Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 53
`Entered: September 8, 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.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 53
`Entered: September 8, 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.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`INTRODUCTION
`
`A. Background
`On March 14, 2016, Apple Inc. (“Petitioner”) filed a petition to
`institute an inter partes review of claims 1–4, 7, 13, 18, 20, 21, 28–30, 32
`and 331 of U.S. Patent No. 8,559,635 B1 (“the ’635 Patent”). IPR2016-
`00754, Paper 1 (“754-Pet.”). Personalized Media Communications LLC
`(“Patent Owner”) filed a preliminary response (IPR2016-00754, Paper 7),
`and pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review on
`four grounds:
`Proceeding
`Basis Claim(s)
`Reference(s)
`IPR2016-00754
`§ 102 7, 21, 29
`Guillou2
`IPR2016-00754
`§ 103 4, 13, 28, 30
`Guillou
`IPR2016-00754
`§ 103 21, 28–30
`Aminetzah3
`IPR2016-00754
`§ 103 4
`Aminetzah, Bitzer4
`IPR2016-00754, Paper 8 (“754-DI”), 425. After institution of trial, Patent
`Owner then filed a Response (IPR2016-00754, Paper 15; “754-PO Resp.”),
`to which Petitioner filed a Reply (IPR2016-00754, Paper 23; “754-Pet.
`Reply”). In addition, Patent Owner also filed a Contingent Motion to
`Amend (IPR2016-00754, Paper 16), to which Petitioner filed an Opposition
`(IPR2016-00754, Paper 24), to which Patent Owner then filed a Reply to
`Petitioner’s Opposition to the Contingent Motion (IPR2016-00754, Paper
`
`1 Patent Owner subsequently disclaimed claims 1 and 2 of the ’635 Patent
`(IPR2016-00754, Ex. 3001), such that we need not consider those claims
`with respect to the instituted grounds.
`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, filed Oct. 4, 1971 (Ex. 1009) (“Bitzer”).
`5 Under Board practice at the time, not all grounds and claims proffered in
`the Petition were instituted.
`
`2
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`27). An oral argument was held on June 6, 2017, and we issued a Final
`Written Decision (IPR2016-00754, Paper 41; “754-FWD”), determining all
`subject claims to be unpatentable and denying Patent Owner’s Contingent
`Motion to Amend. 754-FWD, 72. Patent Owner sought rehearing
`(IPR2016-00754, Paper 42), which was denied (IPR2016-00754, Paper 43).
`Thereafter, Patent Owner appealed our decision to the Court of Appeals for
`the Federal Circuit (IPR2016-00754, Paper 44), where that appeal was
`remanded from the Federal Circuit for further proceedings in light of United
`States v. Arthrex, 141 S. Ct. 1970 (2021). Patent Owner then filed a Request
`for Director Review (IPR2016-00754, Paper 48; “754-RDR”), and 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, addressed that request along
`with the request made with respect to the additional proceeding, discussed
`below.
`On July 30, 2016, Petitioner filed another petition to institute an inter
`partes review of claims 3, 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of
`the ’635 Patent. IPR2016-01520, Paper 1 (“1520-Pet.”). Patent Owner filed
`a preliminary response (IPR2016-01520, Paper 5), and pursuant to 35 U.S.C.
`§ 314(a), we instituted an inter partes review on four grounds:
`
`3
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Proceeding
`Basis Claim(s)
`Reference(s)
`§ 102 13, 18, 20, 32
`Chandra6
`IPR2016-01520
`IPR2016-01520
`§ 103 33
`Chandra, Nachbar 7.
`IPR2016-01520
`§ 102 4, 7
`Seth-Smith8
`IPR2016-01520
`§ 103 3
`Campbell9
`IPR2016-01520, Paper 7 (“1520-DI”), 5810. After institution of trial, Patent
`Owner then filed a Response (IPR2016-01520, Paper 17; “1520-PO Resp.”),
`to which Petitioner filed a Reply (IPR2016-01520, Paper 26; “1520-Pet.
