Case: 18-1936 Document: 60 Page: 1 Filed: 03/13/2020
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`Decided: March 13, 2020
`WILLIAM M. JAY, Goodwin Procter LLP, Washington,
`DC, argued for appellant. Also represented by CE LI,
`Boston, MA.
` MARCUS EDWARD SERNEL, Kirkland & Ellis LLP, Chi-
`cago, IL, argued for appellee. Also represented by JOEL
` ______________________
`Before REYNA, TARANTO, and STOLL, Circuit Judges.


`Case: 18-1936 Document: 60 Page: 2 Filed: 03/13/2020
`STOLL, Circuit Judge.
`Personalized Media Communications, LLC (PMC) ap-
`peals from the final written decision of the Patent Trial and
`Appeal Board holding certain claims of U.S. Patent
`No. 8,191,091 unpatentable on anticipation and obvious-
`ness grounds. PMC specifically challenges certain claim
`constructions underpinning the Board’s anticipation and
`obviousness determinations. Because we agree that the
`Board erred in construing one of the claim terms at issue,
`we reverse the Board’s decision as to the applicable claims.
`We affirm the Board’s decision as to the remaining claims.
`The ’091 patent is directed to methods for enhancing
`broadcast communications with user-specific data by em-
`bedding digital signals in those broadcast communications.
`The specification discloses a number of embodiments that
`include analog broadcast signals with embedded digital
`Claim 13 of the ’091 patent is illustrative:
`13. A method of decrypting programming at a re-
`ceiver station, said method comprising the steps of:
`receiving an encrypted digital information trans-
`mission including encrypted information;
`detecting in said encrypted digital information
`transmission the presence of an instruct-to-enable
`passing said instruct-to-enable signal to a proces-
`determining a fashion in which said receiver sta-
`tion locates a first decryption key by processing
`said instruct-to-enable signal;


`Case: 18-1936 Document: 60 Page: 3 Filed: 03/13/2020
`locating said first decryption key based on said step
`of determining;
`decrypting said encrypted information using said
`first decryption key; and
`outputting said programming based on said step of
`’091 patent col. 285 l. 61–col. 286 l. 9 (emphases added to
`disputed claim terms).
`Independent claim 20 also recites “an encrypted digital
`information transmission
`including encrypted
`mation.” Id. at col. 286 ll. 29–47. Independent claim 26 re-
`cites “an information transmission including encrypted
`information,” which lacks the “encrypted digital” modifier.
`Id. at col. 286 l. 63–col. 287 l. 9.
`The ’091 patent issued from one of several hundred
`continuation applications filed shortly before the GATT
`rules impacting patent expiration dates went into effect.
`Accordingly, the ’091 patent has priority to at least 1987,
`yet remains unexpired.
`In March 2016, Apple Inc. filed a petition requesting
`inter partes review of claims 13–16, 18, 20, 21, 23, 24, 26,
`27, and 30 of the ’091 patent. The Board instituted an IPR
`of all the challenged claims in September 2016. Following
`an oral hearing in June 2017, the Board issued a final writ-
`ten decision holding the challenged claims anticipated and
`obvious. See generally Apple Inc. v. Personalized Media
`Commc’ns, LLC, No. IPR2016-00755, 2017 WL 4175018
`(P.T.A.B. Sept. 19, 2017) (Decision).
`The Board’s anticipation and obviousness determina-
`tions were premised on its construction of various claim
`terms. The primary prior art references asserted by Apple
`undisputedly disclosed mixed analog and digital infor-
`transmissions as opposed


