex. 1002, “the ’649 patent”). Personalized Media
`Communications LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition, Petitioner’s cited evidence, Patent
`Owner’s Preliminary Response and associated evidence, we conclude
`Petitioner has established a reasonable likelihood it would prevail with
`respect to at least one of the challenged claims. Accordingly, for the reasons
`that follow, we institute an inter partes review.
`B. Related Proceedings
`Petitioner informs us that the ’649 patent is the subject of a lawsuit:
`Personalized Media Commc’ns, LLC v. Apple, Inc., No. 2:15-cv-01366-
`JRG-RSP (E.D. Tex., filed July 30, 2015). Pet. 59. Petitioner also informs
`us that other patents related to the ’649 patent are the subject of instituted
`inter partes review proceedings. Id.; see IPR2014-01527, IPR2014-01528,
`IPR2014-01530, IPR2014-01531, IPR2014-01532, IPR2014-01533, and
`IPR2014-01534.
`Patent Owner informs us that the ’649 patent is the subject of the
`following additional lawsuits: Personalized Media Commc’ns, LLC v.
`Funai Electric Co., No. 2:16-cv-00105 (E.D. Tex., filed February 1, 2016);
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`Personalized Media Commc’ns, LLC v. Top Victory Electronics (Taiwan)
`Co., No. 2:15-cv-1206-JRG-RSP (E.D. Tex., filed July 1, 2015); LG
`Electronics, Inc. v. Personalized Media Commc’ns, LLC, No. 1:15-cv-1096-
`RGA (D. Del., filed November 26, 2015); and Personalized Media
`Commc’ns, LLC v. Samsung Electronics America, Inc., No. 2:15-cv-1754-
`JRG-RSP (E.D. Tex., filed November 10, 2015). Paper 4, 1.
`C. The ’649 Patent
`The ’649 patent discloses an apparatus and methods for the
`transmission, reception, processing and presentation of information carried
`on various types of electrical signals (i.e., standard radio and television
`signals). Ex. 1002, Abstr. According to the ’649 patent, a subscriber station
`receives conventional television broadcast transmissions via a conventional
`antenna. Id. at 10:44–46. Digital information, including information that
`causes the receiver to perform particular functions, is embedded in the
`broadcast. Id. at 7:51–63, 23:34–37. A television monitor connected to the
`subscriber station presents received video and audio information. Id. at Fig.
`1, 11:20–23. The ’649 patent discloses that receiving a frequency of interest
`causes a TV signal decoder to receive and process command information
`from a first message. Id. at 130:9–12.
`One embodiment of the ’649 patent is shown in Figure 3A,
`reproduced below.
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`As shown in Figure 3A above, receiving information embedded in a
`signal causes the binary SPAM information of a first command, with error
`correcting information, to be detected at detector 34; checked and corrected,
`as necessary, at processor 39B; converted into locally usable binary
`information at processor 30, 39D; and recorded at the SPAM-input-signal
`memory of said control processor 39J. Ex. 1002, 130:25–31. The control
`apparatus of decoder 30 is preprogrammed to process information as
`monitor information and local control information. Id. at 130:31–33. Upon
`receipt of a first command, preprogrammed instructions at the RAM and
`ROM associated with control processor 39J cause control processor 39J to
`process the information of the command. Id. at 130:34–38. Control
`processor 39J then locates monitor 40 information that it retains in its RAM
`associated with the channel mark of cable channel 13 and compares the
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`“program unit identification code” of the first command with the program
`unit information of the monitor information in RAM. Ex. 1002, 130:38–45.
`No match results which indicates cable channel 13 is transmitting a new
`program unit. Id. at 130:44–45.