`Reply”). In addition, Patent Owner also filed a Contingent Motion to
`Amend (IPR2016-01520, Paper 16), to which Petitioner filed an Opposition
`(IPR2016-01520, Paper 25), to which Patent Owner then filed a Reply to
`Petitioner’s Opposition to the Contingent Motion (IPR2016-01520, Paper
`30), Petitioner filed a Sur-Reply (IPR2016-01520, Paper 36) supporting the
`Opposition. An oral argument was held on October 26, 2017, and we issued
`a Final Written Decision (IPR2016-01520, Paper 38; “1520-FWD”),
`determining all subject claims to be unpatentable and denying Patent
`Owner’s Contingent Motion to Amend. 1520-FWD, 6611. Patent Owner
`sought rehearing (IPR2016-01520, Paper 39), which was denied (IPR2016-
`
`6 US Patent No. 4,817,140, filed Nov. 5, 1986 (Ex. 1041) (“Chandra”).
`7 Daniel Nachbar, When Network File Systems Aren’t Enough: Automatic
`Software Distribution Revisited, USENIX Conference Proceedings, June 9-
`13, 1986 (Ex. 1042) (“Nachbar”).
`8 US Patent No. 4,886,770, filed Aug. 14, 1986 (Ex. 1043) (“Seth-Smith”).
`9 US Patent No. 4,536,791, PCT filed Mar. 31, 1981 (Ex. 1044)
`(“Campbell”).
`10 Under Board practice at the time, not all grounds and claims proffered in
`the Petition were instituted.
`11 Because of the prior decision (754-FWD), consideration of claims 4, 7,
`and 13 of the ’635 Patent in that latter decision (1520-FWD) were dismissed,
`but are now under consideration.
`
`4
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`01520, Paper 40). Thereafter, Patent Owner appealed our decision to the
`Court of Appeals for the Federal Circuit (IPR2016-01520, Paper 41), where
`that appeal was remanded from the Federal Circuit for further proceedings in
`light of United States v. Arthrex, 141 S. Ct. 1970 (2021). Patent Owner then
`filed a Request for Director Review (IPR2016-01520, Paper 45; “1520-
`RDR”), and 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, considered the
`requested issues of the IPR2016-00754 and IPR2016-01520 cases together.
`
`In the Order Granting Request for Director Review (IPR2016-00754,
`Paper 50; “Granting Order”), issued March 3, 2022, it was discussed that
`“[i]n 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.” Granting Order, 2.
`Patent Owner argued that review was appropriate because the Board erred
`by adopting erroneous claim constructions for “encrypted” and “decrypted.”
`754-RDR, 4–9. The Granting Order also details that
`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 [754-RDR] 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
`information transmission including encrypted information” as
`limited to digital information) (“PMC”)).
`
`5
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Granting Order, 2–312. The argument was found persuasive, determining
`that “[t]he 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.” Id.
`at 3. Based on that, the prior Final Written Decisions (754-FWD, 1520-
`FWD) were vacated, and the cases remanded “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.” Id.
`
`Subsequently, we set a briefing schedule (IPR2016-00754, Paper 51;
`“Briefing Order”), with the parties arguing the “applicability of the grounds
`identified above in view of the claim construction set forth by the U.S.
`Court of Appeals for the Federal Circuit.” Briefing Order, 3. Thereafter,
`Petitioner filed its Brief on Remand (IPR2016-00754, Paper 52; “Pet. Brief
`on Remand”), Patent Owner filed its Responsive Brief on Remand
`(IPR2016-00754, Paper 53; “PO Resp. Brief on Remand”), Petitioner filed
`its Reply Brief on Remand (IPR2016-00754, Paper 55; “Pet. Reply Brief on
`Remand”), and Patent Owner filed its Sur-Reply Brief on Remand
`(IPR2016-00754, Paper 56; “PO Sur-Reply Brief on Remand”).