`Case: 18-1936 Document: 60 Page: 4 Filed: 03/13/2020
`transmissions that were entirely digital. PMC argued that
`the broadest reasonable interpretation of the claim phrase
`“an encrypted digital information transmission including
`encrypted information” must be limited to entirely digital
`transmissions—i.e., “an information transmission carrying
`entirely digital content at least a portion of which is en-
`crypted.” Decision, 2017 WL 4175018, at *3 (quoting
`J.A. 468). Apple disagreed with PMC’s construction, con-
`tending that the broadest reasonable interpretation is not
`so limited, and may also include transmissions with infor-
`mation that is not encrypted or digital—i.e., “an infor-
`mation transmission that is partially or entirely digital, at
`least a portion of which is encrypted.” Id. (quoting
`J.A. 192).
`After considering the claim language, specification,
`and prosecution history of the ’091 patent and related pa-
`tents, the Board agreed with Apple:
`[A]n “encrypted digital information transmission
`including encrypted information” includes at least
`some encrypted digital information, and does not
`preclude, with that transmission, non-encrypted
`information or scrambled analog information. In
`other words, the “transmission” requires some en-
`crypted digital information, but does not preclude
`other information such as non-encrypted infor-
`mation or analog information, and “encrypted in-
`formation” does not preclude scrambled analog
`Id. at *9 (internal citation omitted). In doing so, the Board
`specifically found that there was no plain and ordinary
`meaning of “encrypting” at the time of the invention, as the
`term was used somewhat interchangeably with the analog
`process of “scrambling” through at least 1987. Id. at *14.
`The Board also denied PMC’s request for rehearing,
`which challenged the Board’s claim construction based on
`three statements in the prosecution history. See generally


`Case: 18-1936 Document: 60 Page: 5 Filed: 03/13/2020
`Apple Inc. v. Personalized Media Commc’ns, LLC,
`No. IPR2016-00755, 2018 WL 1224738 (P.T.A.B. Mar. 6,
`2018) (Rehearing Decision). Of particular relevance here,
`the Board rejected PMC’s reliance on the prosecution his-
`tory because “the prosecution history presents a murky pic-
`ture as opposed to a clear waiver.” Id. at *11 (first citing
`Inverness Med. Switz. GmbH v. Warner Lambert Co.,
`309 F.3d 1373, 1380–82 (Fed. Cir. 2002); then citing Ath-
`letic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580
`(Fed. Cir. 1996); and then citing Rambus Inc. v. Infineon
`Techs. AG, 318 F.3d 1081, 1090 (Fed. Cir. 2003)).
`PMC appeals the Board’s decisions. We have jurisdic-
`tion under 28 U.S.C. § 1295(a)(4)(A).
`On appeal, PMC challenges the Board’s construction of
`“an encrypted digital information transmission including
`encrypted information.”1 We review de novo the Board’s
`ultimate claim constructions and any supporting determi-
`nations based on intrinsic evidence. Knowles Elecs. LLC
`v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir.
`2018). We review any subsidiary factual findings involving
`extrinsic evidence for substantial evidence. Id. at 1362.
`1 PMC’s challenge is more generally directed to the
`“encryption/decryption terms” of the challenged claims, a
`group that includes this phrase. See Appellant’s Br. 27–50.
`We focus on this phrase because it is dispositive for the
`challenged claims. PMC also challenges the Board’s con-
`struction of the claim terms “locates” and “locating,” which
`appear only in claim 13 and its dependent claims. See id.
`at 50–55. Because we reverse the Board’s determination
`for claim 13 and its dependent claims based on the Board’s
`erroneous construction of “an encrypted digital information
`transmission,” we do not reach this issue.