`Not resulting in a match causes said controller 39 automatically to
`transfer information of new programming to microcomputer 205 and to
`transfer to buffer/comparator 14 for further processing said monitor
`information in RAM, which is monitor information of the programming
`transmitted on cable channel 13 prior to a program of interest. Id. at
`130:45–51. Automatically, control processor 39J causes matrix switch 39I
`to cease transferring information from said EOFS valve 39F to control
`processor 39J and commence transferring information from control
`processor 39J to buffer/comparator 8 (to which said matrix switch 39I has
`capacity to transfer information). Id. at 130:51–56. Control processor 39J
`then automatically transmits a message that consists of binary information of
`a “00” header (indicating a command with execution and meter-monitor
`segments), the execution segment information of the pseudo command, a
`meter-monitor segment containing monitor information in RAM (including
`the associated channel mark and the format information of said information),
`and any padding bits required to end the message. Id. at 130:56–64, Fig. 2E.
`Another embodiment of the ’649 patent is shown in Figure 2E,
`reproduced below.
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`As shown above, Figure 2E is an example of the composition of signal
`information and shows the initial binary information of a message that
`contains execution, meter-monitor, and information segments. See 1002,
`9:49–53.
`Another embodiment of the ’649 patent is shown in Figure 4,
`reproduced below.
`
`
`Figure 4, above, illustrates a “Signal Processing Programming Reception
`and Use Regulating System.” Ex. 1002, 148:22–24. According to the ’649
`patent, the subscriber station of Figure 4 has capacity for receiving wireless
`television programming transmissions at conventional antenna 199 and a
`multi-channel cable transmission at converter boxes 201, 222. Id. at
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`148:25–28. The selected channels whose information is received at boxes
`201, 222 are selected by tuners 214 and 223 each with capacity for tuning to
`a selected channel. Ex. 1002, 148:33–37. Antenna 199 and boxes 201, 222
`transmit their received information to matrix switch 258. Id. at 148:37–38.
`Matrix switch 258 can output information to the certain devices, including
`television tuner 215, signal stripper 229, signal generator 230, and
`decryptors 107, 224, 231. Id. at 148:41–42, 148:48–149:2.
`The ’649 patent further discloses that signal processor 200 controls all
`the above devices and performs the following tasks: (1) controls the tuning
`of tuners 214, 215, and 223; (2) controls the switching of matrix switch 258;
`(3) supplies cipher algorithm and cipher key information to and controls the
`decrypting of decryptors 107, 224 and 230; (4) controls signal stripper 229
`in selecting transmission locations and/or information to strip and in signal
`stripping; and (5) controls signal generator 230 in selecting transmission
`locations at which to insert signals, in generating specific signals to insert,
`and in inserting. Id. at 149:3–12. The ’649 patent explains that the function
`of local input 225, shown in Figure 4 above, is to provide means whereby a
`subscriber may input information to the signal processor of his subscriber
`station, thereby controlling the functioning of his personal signal processor
`system is specific predetermined fashions. Id. at 149:18–23.
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`D. Illustrative Claims
`As noted above, Petitioner challenges independent claims 39, 54, 62,
`and 67. Independent claim 39 is representative of the invention and is
`reproduced below:
`39. A method of processing signals in a television receiver, said
`television receiver having a plurality of processors, said method
`comprising the steps of:
`
`receiving an information transmission including digital television
`signals and a message stream;
`
`detecting said message stream in said information transmission;
`
`inputting at least a first portion of said message stream to a
`control processor;
`
`selecting control information in said at least a first portion of said
`message stream and communicating said selected control
`information to at least one register memory;
`
`comparing stored function invoking data to the contents of said at
`least one register memory;
`
`inputting said digital television signals to said plurality of
`processors on the basis of one or more matches;
`
`processing of said digital television signals simultaneously at two
`or more of said plurality of processors; and displaying television
`programming included in said digital television signals.
`
`Ex. 1002, 290:51–291:4.
`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Charles J. Neuhauser, Ph.D. (Ex. 1001):
`
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`Reference
`
`Mustafa
`
`Patent/Printed
`Publication
`US Patent No. 4,789,895
`
`Date
`
`Exhibit
`
`1003
`
`1004
`
`1005
`
`1006
`
`Issued Dec. 6, 1988
`(filed Apr. 30, 1987)
`Issued July 19, 1980
`(filed Dec. 15, 1978)
`Issued Aug. 20, 1985
`(filed Nov. 27, 1981)
`Issued Nov. 24, 1981
`(filed Dec. 15, 1978)
`Patent Owner submits the Declaration of Samuel H. Russ, Ph.D. (Ex. 2001).