`
`B. Related Proceedings
`Patent Owner indicates that the ’635 Patent is the subject of a lawsuit:
`Personalized Media Communications, LLC v. Apple, Inc., No. 2:15-cv-1366-
`
`
`12 The relationship between the ’635 Patent and the subject patent in the
`Federal Circuit Decision will be discussed further below
`
`6
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`JRG–RSP (E.D. Tex. filed July 30, 2015). IPR2016-00754, Paper 49;
`IPR2016-01520, Paper 46.
`
`C. The ’635 Patent
`The ’635 Patent is titled “Signal Processing Apparatus and Methods”
`and generally relates to a unified system of programming communication.
`IPR2016-00754, Ex. 1003, Abs. The challenged claims relate to methods of
`controlling the decryption of programming at a subscriber station or a
`receiver station. Independent claims 3, 18, and 21 are considered
`representative and are reproduced below:
`3. A method of controlling a remote transmitter station to
`communicate program material to a subscriber station and
`controlling said subscriber station to process or output a unit of
`programming, said method comprising the steps of:
`receiving a control signal which operates at the remote
`transmitter station to control the communication of a unit of
`programming and one or more first instruct signals and
`communicating said control signal to said remote transmitter
`station;
`receiving a code or datum identifying a unit of programming to
`be transmitted by the remote transmitter station, said remote
`transmitter station transferring said unit of programming to a
`transmitter;
`receiving at said remote transmitter station one or more second
`instruct signals which operate at the subscriber station to identify
`and decrypt said unit of programming or said one or more first
`instruct signals, said remote transmitter station transferring said
`one or more second instruct signals to said transmitter; and
`transmitting from said remote transmitter station an information
`transmission comprising said unit of programming, said one or
`more first instruct signals, and said one or more second instruct
`signals, said one or more first instruct signals being transmitted
`in accordance with said control signal.
`
`7
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Id. at 286:29–53.
`18. A method of processing signals at a receiver station
`comprising the steps of:
`receiving at least one encrypted digital information transmission,
`wherein the at
`least one encrypted digital
`information
`transmission is unaccompanied by any non-digital information
`transmission;
`locating code;
`passing said code to a processor;
`controlling a decryptor that decrypts encrypted digital data to
`decrypt in a specific fashion on the basis of said code;
`decrypting a portion of said at least one information transmission
`in said specific fashion; and
`passing said decrypted portion of said at least one encrypted
`digital information transmission to one of said processor and an
`output device.
`Id. at 288:10–25.
`21. A method for decryptor activation in a network comprising:
`receiving a transmission comprising encrypted materials;
`decrypting under first processor control a first portion of said
`encrypted materials in said transmission;
`inputting said first portion of said encrypted materials to a
`decryptor;
`decrypting under second processor control a second portion of
`said encrypted materials based on said step of decrypting said
`first portion of said encrypted materials.
`Id. at 288:61–289:3.
`The ’635 Patent describes access control to transmitted content at a
`receiver station. IPR2016-00754, Ex. 1003, Abs. Figure 4 of the
`’635 Patent, reproduced below, illustrates a receiver station:
`
`8
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`
`
`
`As shown above in Figure 4, the ’635 Patent discloses a receiver station
`having signal processor 200 to control tuners 214, 215, and 223, the
`switching of matrix switch 258, and decrypting by decryptors 107, 224, and
`230. Id. at 148:30–35. In one example described in the Specification, the
`“Wall Street Week” program is transmitted to the receiver station by a cable
`television head end. Id. at 149:23–26. Prior to transmission, the cable head
`end “encrypts the digital audio information of said transmission, in a fashion
`well known in the art, using particular cipher algorithm C and cipher key Ca,
`then transmits the information of said program on cable channel 13.” Id. at
`149:26–30. Furthermore, a SPAM message consisting of an “01” header,
`local-cable-enabling-message (#7), is transmitted with instructions that
`enable the “Wall Street Week” programming. Id. at 150:24–33. Executing
`the instructions causes controller 20 to receive the cable channel
`transmission, select the information of a cipher key Ca from among the
`
`9
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`
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`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`information portion, and transfer the cipher key to decryptor 107. Id. at
`152:10–16, 44–48. Once the cipher key is received by decryptor 107,
`decryptor 107 then decrypts “using said key information and selected
`decryption cipher algorithm C, and output[s] the decrypted information of
`the audio portion of the ‘Wall Street Week’ program transmission.” Id. at
`152:48–51.