`Case: 18-1936 Document: 60 Page: 6 Filed: 03/13/2020
`“The task of claim construction requires us to examine
`all the relevant sources of meaning in the patent record
`with great care, the better to guarantee that we determine
`the claim’s true meaning.” Athletic Alts., 73 F.3d at 1578.
`“When construing claim terms, we first look to, and primar-
`ily rely on, the intrinsic evidence, including the claims
`themselves, the specification, and the prosecution history
`of the patent, which is usually dispositive.” Sunovion
`Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271,
`1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); then citing
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996)). We consider these various sources of
`meaning “[b]ecause the meaning of a claim term as under-
`stood by persons of skill in the art is often not immediately
`apparent, and because patentees frequently use terms idi-
`osyncratically.” Phillips, 415 F.3d at 1314.
`The prosecution history, in particular, “may be critical
`in interpreting disputed claim terms because it ‘contains
`the complete record of all the proceedings before the Patent
`and Trademark Office, including any express representa-
`tions made by the applicant regarding the scope of the
`claims.’” Sunovion, 731 F.3d at 1276 (quoting Vitronics,
`90 F.3d at 1582). Accordingly, even where “prosecution
`history statements do not rise to the level of unmistakable
`disavowal, they do inform the claim construction.” Shire
`Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366
`(Fed. Cir. 2015). For example, an applicant’s repeated and
`consistent remarks during prosecution can define a claim
`term by demonstrating how the inventor understood the
`invention. Sunovion, 731 F.3d at 1277. Similarly, an ap-
`plicant’s amendment accompanied by explanatory remarks
`can define a claim term by demonstrating what the appli-
`cant meant by the amendment. Tempo Lighting, Inc.
`v. Tivoli, LLC, 742 F.3d 973, 977–78 (Fed. Cir. 2014).


`Case: 18-1936 Document: 60 Page: 7 Filed: 03/13/2020
`The broadest reasonable interpretation standard ap-
`plies in this IPR proceeding.2 Thus, the Board’s interpre-
`tation must be reasonable in light of the specification,
`prosecution history, and the understanding of one skilled
`in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
`Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
`(en banc). The broadest reasonable interpretation must
`also take into account “the context of the entire patent.”
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374
`(Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see
`also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58
`(Fed. Cir. 2007) (applying Phillips “best practices” to claim
`construction under broadest reasonable interpretation
`With these principles in mind, we turn to the broadest
`reasonable interpretation of “an encrypted digital infor-
`mation transmission including encrypted information.” As
`framed by the parties, the issue is whether the broadest
`reasonable interpretation of this term is limited to digital
`information or can also include analog information.
`We begin our analysis with the claim language itself.
`Independent claims 13 and 20 recite “receiving an
`2 Per recent regulation, the Board applies the Phil-
`lips claim construction standard to IPR petitions filed on or
`after November 13, 2018. See Changes to the Claim Con-
`struction Standard for Interpreting Claims in Trial Pro-
`ceedings Before the Patent Trial and Appeal Board, 83 Fed.
`Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
`§ 42.100(b)). Because Apple filed its IPR petition before
`November 13, 2018, we apply the broadest reasonable in-
`terpretation standard.


`Case: 18-1936 Document: 60 Page: 8 Filed: 03/13/2020
`encrypted digital information transmission including en-
`crypted information.” ’091 patent col. 285 l. 61–col. 286
`l. 9, col. 286 ll. 29–47. The claims use the adjective “digi-
`tal” to describe the “information transmission,” thus sup-
`porting the view that the information is, in fact, digital. On
`the other hand, the claims do not say “entirely digital.”
`Moreover, the claims do not recite just “an encrypted digi-
`tal information transmission”; rather, they state that the
`information transmission “includ[es] encrypted infor-
`mation.” This “including encrypted information” clause
`suggests that the adjective “encrypted” does not limit the
`information transmission to just encrypted information
`and, by the same logic, that “digital” does not limit the in-
`formation transmission to just digital information.
`Indeed, the Board interpreted the claims to allow for
`some non-digital information based on the claims’ use of
`the “including encrypted information” clause. The Board
`reasoned that PMC’s interpretation should be disfavored
`because it renders superfluous the phrase “including en-
`crypted information.” PMC insists that the “digital” modi-
`fier constrains the scope of the claim term to digital
`information only, and that the “including encrypted infor-
`mation” language cannot add back in what is excluded by
`the word “digital.” PMC further asserts that the phrase
`“including encrypted information” is not surplusage be-
`cause it specifies that the transmission does not have to be
`entirely encrypted—even as it must be entirely digital. See
`Oral Arg. at 3:32–3:58, available at http://oralargu-
`While we agree with PMC that this is “not the most artful
`way” to achieve such an effect, id. at 6:44–7:26, we con-
`clude that the claim language neither precludes PMC’s