`
`
`Iijima
`
`US Patent No. 4,215,369
`
`Campbell
`
`US Patent No. 4,536,791
`
`Widergren US Patent No. 4,302,775
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the ’649 patent based on the
`following grounds under 35 U.S.C. § 1031:
`Reference(s)
`
`Mustafa
`Mustafa and Iijima
`Campbell
`Campbell and Widergren
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`39, 54, 62, and 67
`39, 54, 62, and 67
`39, 54, 62, and 67
`39, 54, 62, and 67
`
`Pet. 10.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013.
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes construction for the claim terms “digital television
`signals,” “digital video signals,” “cadence information,” and “processor.”
`Pet. 2–7. Patent Owner disputes Petitioner’s proposed constructions for
`“digital television signals,” “digital video signals,” “cadence information,”
`and “processor.” Prelim. Resp. 10–18. Patent Owner also proposes
`construction for the terms and limitations “television,” “video,” and “stored
`function invoking data,” recited in the challenged claims. Id. at 8–10, 19.
`Most of the terms do not appear to be in controversy and do not require
`express construction at this stage. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are
`in controversy need to be construed and only to the extent necessary to
`resolve the controversy). On this preliminary record, the issues presented
`show that the following terms or phrases require express construction.
`1. “processor”
`All of the challenged claims recite a “plurality of processors.”
`Petitioner construes “processor” as “a device that operates on data.” See Pet.
`6. Petitioner contends that the ’649 patent describes a variety of processors,
`including hardwired devices that process data. Pet. 6–7 (citing Ex. 1002,
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`135:52–56 (decoders 30 and 40 process information); 76:11–13
`(buffer/comparators 8 process data). Patent Owner disputes Petitioner’s
`proposed construction of “processor.” Prelim. Resp. 15–18. Patent Owner
`contends the specifications consistently describe processors as devices that
`execute instructions or process data according to instructions. Id. (citing Ex.
`1002, 119:27–30, 8:35–40, 149:3–4, 151:7–13; Ex. 2001 ¶¶ 71–73).
`Despite Patent Owner’s arguments and citations, we agree with
`Petitioner’s positions, because the ’649 patent states that (1) “[r]eceiving
`said EOFS-signal-detected information at said CPU causes controller, 39, to
`determine, in a predetermined fashion, that said end of file signal is part of a
`SPAM message being transferred under control of instructions invoked by
`transfer-to-addressed-apparatus information” (Ex. 1002, 50:50–54), (2)
`control processor, 39J, determines, in a predetermined fashion, that EOFS
`valve, 39F, is the primary input to control processor, (id. at 91:43–45), and
`(3) “[c]ontroller, 12, receives the signals inputted from buffer/ comparator,
`8, and decryptor, 10; analyzes said signals in a predetermined fashion; and
`determines whether they are to be transferred to external equipment or to
`buffer/comparator, 14, or both” (id. at 16:56–60). Additionally, the
`’490 patent specification, to which the ’649 patent claims priority, discloses
`“pass[ing] a signal word to signal processor, 200, which in a predetermined
`fashion, signal processor, 200, decrypts and transfers to decrypt[o]r, 224, to
`serve as the code upon which decrypt[o]r, 224, will decrypt the incoming
`encrypted recipe.” Ex. 1007, 20:39–43. We find that a “predetermined
`fashion” as disclosed in the ’649 patent and ’490 patent does not exclude a
`hardwired predetermination.
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`Moreover, the quoted disclosures imply that a mere word signal
`constitutes a type of instruction because a signal processor responds to it.