`Subsequently, a second SPAM message that consists of an “01”
`header provides “1st-stage-enable-WSW-program” instructions as the
`information segment information. Id. at 153:38–43. Executing the “1st-
`stage-enable-WSW-program” instructions causes controller 20 to affect a
`first stage of decrypting the video information of the “Wall Street Week”
`program transmission. Id. at 153:66–154:2. Controller 20 selects the
`decryption cipher key Ba and transfers it to selected decryptor 224. Id. at
`154:28–30. Controller 20 causes decryptor 224 to commence decrypting the
`received information using decryption cipher key Ba and decryption cipher
`algorithm B. Id. at 154:28–33.
`A third SPAM message provides “2nd-WSW-program enabling-
`message” instructions, causing the controller to affect a second stage of
`decrypting the digital video information of “Wall Street Week.” Id. at
`156:62–157:5. The second stage of decrypting the video information of the
`“Wall Street Week” program transmission is completed using the decryption
`cipher key Aa. Id. at 158:22–29. Finally, controller 20 causes the receiver
`station to commence the transfer of the decrypted television information of
`the “Wall Street Week” program to microcomputer 205 and monitor 202M.
`Id. at 159:55–59.
`
`10
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`D. Scope of Consideration on Remand
`Per the briefing on remand, Petitioner asserts that the above-discussed
`term, “encrypted digital information transmission including encrypted
`information,” for which the Federal Circuit provided a construction in PMC,
`is different from the recitations of the instant claims and that no previous
`ground need be disturbed. Pet. Brief on Remand 5–18. Petitioner asserts
`that “[t]he Federal Circuit explicitly did not limit the basic concepts of
`‘encryption’ and ‘decryption’ to digital-only operations,” and that altering
`those construction to be digital-only “would be flatly inconsistent with the
`Federal Circuit’s holding and reasoning.” Id. at 4–5. Additionally,
`Petitioner asserts that challenged claims 18, 20, 32, and 33 already recite
`“all-digital” requirements, as do the prior art references applied against those
`claims. Id. at 7–10. Petitioner also asserts that claims 3, 4, 7, 13, 21, and
`28–30 do not recite the “disputed term,” construed by the Federal Circuit in
`PMC. Id. at 10–13. Lastly, Petitioner asserts that claims 4, 7, 13, 21, and
`28–30 are unpatentable even under Patent Owner’s alternative constructions
`of the “encrypt/decrypt” terms. Id. at 13–18.
`In response, Patent Owner asserts that under the Federal Circuit’s
`construction, the “encrypt/decrypt” terms, requires the upholding of validity
`of at least claim 3, alleging that Petitioner has tacitly acknowledged the
`same. PO Resp. Brief on Remand 3–9. In reply, Petitioner asserts that
`Patent Owner is misreading the scope and discussion of the Federal Circuit’s
`decision, asserting that “the Federal Circuit did not reject the Board’s
`construction of ‘decrypt’ or re-construe that term.” Pet. Reply Brief on
`Remand 1. In response, Patent Owner asserts that the Federal Circuit
`adopted “the applicant’s interpretation of encryption and decryption as the
`
`11
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`basis for the [its] construction of the full phrase.” PO Sur-Reply Brief on
`Remand 2.
`Given the remarks and direction provided in the Granting Order, it is
`clear that we are ordered to “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).”
`Granting Order 3. The patent considered in PMC was U.S. Patent No.
`8,191,091 (“’091 patent), which issued from a patent application (No.
`08/449,413), which was a continuation of patent application (No.
`08/113,329), now U.S. Patent No. 7,856,650; the patent application that
`issued as the ’635 Patent was also a continuation of patent application (No.
