`571.272.7822
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` Paper No. 50
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` Filed: March 3, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE OFFICE OF THE UNDERSECRETARY AND DIRECTOR
`OF THE UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`____________
`
`
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`____________
`
`
`
`Before ANDREW HIRSHFELD, Commissioner for Patents, Performing the
`Functions and Duties of the Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office.
`
`
`
`
`
`ORDER
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`
`
`
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`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`
`Personalized Media Communications, LLC (“Patent Owner”) requests
`Director review of two separate Final Written Decisions issued by the Patent
`Trial and Appeal Board (“Board”) determining certain claims of U.S. Patent
`No. 8,559,635 B1 (“the ’635 patent”) unpatentable (IPR2016-00754, Paper
`41; IPR2016-01520, Paper 38).1 See Paper 48; Ex. 3100. The Board found
`claims 4, 7, 13, 21, and 28–30 unpatentable in IPR2016-00754, and claims
`3, 18, 20, 32, and 33 unpatentable in IPR2016-01520. Paper 41; IPR2016-
`01520, Paper 38. In both decisions, the Board construed the terms
`“encrypted” and “decrypted,” determining that neither term was limited to
`scrambling and descrambling operations on digital information, but could
`also include scrambling and descrambling on analog information. See Paper
`41 at 7–18.
`Patent Owner argues that Director review is appropriate because the
`Board erred by adopting erroneous claim constructions for “encrypted” and
`“decrypted.” Paper 48, 4–9. Patent Owner argues that the Board applied a
`similar analysis in its final written decision in Apple Inc. v. Personalized
`Media Communications, LLC, IPR2016-00755, Paper 42 (PTAB Feb. 14,
`2019), which the U.S. Court of Appeals for the Federal Circuit reversed in
`relevant part on the issue of claim construction. See Paper 48 at 1–2, 4–18
`(citing Personalized Media Communications, LLC v. Apple Inc., 952 F.3d
`1336, 1339 (Fed. Cir. 2020) (construing the term “encrypted digital
`
`
`1 The Final Written Decision in IPR2016-00754 is representative of both the
`decisions in IPR2016-00754 and IPR2016-01520. The request for Director
`review in IPR2016-00754 is also representative of the request in IPR2016-
`01520. Accordingly, all citations are to IPR2016-00754 Paper and Exhibit
`numbers, unless otherwise noted.
`
`
`
`2
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`information transmission including encrypted information” as limited to
`digital information) (“PMC”)).
`I have considered Patent Owner’s requests. The Board’s claim
`construction analysis for the terms “encrypted” and “decrypted” in the cases
`is substantially similar to the Board’s related analysis of the term “encrypted
`digital information transmission including encrypted information” at issue in
`the Federal Circuit case noted above. As such, I grant Director review,
`vacate the prior Final Written Decisions, and remand the cases for the Board
`to address its claim construction for the terms “encrypted” and “decrypted”
`in light of the Federal Circuit’s decision in PMC. See PMC, 952 F.3d at
`1339–46.
`Based on the foregoing, it is:
`ORDERED that the Board’s Final Written Decisions (IPR2016-
`00754, Paper 41 and IPR2016-01520, Paper 38) are vacated; and
`FURTHER ORDERED that the Board shall issue new final written
`decisions that address the Federal Circuit’s claim construction in
`Personalized Media Communications, LLC v. Apple Inc., 952 F.3d 1336
`(Fed. Cir. 2020).
`
`
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`3
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`
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`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`For PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory S. Arovas
`KIRKLAND & ELLIS LLP
`msernel@kirkland.com
`joel.merkin@kirkland.com
`egoryunov@kirkland.com
`greg.arovas@kirkland.com
`
`
`For PATENT OWNER:
`
`Douglas Kline
`GOODWIN PROCTER LLP
`dkline@goodwinlaw.com
`
`Thomas J. Scott, Jr.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`
`
`
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`4
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`