`Case: 18-1936 Document: 60 Page: 9 Filed: 03/13/2020
`interpretation, nor does it compel the Board’s interpreta-
`The Board also reasoned that “encrypted information”
`must accommodate analog signals based on the presence of
`“programming” in the independent claims, along with cer-
`tain dependent claims that further specify that encrypted
`information includes “television programming.” See, e.g.,
`’091 patent
`col. 285
`l. 61–col. 286
`l. 9
`claim 13 reciting “[a] method of decrypting programming”
`and “outputting said programming based on said step of
`decrypting”), col. 286 ll. 23–24 (dependent claim 18 recit-
`ing “said encrypted information includes television pro-
`gramming”). In support of its interpretation, the Board
`pointed to the specification’s express definition of “pro-
`gramming,” which “refers to everything that is transmitted
`electronically to entertain, instruct or inform, including tel-
`evision, radio, broadcast print, and computer programming
`[as] well as combined medium programming.” Decision,
`2017 WL 4175018, at *2 (quoting ’091 patent col. 6 ll. 31–
`34). According to the Board, “everything that is transmit-
`ted electronically” must include “conventional analog tele-
`vision signals.” Id. at *11.
`Although we agree with the Board that the specifica-
`tion’s broad definition of “programming” could encompass
`analog signals, we do not agree that it necessarily requires
`them. Instead, the definition is largely agnostic to the par-
`ticular technology employed. In other words, that “pro-
`gramming” can encompass many things does not mean
`3 Unfortunately, the ordinary meaning of “en-
`crypted” does not impart a more precise understanding of
`the claim limitation. As the Board found, the meaning of
`“encryption”—and particularly whether it applied to ana-
`log or digital data—was “in flux” in the 1980s. Decision,
`2017 WL 4175018, at *14. Neither party challenges this
`finding on appeal.


`Case: 18-1936 Document: 60 Page: 10 Filed: 03/13/2020
`that “decrypting” or “encrypted information” encompasses
`many things. The specification’s definition of “program-
`ming” focuses on the types of audiovisual material trans-
`mitted, not the means of transmittal. Indeed, the
`definition only requires that the material be transmitted
`electronically. We therefore do not agree that the specifi-
`cation’s definition of “programming” compels that “en-
`crypted information,” as used in the disputed claim term,
`must include analog signals. But even if we assume that
`“programming” necessarily includes analog signals, PMC’s
`interpretation would still remain plausible. For the same
`reasons discussed above, the “digital” modifier for “trans-
`mission” could still serve as a limit on the scope of the claim
`such that the dependent claims cover only all-digital trans-
`missions of television programming.
`In support of its interpretation, the Board also refer-
`enced claim language from a related patent, “wherein the
`at least one encrypted digital information transmission is
`unaccompanied by any non-digital information transmis-
`sion,” as evidence that PMC knew how to exclude analog
`signals from the claimed transmissions when it wanted to.
`Decision, 2017 WL 4175018, at *5 (emphasis modified)
`(quoting U.S. Patent No. 8,559,635 col. 288 ll. 13–16). Alt-
`hough we agree that language from related patent claims
`can be relevant, this particular evidence is counterbal-
`anced by other claims of the ’091 patent itself. Claim 26
`distinctly recites “an information transmission including
`encrypted information,” without the “digital” modifier.
`’091 patent col. 286 l. 63–col. 287 l. 9. Before the Board
`and this court, PMC conceded that claim 26 covers mixed
`digital and analog transmissions. Decision, 2017 WL
`4175018, at *4 (noting PMC’s argument that “[t]hose mixed
`analog/digital embodiments support the broader ‘infor-
`(claim 26)
`J.A. 472)); see also Oral Arg. at 34:23–34:55. PMC’s con-
`cession is consistent with an interpretation of the claims in