`08/113,329), such that specifications of the ’091 and ’635 patents are the
`same. It would be myopic to construe only the identical claim term to those
`resolved by the Federal Circuit’s decision. The Federal Circuit’s analysis
`reflected, for the most part, that the actual claim language “does not preclude
`Patent Owner’s interpretation, nor does it compel the Board’s
`interpretation,” determining upon multiple characteristics that the proposed
`constructions were equally plausible in view of the claim language. PMC,
`952 F.3d at 1340–43. Considering the prosecution history of the subject
`patent in that case, the ’091 patent, the Federal Circuit disagreed with the
`Board’s legal analysis and determined that prosecution history statements
`need not reach the level of disavowal to inform the claim construction. Id. at
`1344–46. The Federal Circuit added that “[d]uring prosecution, the
`applicant repeatedly and consistently voiced its position that encryption and
`decryption require a digital process in the context of the [patent, and]
`applicant never abandoned that position.” Id. at 1345. As such, the
`
`12
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`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`consideration of “encrypt” and “decrypt” terms need to be revisited in this
`decision on remand.
`Similarly, the Granting Order notes that “[t]he 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.” Granting Order 3. We would be
`remiss if we did not consider the Federal Circuit’s analysis of those terms
`cited in the Granting Order, i.e., “encrypt,” “decrypt,” and related terms, in
`drafting this decision on remand. As such, we re-construe the claim terms
`containing “encrypt” and “decrypt” in the Claim Construction section below.
`Patent Owner also argues that the Federal Circuit decision (PMC) “is
`also relevant for a more subtle but no less important reason: its emphasis on
`the need to consider the applicant’s ‘repeated and consistent statements
`during prosecution.’” PO Resp. Brief on Remand 2. Patent Owner alleges
`that we failed to account for such statements during prosecution, resulting in
`faulty claim constructions of certain terms. Id. at 3, 9–19. These terms
`include “executable instructions,” “changing a decryption technique,”
`“encrypted video,” and “processor,” where it is clear that none of the terms
`would be reconsidered on the basis of our reevaluation of claim terms
`containing “encrypt” and “decrypt.” Id. at 9–19. For example, Patent
`Owner’s contentions regarding “encrypted video” go to the interpretation of
`“video,” rather than “encrypted,” and Patent Owner’s contentions regarding
`“changing a decryption technique” go to whether changing a decryption key
`would fall under the scope that term, rather than consideration of digital-
`only decryption processes, i.e., the central issues detailed in the Granting
`
`13
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`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Order. Additionally, Patent Owner bids us to “revisit [our] prior conclusions
`that claims 18, 20, 32, and 33 are not entitled to a 1981 priority date,”
`although Patent Owner acknowledges that the “issue is not compelled by the
`Director’s Order.” Id. at 3, 20–25.
`With respect to the additional claim terms that Patent Owner seeks for
`reconsideration, we disagree with Patent Owner’s contentions that we have
`failed to account for crucial prosecution statements in construing other claim
`terms. The claim construction analysis from the prior Final Written
`Decisions is repeated below for claim terms previously construed, but we
`have considered all prior prosecution history statements in making the
`original determinations, and we are not compelled to make changes outside
`of the newly construed terms, necessitated by the Federal Circuit’s decision.
`Similarly, such considerations would be outside of the purview of the
`remand instructions that we have been provided. See Granting Order.
`We also decline Patent Owner’s offer that we are “free to revisit this
`issue” of the proper priority date given to certain claims because the Director
`did not deny review on the priority-date issue, but instead said nothing about
`it at all. PO Resp. Brief on Remand 20. We continue to arrive at the same
`conclusions regarding the proper priority that claims 18, 20, 32, and 33 are
`entitled to, reiterated below, having considered all of the evidence put forth
`by the parties at trial. Such considerations would be outside of the purview
`of the remand instructions that we have been provided. See Granting Order.