`Also, an “instruction” may merely “inform[]” a processor. Ex. 1002,
`135:48–51. For example, the ’649 patent describes transferring an
`“instruction . . . that informs said processor, 39J, [that] cable channel 2 is
`inputted to decoder, 30.” Id. Processor operations include decryption,
`thereby suggesting a decryptor may be a processor. See id. at 83:63–64
`(“Said decryptor, 39K, is a conventional decryptor that is identical to
`decryptor, 10, of signal processor, 200.”). In addition, the ’490 patent refers
`to “one or more processor[s]/monitors and/or buffer/comparators that
`organize and transfer the information stream.” Ex. 1007, 4:68–5:2. This
`latter disclosure shows that processors simply organize and transfer
`information much like buffer/comparators.
`Petitioner points out that in related district court litigation, Patent
`Owner previously proposed construing the term “processor” as “any device
`capable of performing operations on data.” Pet. 6–7 (citing Ex. 1021, 12;
`Ex. 1008, 14–16). The disclosures discussed above supports Patent Owner’s
`district court construction. We also incorporate-by-reference our
`construction of processor in related IPR2014-01532, which relies on the
`same 1987 specification in a related patent. See Ex. 1022, 6–8.
`Accordingly, on this preliminary record, we construe “processor” to mean “a
`device that operates on data.”
`2. “digital television signals”
`Petitioner contends the term “digital television signals” should be
`construed as “television signals entirely or partially encoded in a digital
`format.” Pet. 2–3. According to Petitioner, the term “digital television
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`signal” did not have a well-known meaning in the art at the time of the
`invention. Id. at 3 (citing Ex. 1001 ¶ 72). To that point, Petitioner argues
`that the prosecution history of the ’649 patent supports its proposed
`construction. Id. Petitioner notes the following:
`[D]uring prosecution, the Examiner asked “[w]hat do applicants
`mean by ‘digital television’?” and rejected several claims under
`§ 112 based on the use of “digital television.” Ex. 1009,
`8/27/1996 Non-Final Rejection, at 3. The applicant responded
`that digital detectors 34 and 37 determine whether there are
`encoded digital signals present in portions the analog video or
`audio portions of the television signal, and digital detector 38
`“receives a separately defined, and clearly digital, transmission.”
`Ex. 1012, 10/2/1998 Amendment, at 34-35. The Applicant
`further explained that “[s]ince the television programming
`transmission is disclosed to be comprised of a video portion, an
`audio portion and embedded encoded digital signals, the
`separately defined transmission is at least some of the television
`programming transmission that contains the encoded digital
`signals.” Id. The Applicant concluded that “the audio portion,
`video portion and signal portion of the television programming
`transmission may be entirely or partially encoded in digital
`format, separately defined from analog format,
`thereby
`comprising ‘digital television.’” Id. (emphasis added).
`
`Pet. 3–4.
`Patent Owner disputes Petitioner’s proposed construction of “digital
`television signals,” arguing that the term should be construed to mean
`“television programming that necessarily includes both digital audio and
`digital video signals.” Prelim. Resp. 10. According to Patent Owner, the
`’649 patent supports its construction, because the specification discloses that
`“the program originating studio…transmits a television signal that consists
`of so-called ‘digital video’ and ‘digital audio,’ well known in the art”
`
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`(Ex. 1002, 149:47–50), and “said program…ceases transmitting a television
`signal of digital video and digital audio” (id. at 155:38–40). Prelim. Resp.
`10 (also citing Ex. 1002, 156:24–31 (contrasting “conventional analog
`television” to “digital video and audio”); Ex. 2001 ¶ 58). Patent Owner
`further disputes Petitioner’s position, arguing that: (1) a person of ordinary
`skill in the art would not have understood the term “digital television signal”
`to mean “television signals entirely or partially encoded in a digital format,”
`as Petitioner contends; (2) Petitioner’s construction is unreasonably broad
`and would encompass analog television signals that simply include some
`digital information; and (3) Petitioner’s construction is inconsistent with the
`specification. Prelim. Resp. 10–11 (citing Pet. 2–3; Ex. 2001 ¶ 57).