`Case: 18-1936 Document: 60 Page: 11 Filed: 03/13/2020
`which “digital” is used to specify transmissions that are all-
`In view of the plain claim language and the parties’ ar-
`guments, we cannot say that the Board’s interpretation of
`the claim language is unreasonable. But we cannot say
`that the claim language is decisive either. Rather, both
`proposed constructions are equally plausible in view of the
`claim language.
`We turn next to the specification. As the Board cor-
`rectly points out, the specification of the ’091 patent does
`not expressly define the phrase “encrypted digital infor-
`mation transmission.” The Board also correctly notes that
`the specification contemplates and discloses a number of
`mixed analog and digital embodiments consistent with the
`Board’s interpretation.
`In support of its interpretation, PMC points to two “def-
`initional passages” from the specification that, in its view,
`distinguish the digital processes of “encryption” and “de-
`cryption” from the analog processes of “scrambling” and
`“descrambling.” Appellant’s Br. 24; see also id. at 30–35.
`The first passage discusses prior art:
`Various scrambling means are well known in the
`art for scrambling, usually the video portion of an-
`alogue television transmissions in such a fashion
`that only subscriber stations with appropriate de-
`scrambling means have capacity to tune suitably to
`the television transmissions and display the trans-
`mitted television image information. Encryp-
`tion/decryption means and methods, well known in
`the art, can regulate the reception and use of, for
`example, digital video and audio television trans-
`missions, digital audio radio and phonograph
`transmissions, digital broadcast print transmis-
`sion, and digital data communications.


`Case: 18-1936 Document: 60 Page: 12 Filed: 03/13/2020
`’091 patent col. 143 ll. 20–30 (emphases added). The sec-
`ond passage cited by PMC discusses decryption in the con-
`text of the invention:
`Decryptors, 107, 224 and 231, are conventional de-
`cryptors, well known in the art, with capacity for
`receiving encrypted digital information, decrypting
`said information by means of a selected cipher al-
`gorithm and a selected cipher key, and outputting
`the decrypted information.
`Id. at col. 147 ll. 21–26 (describing Fig. 4) (emphasis
`While these passages are consistent with PMC’s inter-
`pretation of the disputed claim term as being entirely digi-
`tal, they fall short of limiting encryption and decryption to
`all-digital processes. They are not definitional; instead,
`they are merely illustrations that use open-ended, permis-
`sive phrases such as “usually,” “for example,” and “with ca-
`pacity for.” And when considered in the context of the more
`than 280 columns of text in the specification of the ’091 pa-
`tent, these two passages fall far short of defining the rele-
`vant terms through repeated and consistent use.
`The specification discloses an Example #7, the “Wall
`Street Week” embodiment, which PMC identifies as the ba-
`sis for the claims of the ’091 patent. See Appellant’s
`Br. 16–21; see also ’091 patent col. 148 l. 5–col. 160 l. 27
`(Example #7). The specification explains that the Wall
`Street Week transmission consists of “digital video” and
`“digital audio.” ’091 patent col. 148 ll. 13–16; see also id.
`at col. 153 ll. 40–47 (“said information being . . . encrypted
`digital video”). In support of its interpretation, the Board
`identified a different passage of the specification that ex-
`pressly states that the “Wall Street Week” embodiment can
`include analog signals:
`It is obvious to one of ordinary skill in the art that
`the foregoing is presented by way of example only


`Case: 18-1936 Document: 60 Page: 13 Filed: 03/13/2020
`and that the invention is not to be unduly restricted
`thereby since modifications may be made in the
`structure of the various parts without functionally
`departing from the spirit of the invention. . . . And
`for example, the “Wall Street Week” transmission
`may be of conventional analog television, and the
`decryptors, 107, 224, and 231, may be conventional
`descramblers, well, known [sic] in the art, that de-
`scramble analog television transmissions and are
`actuated by receiving digital key information.
`Id. at col. 159 ll. 46–61 (emphasis added). According to the
`Board, the specification expressly discloses that the de-
`cryptors from Example #7 may be “descramblers” used for
`analog television. PMC responds that this passage merely
`describes modifications to Example #7, not the scope of Ex-
`ample #7 itself.
`We find that this passage is sufficient to demonstrate
`that the Board’s construction is plausible in view of the
`specification, which expressly contemplates that mixed
`digital and analog systems are within the “spirit of the in-
`vention” and the “Wall Street Week” embodiment. Id. But
`we do not find this passage decisive. Embodiments de-
`scribed in a specification can certainly inform the meaning
`of a disputed claim term, but “a particular embodiment ap-
`pearing in the written description may not be read into a
`claim when the claim language is broader than the embod-
`iment.” Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d
`1360, 1364–65 (Fed. Cir. 2003) (citing Electro Med. Sys.,
`S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048 (Fed. Cir.
`1994)). So too if the claim language is narrower than the
`embodiment. At bottom, the challenged claims are not nec-
`essarily limited by, or coextensive with, Example #7—re-
`gardless of whether Example #7 includes or excludes
`analog signals.


