Trials@uspto.gov
`571–272–7822
`
`Paper: 51
`Entered: March 15, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`____________
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571–272–7822
`
`Paper: 51
`Entered: March 15, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`____________
`
`
`Before KARL D. EASTHOM, KEVIN F. TURNER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`
`On March 3, 2022, the 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,
`ordered the Board’s prior Final Written Decisions (IPR2016-00754, Paper
`41 and IPR2016-01520, Paper 38) to be vacated, and ordered that the Board
`issue new final written decisions. Paper 50, 31.
`Previously, we determined that certain claims of U.S. Patent No.
`8,559,635 B1 (“the ’635 Patent”) to be unpatentable, specifically
`determining claims to be unpatentable over some of the grounds listed
`below:
`Reference(s)
`Guillou2
`Guillou
`Aminetzah3
`Aminetzah, Bitzer4
`Chandra5
`Chandra, Nachbar 6.
`Seth-Smith7
`Campbell8
`
`1 We refer to the Papers listed in IPR2016-00754, where the same paper was
`made of record in both proceedings.
`2 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”).
`3 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”).
`4 US Patent No. 3,743,767, issued July 3, 1973 (Ex. 1009) (“Bitzer”).
`5 US Patent No. 4,817,140, filed Nov. 5, 1986 (Ex. 1041) (“Chandra”).
`6 Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-
`13, 1986 (Ex. 1042) (“Nachbar”).
`7 US Patent No. 4,886,770, filed Aug. 14, 1986 (Ex. 1043) (“Seth-Smith”).
`8 US Patent No. 4,536,791, PCT filed Mar. 31, 1981 (Ex. 1044)
`2
`
`Basis Claim(s)
`§ 102 7, 21, 29
`§ 103 4, 13, 28, 30
`§ 103 21, 28–30
`§ 103 4
`§ 102 13, 18, 20, 32
`§ 103 33
`§ 102 4, 7
`§ 103 3
`
`Proceeding
`IPR2016-00754
`IPR2016-00754
`IPR2016-00754
`IPR2016-00754
`IPR2016-01520
`IPR2016-01520
`IPR2016-01520
`IPR2016-01520
`
`
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`In the latter Final Written Decision in IPR2016-01520, we dismissed
`some grounds of unpatentability with respect to certain claims (claims 4, 7,
`13, 21, and 28–30), where those claims were previously found to be
`unpatentable in the prior Final Written Decision (see IPR2016-01520, Paper
`38, 4), and could not be sustained; because both Decisions have now been
`vacated, all prior grounds of unpatentability previously set forth by
`Petitioner remain viable.
`Before the Director, Patent Owner argued that we applied a similar
`analysis in the above-referenced final written decisions to that discussed 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 Personalized Media Communications, LLC v. Apple Inc., 952 F.3d 1336,
`1339 (Fed. Cir. 2020) (construing the term “encrypted digital information
`transmission including encrypted information” as limited to digital
`information). Paper 50, 2–3. The Director agreed, vacating the prior Final
`Written Decisions, and remanding the cases to address the claim
`construction set forth by U.S. Court of Appeals for the Federal Circuit. Id.
`at 3.
`As such, we determine it is necessary to receive additional briefing
`
`from the parties and we set a schedule of that briefing below. Petitioner may
`file, on or before April 15, 2022, an Opening Brief detailing the applicability
`of the grounds identified above in view of the claim construction set for by
`the U.S. Court of Appeals for the Federal Circuit. That Opening Brief will
`
`
`(“Campbell”).
`
`3
`
`
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`
`be limited to twenty five (25) pages and will discuss all of the grounds of
`unpatentability set forth in the Petitions of IPR2016-00754 and IPR2016-
`01520. If additional pages are needed to address all grounds sufficiently,
`Petitioner may email a request to the Board for additional pages, on or
`before April 8, 2022, with an explanation of why additional pages are
`necessary. The panel will inform Petitioner if that request is approved.
`
`Thereafter, Patent Owner may file, on or before May 15, 2022, a
`Responsive Brief detailing why the grounds identified above are not
`applicable to the claims of the ’635 Patent, and traversing arguments raised
`by Petitioner. Patent Owner’s brief will also be limited to twenty five (25)
`pages, unless Petitioner was granted additional pages, with Patent Owner
`limited to the same number, or if Patent Owner determines that additional
`pages are needed to address all grounds and arguments sufficiently, Patent
`Owner may email a request to the Board for additional pages, with an
`explanation of why additional pages are necessary, on or before May 8,
`2022. In the latter case, the panel will inform Patent Owner if that request is
`approved.
`
`Petitioner may seek to file a Reply Brief by requesting the same via
`email, on or before May 22, 2022, explaining why such briefing is needed,
`and if approved, Patent Owner will receive the right to file a Sur-Reply Brief
`subsequently. The timing and page limits of any reply briefing will be
`determined by the panel. A common heading, applicable to both
`proceedings, such as that used in this order, may be used by the parties, with
`a copy of the same briefing to be filed in both proceedings.
`It is
`
`4
`
`
`
`IPR2016-00754
`IPR2016-01520
`Patent 8,559,635 B1
`
`ORDERED that Petitioner may file an Opening Brief, limited to
`twenty five (25) pages, detailing the applicability of the all of the grounds of
`unpatentability set forth in the Petitions of IPR2016-00754 and IPR2016-
`01520, in view of the claim construction set for by the U.S. Court of Appeals
`for the Federal Circuit, with that brief to be filed on or before April 15,
`2022;
`FURTHER ORDERED that Patent Owner may file a Responsive
`Brief, limited to twenty five (25) pages, detailing why the grounds identified
`above are not applicable to the claims of the ’635 Patent, and traversing
`arguments raised by Petitioner, with that brief to be filed on or before May
`15, 2022;
`FURTHER ORDERED that additional pages and subsequent briefs
`may be requested by the parties according the methods described above.
`
`
`
`5
`
`
`
`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
`
`6
`
`
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