`Patent Owner further argues that Petitioner is incorrect in stating that
`the term “digital television signal” did not have a well-known meaning in
`the art by September 11, 1987 –– i.e., the priority date of the challenged
`claims. Id. at 11. To the contrary, Patent Owner contends the term “digital
`television signal” was known to a person of ordinary skill in the art as early
`as July, 1975, because it was extensively described in a published journal
`article. Id. at 11–12 (citing Ex. 2003; Ex. 2001 ¶¶ 59–62).
`Despite Patent Owner’s arguments and citations, we agree with
`Petitioner’s position, because of statements made during prosecution
`regarding the signal composition of a television programming transmission.
`We are charged with interpreting claim terms according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). Additionally, when construing claim
`terms, we “should also consult the patent’s prosecution history in
`proceedings in which the patent has been brought back to the [U.S. Patent
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`and Trademark Office] for a second review.” Microsoft Corp. v. Proxyconn,
`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
`In this case, during patent prosecution, the patent applicant
`specifically stated:
`[T]elevision programming transmissions (i) include a video
`portion and an audio portion, and (ii) may be either entirely
`encrypted or partially encrypted. Since encrypting a television
`programming transmission involves “convert[ing] (a [television
`programming transmission]) into an equivalent combination of
`bits,” clearly the ’81 case discloses “digital television.”
`
`Ex. 1012, 34. The patent applicant further explained that:
`Digital detector 34 decodes encoded signal information in the
`line portion or portions of the analog video portion of the
`television programming transmission. Likewise, digital detector
`37 determines whether a particular encoded signal is present in
`the audio portion of the television programming transmission.
`Digital detector 38 receives a separately defined, and clearly
`digital, transmission. Since paths A and B carry the video and
`audio portions, of the television transmission, respectively, the
`separately defined portion is at least some of that which remains
`in the television programming transmission. Since the television
`programming transmission is disclosed to be comprised of a
`video portion, an audio portion and embedded encoded digital
`signals, the separately defined transmission is at least some of
`the television programming transmission that contains the
`encoded digital signals.
`
`Id. at 34–35 emphasis added). The patent applicant then concluded that:
`Thus, it is disclose[d] that the audio portion, video portion and
`signal portion of the television programming transmission may
`be entirely or partially encoded in digital format, separately
`defined from analog format, thereby comprising “digital
`television.”
`
`Id. at 35 (emphasis added).
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`Accordingly, we determine that the term “digital television signals”
`encompasses “television signals entirely or partially encoded in a digital
`format.” We do not agree with Patent Owner’s position, because Patent
`Owner’s proposed construction narrows unnecessarily the term’s scope and
`imports selected limitations from specific embodiments in the specification
`into the claim. Specifically, Patent Owner’s proffered construction requires
`that a television programming transmission include both digital audio and
`digital video signals, but the specification and the prosecution history do not
`limit the digital television signal to require both digital audio and digital
`video signals. We must be careful not to import limitations improperly into
`the claims or to read a particular embodiment appearing in the written
`description into the claim if the claim language is broader than the
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Given the disclosure in the ’649 patent, the claim language itself, and
`the prosecution history of the ’649 patent, we determine that the broadest
`reasonable construction of “digital television signals” encompasses
`“television signals entirely or partially encoded in a digital format.”
`3. “digital video signals”
`Petitioner contends the term “digital video signals” should be
`construed as “video signals entirely or partially encoded in a digital format.”
`Pet. 5. According to Petitioner, during prosecution of the ’649 patent, the
`patent applicant explained to the Examiner that the specification discloses
`embedding digital signals in portions of analog video. Id. (citing Ex. 1012,
`34–35 (“[s]ince the television programming transmission is disclosed to be
`comprised of a video portion, an audio portion and embedded encoded
`digital signals, the separately defined transmission is at least some of the
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`television programming transmission that contains the encoded digital
`signals.” (alteration in original))). Petitioner further argues that during
`prosecution, the patent applicant made clear that “digital video” may
`“constitute only one element of digital television” or “hav[e] applications
`entirely separate from digital television.” Id. (alteration in original) (citing
`Ex. 1010, 5). Petitioner, therefore, concludes that digital video signals can
`be partially encoded in digital format. Id.