`
`
`ANALYSIS
`
`A. Legal Standards
`In an inter partes review, the petitioner has the burden of proving
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`14
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`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`A claim is unpatentable under 35 U.S.C. § 102 if a single prior art
`reference expressly or inherently describes each and every limitation set
`forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
`1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
`F.2d 628, 631 (Fed. Cir. 1987).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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) when in evidence, objective indicia of
`obviousness or non-obviousness (i.e., secondary considerations). Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). One seeking to establish
`obviousness based on more than one reference also must articulate sufficient
`reasoning with rational underpinnings to combine teachings. See KSR, 550
`U.S. at 418.
`
`B. Level of Ordinary Skill in the Art
`According to Petitioner’s Declarant, Mr. Wechselberger, a person of
`ordinary skill in the art relevant to the ’635 Patent would have “bachelor’s
`degree in electrical engineering, or equivalent experience, and two to four
`years of experience in the broadcast or cablecast television transmission
`
`15
`
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`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`fields.” IPR2016-00754, Ex. 1001 ¶ 81. Similarly, Patent Owner’s
`Declarant Dr. Weaver defines a person of ordinary skill in the art relevant to
`the ’635 Patent to have a “bachelor’s degree or equivalent in digital
`electronics, electrical engineering, computer engineering, computer science,
`or a related technical degree, with 2-5 years of post-degree work experience
`in system engineering (or equivalent).” IPR2016-00754, Ex. 2001 ¶ 31.
`Based on our review of the ’635 Patent, the types of problems and
`solutions described in the ’635 Patent and cited prior art, and the testimony
`of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent
`Owner’s definition of a person of ordinary skill in the art at the time of the
`claimed invention. We are not persuaded, however, that the analysis would
`differ under Petitioner’s proposed level of skill. We note that the applied
`prior art also reflects the appropriate level of skill at the time of the claimed
`invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Claim Interpretation
`1. “encrypt”/”decrypt”
`a. The Final Written Decision
`All of the independent claims, specifically claims 2, 3, 13, 18, 20, 21,
`32, and 33, recite the limitations directed to encryption and/or decryption.
`Citing passages from the ’635 Patent, a related IPR decision, its Declarant,
`and a related District Court case, Petitioner contends that decryption and
`encryption are not limited to operations on digital information, but include
`descrambling and scrambling operations on analog information. See 1520-
`Pet. 3–4 (citing IPR2016-01520, Ex. 1001 ¶¶ 62–65; IPR2016-01520,
`Ex. 1003, 160:52–55; IPR2016-01520, Ex. 1011, 7–11; IPR2016-01520,
`
`16
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Ex. 1012, 2–5; IPR2016-01520, Ex. 1013, 25–26; IPR2016-01520,
`Ex. 1014, 2–4; IPR2016-01520, Ex. 1017, 29).
`Patent Owner, citing the ’635 Patent, which claims priority to U.S.
`Patent No. 4,694,490 (“’490 patent”), related patent reexaminations, a
`District Court case, and other evidence, contends that in line with
`convention, the ’635 Patent makes a distinction between encryption and
`scrambling, with the former limited to digital data and the latter limited to
`analog data. See 1520-PO Resp. 45–47 (citing IPR2016-01520, Ex. 1003,
`144:8–19; IPR2016-01520, Ex. 2003, 68–69; IPR2016-01520, Ex. 2005, 53–
`54; IPR2016-01520, Ex. 2009, 2; IPR2016-01520, Ex. 2012, 1330, 1362;
`IPR2016-01520, Ex. 2023 ¶¶ 46–54, 58–71).
`In the Final Written Decisions, we examined the disclosure of the
`’635 Patent, the ’490 patent, past statements by Patent Owner’s declarant,
`prior proceedings, and the prosecution history of the ’635 Patent, as well as
`the common meaning of the terms in the relevant timeframes. 754-FWD 7–
`18; 1520-FWD 20–27. Based on all of those factors, as well as the
`arguments from the parties, we construed the term “decrypt,” and associated
`terms, with respect to the ’635 Patent to include descrambling. 754-FWD
`18; 1520-FWD 27. This construction was one of the issues that Patent
`Owner raised on its appeal to the Federal Circuit. See IPR2016-00754,
`Paper 44; IPR2016-01520, Paper 41.
