`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 47
`
` Filed: March 3, 2022
`
`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
`
`
`
`
`
`
`
`
`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).
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`For PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory S. Arovas
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`msernel@kirkland.com
`joel.merkin@kirkland.com
`egoryunov@kirkland.com
`greg.arovas@kirkland.com
`alan.rabinowitz.kirkland.com
`
`
`For PATENT OWNER:
`
`Douglas Kline
`GOODWIN PROCTER LLP
`dkline@goodwinlaw.com
`
`Thomas J. Scott, Jr.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
