PTAB

IPR2016-01520

Apple Inc v. Personalized Media Communications LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Signal Processing Apparatus and Methods
  • Brief Description: The ’635 patent describes methods for controlling the operation of receivers and the decryption of data. The claims are generally directed to processing signals at a receiver station, controlling a transmitter station, and activating decryptors within a network based on control signals embedded in a transmission.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 13, 18, 20, and 32 by Chandra

  • Prior Art Relied Upon: Chandra (Patent 4,817,140)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chandra, which discloses a digital content protection scheme, teaches all limitations of these claims. In Chandra, a secure coprocessor receives a transmission containing encrypted software, plaintext software, and an encrypted decryption key. Petitioner contended this maps to the claims’ requirements for receiving an encrypted digital transmission unaccompanied by non-digital information. Chandra’s use of firmware commands (e.g., a "load, decrypt, and run" command) to control the decryption of the software was argued to meet the limitations of locating a "code" and controlling a decryptor based on that code. Further, Chandra’s use of control signals (a header or index) to select a specific supervisor key for decryption was asserted to teach changing a decryption technique in response to a signal.

Ground 2: Obviousness of Claim 33 over Chandra in view of Nachbar

  • Prior Art Relied Upon: Chandra (Patent 4,817,140), Nachbar (When Network File Systems Aren't Enough: Automatic Software Distribution Revisited, USENIX Conference Proceedings, June 1986)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Chandra teaches every element of claim 33 except for "selecting, by processing selection criteria, a first signal...including downloadable code." Nachbar was argued to supply this missing element by teaching a system for distributing software updates and bug fixes where a subscriber machine requests new files that are more current than its own, using the "time of last modification" as a selection criterion for currentness.
    • Motivation to Combine: A POSITA would combine Nachbar’s automatic software update functionality with Chandra’s secure system to ensure that the secure firmware in Chandra could be updated with the latest bug fixes and software releases. This would improve the security and functionality of the system without compromising the core protections.
    • Expectation of Success: A POSITA would have a high expectation of success, as implementing a version-checking or date-checking mechanism (as taught by Nachbar) into a software distribution system (like Chandra) was a well-understood practice for maintaining software.

Ground 3: Anticipation of Claims 4, 7, 21, and 28-30 by Seth-Smith

  • Prior Art Relied Upon: Seth-Smith (Patent 4,866,770)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Seth-Smith, which teaches a system for secure distribution of television programming (including video, audio, and teletext), anticipates these claims. Seth-Smith described transmitting encrypted teletext and encrypted control keys (a system/service key) in the vertical blanking interval (VBI) of a television signal. This was mapped to the claims’ recitation of receiving programming with an encrypted control signal portion and an encrypted information portion. Seth-Smith’s multi-stage decryption process—using a first decryptor to decrypt the system/service key and a second decryptor to decrypt the teletext based on that key—was argued to directly teach the claimed methods of decrypting materials under the control of different processors.

Ground 4: Obviousness of Claim 3 over Campbell

  • Prior Art Relied Upon: Campbell (Patent 4,536,791)
  • Core Argument for this Ground:
    • Prior art Mapping: Petitioner argued that Campbell, which teaches a two-way cable television system for services like pay-per-view, renders claim 3 obvious. Campbell discloses a head-end station that receives control signals (e.g., a subscriber's pay-per-view request) and in response communicates programming. However, Campbell’s programming control system (PCS) that generates program identification codes is described as a separate entity. Petitioner argued it would have been an obvious modification to integrate the functions of the PCS into the "remote computer" that Campbell discloses for controlling the head-end station.
    • Motivation to Combine: A POSITA would be motivated to make this modification to centralize control of geographically distinct head-end stations from a single location, which is a predictable design choice for improving efficiency and scalability.
    • Expectation of Success: The combination was argued to be a simple integration of known control functions into a central computer, a routine task for a POSITA at the time.

4. Key Claim Construction Positions

Petitioner argued that the Patent Owner advocated for improperly narrow constructions in a related proceeding and that the Board should adopt broader constructions consistent with the specification.

  • "executable instructions": Petitioner contended this term should mean "instructions that can be executed" and not be limited to a "computer program," as the patent’s parent application describes instructions for hardware like decryptors.
  • "encrypted digital information transmission...unaccompanied by any non-digital information transmission": Petitioner argued this requires a transmission that is entirely digital, with at least a portion being encrypted. This construction was presented to counter Patent Owner’s arguments that transmissions including analog components (like NTSC signals with embedded digital data) do not meet this limitation.
  • "decrypting": Petitioner asserted that "decrypting" should encompass both digital decryption and analog descrambling. This was based on express statements in the specification that "decryptors may be conventional descramblers" and prior Board decisions in related cases.
  • "processor": Petitioner argued for a broad construction of "a device that operates on data," not limited to a "programmable processor." The specification was cited as describing various hardwired devices, such as decoders and comparators, as processors.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central argument of the petition was that the challenged claims are not entitled to the November 3, 1981 priority date of an ancestral patent (’490 patent). Petitioner argued that key claim limitations (e.g., "executable instructions," "unaccompanied by any non-digital information") lack written description support in the 1981 specification and were only introduced in a 1987 continuation-in-part application. Therefore, Petitioner asserted the claims’ earliest possible priority date is September 11, 1987, which makes the asserted prior art (filed between 1981 and 1987) valid for the challenge.

6. Arguments Regarding Discretionary Denial

  • Petitioner filed this IPR after the Patent Owner, in a preliminary response to an earlier IPR (IPR2016-00754), argued for claim constructions and a priority date (1987) that were inconsistent with its long-held position (1981 priority). Petitioner argued this new petition was necessary and filed diligently to address the claims under the 1987 priority date, using prior art that would not have been applicable under the previously asserted 1981 date. Justice would not be served, Petitioner argued, by allowing the Patent Owner to take inconsistent positions to shield its claims from different bodies of prior art.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 3, 4, 7, 13, 18, 20, 21, 28-30, 32, and 33 of the ’635 patent as unpatentable.