`
`b. The Federal Circuit’s Decision on Appeal in a Related Case
`In Personalized Media Communications (“PMC”), the Federal Circuit
`considered related ’091 patent and specific claim terms evaluated in an inter
`partes review of that patent. PMC, 952 F.3d at 1337–38. The instant
`’635 Patent is closely related to the patent addressed in PMC. The analysis
`
`17
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`of the Federal Circuit indicated that the actual claim language therein “does
`not preclude Patent Owner’s interpretation, nor does it compel the Board’s
`interpretation,” determining upon multiple characteristics that the proposed
`constructions were equally plausible in view of the claim language. PMC,
`952 F.3d at 1340–43. Considering the prosecution history of the subject
`patent in that case, the Federal Circuit disagreed with the Board’s legal
`analysis and determined that prosecution history statements need not reach
`the level of disavowal to inform the claim construction. Id. at 1344–46. The
`Federal Circuit added that “[d]uring prosecution, the applicant repeatedly
`and consistently voiced its position that encryption and decryption require a
`digital process in the context of the [patent, and] applicant never abandoned
`that position.” Id. at 1345.
`In briefing from the parties, Petitioner argues that the Federal Circuit
`expressly did not re-construe “encrypted” and “decrypted” in PMC, and did
`not find any error in the Board’s construction of those terms. Pet. Brief on
`Remand 1–5; Pet. Reply Brief on Remand 1–3. Petitioner asserts that the
`claim term construed, “an encrypted digital information transmission
`including encrypted information,” is affected by the consistent and repeated
`statements made during prosecution. Pet. Brief on Remand 1–2. Petitioner
`also argues that the Federal Circuit affirmed the Board’s decision regarding
`claim 26, although that claim recited “encrypted information,” with the
`Federal Circuit holding that that “the prosecution history statements and
`amendments that we found decisive to the interpretation of ‘encrypted
`digital information transmission’ do not apply” to the claims including the
`phrase “encrypted information.” Id. at 4 (citing PMC, 952 F.3d at 1346)
`(emphasis omitted).
`
`18
`
`
`
`IPR2016-00754, IPR2016-01520
`Patent 8,559,635 B1
`Patent Owner responds that in proceedings involving the ’091 patent
`and the instant ’635 Patent, Patent Owner has made the same, consistent
`statements during prosecution, namely that encryption and decryption are
`limited to digital processes. PO Resp. Brief on Remand 3–4; PO Sur-Reply
`Brief on Remand 1–2. Patent Owner also argues that “the dispute focused
`on the word “encrypted” within the construed term. PO Resp. Brief on
`Remand 4 (citing PMC, 952 F.3d at 1339). Patent Owner also argues that
`the prosecution of the ’635 Patent involved consistent statements that
`encryption and decryption require a digital signal and process. Id. at 6–7
`(citing IPR2016-01520, Ex. 2016, 1018, 1090, 1156, 1231, 1294, 1330).
`Patent Owner also distinguishes the Federal Circuit’s treatment of claim 26,
`because Patent Owner had agreed that “an information transmission
`including encrypted information” encompassed analog information and was
`not limited to digital information. Id. at 7–8 (citing PMC, 952 F.3d at 1346);
`PO Sur-Reply Brief on Remand 2–3.
`As noted by the Federal Circuit in its decision, “[a]n applicant’s
`repeated and consistent remarks during prosecution can define a claim
`term—especially where, as here, there is ‘no plain or ordinary meaning to
`the claim term’ and the specification provides no clear interpretation.”
`PMC, 952 F.3d at 1345 (citing Sunovion Pharm., Inc. v. Teva Pharm. USA,
`Inc., 731 F.3d 1271, 1276–77 (Fed. Cir 2013)). 13 As Patent Owner asserts
`the “‘context’ of the ’635 patent is functionally identical to that of the ’091
`
`
`13 Citing PMC, the court reasoned that when “the meaning of the relevant
`claim language is not plai
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