`Case: 18-1936 Document: 60 Page: 14 Filed: 03/13/2020
`Thus, we conclude that the evidence from the specifica-
`tion also fails to resolve the scope of the disputed claim
`We next turn to the prosecution history for guidance.
`PMC points to three statements in the prosecution history
`that, in PMC’s view, limit the scope of the claims to all-
`digital transmissions. For the reasons that follow, we
`agree with PMC, and accordingly, we adopt PMC’s con-
`struction of “encrypted digital information transmission.”
`As originally drafted, none of the original claims in-
`cluded the “encrypted digital” language. Instead, they re-
`cited “an information transmission including encrypted
`information,” the same phrase included in issued claim 26.
`See, e.g., J.A. 2242–43 (claims 13 and 20 then numbered as
`pending claims 45 and 52, respectively). When the appli-
`cant first presented the claims at issue to the examiner, the
`applicant expressly relied on a prior decision of the Board
`to distinguish the newly presented claims from the prior
`art of record. That prior art included both Gilhousen4 and
`Mason,5 the two primary prior art references asserted by
`Apple in the IPR proceedings on appeal. The applicant ex-
`Each of the [newly presented] claims is patentable
`in light of the prior art. . . . [The prior art refer-
`ences before the examiner] disclose the use of en-
`coded control signals or other data to control the
`unscrambling of an analog video signal. The claims
`of this amendment, however, claim material relat-
`ing to the encryption and decryption of signals. . . .
`The Board of Patent Appeals and Interferences de-
`in Ex
`parte Personalized Media
`4 U.S. Patent No. 4,613,901.
`5 U.S. Patent No. 4,736,422.


`Case: 18-1936 Document: 60 Page: 15 Filed: 03/13/2020
`Communications, LLC . . . that encryption requires
`a digital signal. Each of the claims of this amend-
`ment involves the use of digital signals through ref-
`“Encryption and decryption,” the Board goes on to
`say, “are not broad enough to read on scrambling
`and unscrambling.” Therefore, because [the prior
`art references] are directed to unscrambling of an-
`alog signals, none teach or suggest a method of con-
`trolling the decryption of digital information as is
`presented in the claims of this amendment.
`J.A. 2245–46 (quoting Ex parte Personalized Media
`Commc’ns, LLC, No. 2008-4228, 2008 WL 5373184, at *27
`(B.P.A.I. Dec. 19, 2008)).
`The examiner rejected the newly presented claims as
`anticipated by Mason. In response, the applicant reiter-
`ated its reliance on the Board’s prior decision distinguish-
`ing encryption and decryption from scrambling and
`unscrambling. The applicant then distinguished Mason on
`the following basis:
`Although Mason uses the terms “encrypting” and
`scope is limited to an analog television system. Ma-
`son characterizes the invention as a Direct Broad-
`cast Satellite (“DBS”) system. DBS systems were
`originally designed only to accommodate analog
`transmissions. Mason does not contemplate digital
`transmissions, therefore it does not address en-
`cryption. Its scope is limited to scrambling and un-
`scrambling. Mason does not anticipate claims 45–
`50 and 52–56.
`J.A. 2291 (internal citations omitted).
`The examiner was not persuaded. Facing a final rejec-
`tion based on Mason, the applicant amended the claims to
`include the modifier “encrypted digital” such that they