`Patent Owner disputes Petitioner’s proposed construction of “digital
`video signals,” arguing that the term should be construed to mean “video
`signals encoded as discrete numerical values instead of an analog
`representation.” Prelim. Resp. 12 (citing Ex. 1002, 236:21–26). According
`to Patent Owner, the inventors when using the terms “digital television
`signals,” “digital video signals,” and “digital audio signals,” intended that
`the word “digital” modify the words “television signals,” “video signals,”
`and “audio signals” and that the signals be “digital” –– not analog. Id. at 13
`(citing Ex. 2001 ¶ 64). Patent Owner cites to the ’649 patent to support its
`position, arguing that the specification establishes a decisive dichotomy
`between digital video and analog video when disclosing that
`[i]n the prior art, various means and methods exist for regulating
`the reception and use of electronically transmitted programming.
`Various scrambling means are well known in the art for
`scrambling, usually the video portion of analogue television
`transmissions...[.] Encryption/decryption means and methods,
`well known in the art, can regulate the reception and use of, for
`example, digital video and audio television transmissions.
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`Patent 7,752,649 B1
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`Id. (citing Ex. 1002, 144:48–58). Patent Owner, thus, concludes that there is
`no digital-cum-analog video signal in the specification, as suggested by
`Petitioner. Id. at 14.
`
`We do not agree with Patent Owner. We are charged with
`interpreting claim terms according to their broadest reasonable construction
`in light of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b). Several embodiments in the ’649 patent specifically teach that
`digital signals are embedded in a television frequency, transmitted to a
`subscriber station apparatus, detected by a digital detector and then decoded.
`See Ex. 1002, 18:31–63, 19:31–45, 48:8–39, 84:55–63, 129:63–131:39,
`149:40–153:29, 158:4–159:35. The ’649 patent further teaches that signals
`can be embedded in either the audio portion or the video portion of a
`television program transmission. Id. at 153:3–154:7, 155:7–40, 156:24–30.
`The ’649 patent specifically refers to encrypted “digital audio” and “digital
`video” as the encrypted digital information embedded in either the audio or
`video portion, respectively, of a television program transmission. Id. at
`153:11–16, 155:7–13. Accordingly, we determine that Patent Owner’s
`proffered construction is too narrow and not consistent with the ’649 patent
`specification.
`
`Additionally, we do not agree with Petitioner. When construing claim
`terms, we “should also consult the patent’s prosecution history in
`proceedings in which the patent has been brought back to the [U.S. Patent
`and Trademark Office] for a second review.” Microsoft Corp. 789 F.3d at
`1298. As is clear from the prosecution history of the ’649 patent, “patent
`applicants do not use the terms ‘digital television’ and ‘digital video’
`interchangeably. Rather, digital video refers to digitized video signals and
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`IPR2016-00753
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`may, on the one hand, constitute only one element of digital television while,
`on the other hand, having applications entirely separate from digital
`television.” See Ex. 1010, 5. Accordingly, we determine that Petitioner’s
`proffered construction is too broad and not consistent with the ’649 patent
`prosecution history.
`
`Based on the language of the claims, the ’649 patent specification, and
`the ’649 patent prosecution history, we determine that the term “digital
`video signals” encompasses “digital information embedded in the video
`portion of a television transmission signal.”
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
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`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at
`*10 (Fed. Cir. July 25, 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinations of prior
`art.
`
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner’s Declarant, Dr. Neuhauser, opines that a person of ordinary
`skill in the art relevant to the ’649 patent would have had “undergraduate
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`degree in electrical engineering or related field” and “would also have 3-5
`years of practical experience in the field of digital communications,
`electronics and computer based systems.” Ex. 1001 ¶ 69. Dr. Neuhauser
`further opines that “[a]lternatively, this person of ordinary skill in the art
`might have a Master’s degree in electrical engineering with specialization in
`digital systems and somewhat less practical experience.” Id.
`Patent Owner’s Declarant, Dr. Russ, opines that a pe
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