PTAB

IPR2014-01533

Amazon.com Inc v. Personalized Media Communications LLC

Key Events

Petition

petition

Title: Process for Promoting Encrypted Programming
Brief Description: The ’749 patent discloses a process for promoting and delivering encrypted content. The process involves a subscriber receiving a first portion of programming (e.g., a preview), being prompted to decide whether to receive a second, related portion, and upon an affirmative reply, the system receives, decrypts, and outputs the second portion of programming.

Prior Art Relied Upon: Jeffers (Patent 4,739,510).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Jeffers discloses all elements of the challenged claims through its "impulse pay-per-view" system. Jeffers taught transmitting a "preview" (the first portion of programming) to a subscriber's television to elicit a purchase. The system prompted the user with a notification that authorization was required to view the full program (the second portion). Upon the subscriber entering the necessary authorization information (the reply), the system descrambled the premium program for viewing. Jeffers further disclosed that a data stream containing a "common audio key" and "program tag information" (a code and datum) was used to descramble the program and was also communicated to a remote billing center.

Prior Art Relied Upon: Campbell (Patent 4,536,791).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Campbell taught a method for controlling access to pay-per-view programming that rendered the claims obvious. Campbell's system displayed a message prompting a user to enter a confidential key number to view a special event or premium channel. Upon receiving the correct key number, the system's processor used various codes (e.g., descrambling code, program identification code) to authorize and descramble the video. In two-way systems, this reply was also communicated to a head-end station to authorize reception and retain billing information. Petitioner contended Campbell anticipated the claims if the term "decrypting" is construed to include analog descrambling.
- Motivation to Combine (for §103 grounds): If "decrypting" is limited to digital signals, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSITA) to implement Campbell's access control system using well-known digital encryption instead of analog scrambling to achieve the same result.
- Expectation of Success: A POSITA would have a reasonable expectation of success because digital encryption and decryption techniques were well-established and commonly used for securing transmissions at the time.

Prior Art Relied Upon: Powell (a 1980 report on the Prestel videotex system) and Guillou (Patent 4,337,483).
Core Argument for this Ground:
- Prior Art Mapping: This ground relied on prior art from the videotex and teletext fields. Powell disclosed using banner advertisements on Britain's Prestel videotex system to promote related content available on other pages (e.g., an ad stating "find out more - go to Page 2617"). This taught the core promotional concept: receiving a first portion of information that promotes and prompts the user to access a second portion. Guillou taught a method for encrypting and decrypting content on teletext and viewdata systems like Prestel, where a decryption key (e.g., an operating key and page number) was required to access the encrypted information.
- Motivation to Combine: A POSITA would combine Powell and Guillou because Guillou explicitly addressed the need to charge users for access to information on such systems, providing a direct commercial motivation to add encryption and access control to Powell's promotional system. The combination would allow content providers to promote premium, encrypted pages using advertisements on free, unencrypted pages.
- Expectation of Success: Guillou’s teachings were directly applicable to the Prestel system described in Powell, ensuring a high expectation of success in combining the promotional methods with encryption for access control and billing.

"decrypting": Petitioner argued that the term "decrypting," under the broadest reasonable interpretation standard, must include "analog descrambling." This position was based on the ’749 patent's own specification, which explicitly stated that the invention should not be "unduly restricted" and that the "decryptors... may be conventional descramblers, well[] known in the art, that descramble analog television transmissions." This construction was critical because several key prior art references, including Campbell, taught analog descrambling systems.

Priority Date Entitlement: Petitioner contended that the challenged claims of the ’749 patent were only entitled to a priority date of September 11, 1987, not the 1981 date of an earlier parent application (’490 patent). The argument was that the 1987 continuation-in-part application, from which the ’749 patent descended, introduced new matter by significantly broadening the definition of "programming" from just "television or radio" to "everything that is transmitted electronically." This expanded scope lacked written description support in the 1981 application. This contention was crucial for establishing that Jeffers (filed in 1985) qualifies as prior art under §102(e).

Petitioner requested institution of an inter partes review and cancellation of claims 2, 3, 9-13, 18, 24, 49, and 52-53 of the ’749 patent as unpatentable.