`Case: 18-1936 Document: 60 Page: 16 Filed: 03/13/2020
`recited “an encrypted digital information transmission in-
`cluding encrypted information”—i.e., the claim term at is-
`sue on appeal. In its accompanying remarks, the applicant
`once again repeated its reliance on the Board’s prior deci-
`sion distinguishing encryption and decryption from scram-
`bling and unscrambling. The applicant further explained:
`Applicants’ [sic] had argued in their Amendment
`After Final Rejection that although Mason uses the
`terms “encrypting” and “scrambling” interchange-
`ably, it could not teach encryption because it only
`disclosed an analog signal transmission. . . . With-
`out abandoning their previous argument, Appli-
`cants acknowledge that it can be argued that
`Mason teaches encrypted elements as part of its
`analog information transmission. But it does not
`teach the encryption of an entire digital signal
`transmission. For the sake of advancing prosecu-
`tion, Applicants amend independent claims 45 and
`52 to clarify that the information transmission re-
`ceived is an encrypted digital information trans-
`mission. . . . This amendment in no way affects
`Applicants’ position that encryption requires a dig-
`ital signal. Applicants amend the claims to provide
`clarification as an earnest attempt to advance the
`prosecution of the application.
`J.A. 2312–13 (emphasis added).
`The Board rejected this evidence because, in its view,
`PMC’s statements during prosecution did not constitute a
`clear and unmistakable surrender sufficient to rise to the
`level of disclaimer. See Decision, 2017 WL 4175018,
`at *16–*17; Rehearing Decision, 2018 WL 1224738, at *5–
`*11. According to the Board, PMC’s arguments to the ex-
`aminer seeking to distinguish Mason did not “clearly disa-
`vow mixed analog and digital information transmissions.”
`Decision, 2017 WL 4175018, at *16. Instead, PMC “ambig-
`uously quotes statements from a reexamination Board


`Case: 18-1936 Document: 60 Page: 17 Filed: 03/13/2020
`decision for a related patent without adopting those state-
`ments as its own.” Rehearing Decision, 2018 WL 1224738,
`at *6. Because “the prosecution history presents a murky
`picture as opposed to a clear waiver,” the Board reasoned
`that it should be discounted for the purpose of claim con-
`struction. Id. at *11 (first citing Inverness, 309 F.3d
`at 1380–82; then citing Athletic Alts., 73 F.3d at 1580; and
`then citing Rambus, 318 F.3d at 1090).
`We disagree with the Board’s legal analysis and con-
`clusion. Even where “prosecution history statements do
`not rise to the level of unmistakable disavowal, they do in-
`form the claim construction.” Shire, 787 F.3d at 1366. An
`applicant’s repeated and consistent remarks during prose-
`cution 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.
`Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s
`amendment accompanied by explanatory remarks can de-
`fine a claim term where, as here, the claim language and
`specification fail to provide meaningful guidance. Tempo
`Lighting, 742 F.3d at 977–78. Thus, the Board erred by
`effectively requiring the prosecution history evidence to
`rise to the level of a disclaimer in order to inform the mean-
`ing of the disputed claim term. Assuming without deciding
`that PMC’s statements and amendments were inadequate
`to give rise to a disclaimer, we still find that the prosecu-
`tion history provides persuasive evidence that informs the
`meaning of the disputed claim phrase and addresses an
`ambiguity otherwise left unresolved by the claims and
`During prosecution, the applicant repeatedly and con-
`sistently voiced its position that encryption and decryption
`require a digital process in the context of the ’091 patent.
`The applicant never abandoned that position. Indeed, the
`applicant amended the claims—giving rise to the claim
`term at issue on appeal—only to clarify its position that
`“encryption requires a digital signal.” J.A. 2312. And to


`Case: 18-1936 Document: 60 Page: 18 Filed: 03/13/2020
`the extent that the applicant’s earlier prosecution state-
`ments were ambiguous regarding whether the entire signal
`must be digital, the applicant’s remarks accompanying the
`amendment made its position cle

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