[00:00:00] Speaker 00: We have a busy morning today. [00:00:04] Speaker 00: We have four cases set for argument this morning. [00:00:10] Speaker 00: The first case is personalized media versus Apple 18-1936. [00:00:15] Speaker 00: Mr. J? [00:00:18] Speaker 00: You've reserved four minutes for rebuttal. [00:00:20] Speaker 00: Is that correct? [00:00:20] Speaker 00: That's correct, Your Honor. [00:00:21] Speaker 00: Thank you. [00:00:22] Speaker 00: All right. [00:00:22] Speaker 00: You may proceed, sir. [00:00:23] Speaker 04: Thank you. [00:00:24] Speaker 04: Good morning, Your Honors. [00:00:25] Speaker 04: May it please the court, William J. from Goodwin Proctor for Appellant PMC. [00:00:29] Speaker 04: In this patent, decryption requires digital information. [00:00:33] Speaker 04: PMC made that clear in the claim language, in an explicit claim amendment, in fact, adding the word digital. [00:00:40] Speaker 04: PMC made that clear in the specification. [00:00:42] Speaker 04: And PMC made that triply clear in the prosecution history, [00:00:45] Speaker 04: three separate times and three separate statements to the PTO during prosecution, disclaiming analog, and in particular, disclaiming any suggestion that de-scrambling was part of decrypting. [00:00:57] Speaker 04: The board rejected our construction. [00:01:00] Speaker 04: And the board gave a number of reasons responding to the points that I've just alluded to. [00:01:04] Speaker 04: But they really all boil down to two foundational things in the board's view that the board came back to again and again. [00:01:11] Speaker 04: One is the prepositional phrase at the beginning of the claim language referring to including encrypted information. [00:01:21] Speaker 04: And the other is a statement in the specification, which I'd like to come to as well. [00:01:25] Speaker 04: But let me begin in particular in the first step of claim 13, including encrypted information. [00:01:33] Speaker 04: And the board said that this shows that although the claim language begins with receiving an encrypted digital information transmission, that [00:01:44] Speaker 04: because the patent then goes on to use this different phrase, encrypted information, that therefore a digital information transmission must be able to include non-digital information as well, because that word digital is not repeated in the second phrase. [00:01:59] Speaker 00: That statement doesn't exclude analog information. [00:02:04] Speaker 04: The beginning of the claim does, Your Honor. [00:02:07] Speaker 04: So receiving an encrypted digital information transmission. [00:02:11] Speaker 04: So in order to be a digital information transmission, it has to be digital. [00:02:15] Speaker 04: It can't be analog. [00:02:16] Speaker 02: In full? [00:02:17] Speaker 04: Yes, in full. [00:02:18] Speaker 04: And I think that that's actually made clear by this prepositional phrase. [00:02:22] Speaker 04: So it does not have to be all encrypted. [00:02:24] Speaker 04: That is what this prepositional phrase is doing. [00:02:26] Speaker 04: It must include encrypted information. [00:02:29] Speaker 04: It may not just include digital information, it must be digital information. [00:02:33] Speaker 02: Does there remain a dispute between the parties here in this court about whether that opening phrase requires the whole transmission to be digital? [00:02:43] Speaker 04: So that, the PTAB asked that question at the hearing, what our position was. [00:02:49] Speaker 04: I think we made clear at, this is not in the appendix, but it's at page 39 of the transcript of the oral hearing, which is in the record. [00:02:56] Speaker 04: that that was our construction of it. [00:02:59] Speaker 04: So I do think that there is a dispute between the parties for the purpose of this IPR. [00:03:03] Speaker 04: And the board certainly made clear that it disagreed with PMC's construction and came back to it again and again by saying that the including encrypted information phrase showed that it need not be all digital. [00:03:17] Speaker 04: both in the claim construction section, and then again in its discussion of anticipation. [00:03:22] Speaker 04: It kept coming back to the idea that decrypting need not be of all digital transmission. [00:03:32] Speaker 01: Can I ask you, so as I think I understand you, what you have said is when it says including encrypted information, what that suggests is that maybe some of the digital information isn't encrypted. [00:03:44] Speaker 04: Precisely, Your Honor. [00:03:44] Speaker 04: And as we said in our reply brief, the word including is doing no work in the board's construction, and it is doing work in our construction. [00:03:52] Speaker 04: And we think it's doing critical work, because including encrypted information shows that this is a subset. [00:03:58] Speaker 01: You have to show here that the board's construction is unreasonable, right, or that it's not consistent with the specification. [00:04:06] Speaker 01: I'm thinking about broadest reasonable interpretation. [00:04:10] Speaker 01: Oh, I see what you mean. [00:04:13] Speaker 01: that one way to look at it is at least is, you know, it's supposed to be the broadest, but it also has to be reasonable, and it also has to be consistent with the specification, right? [00:04:25] Speaker 01: Do you agree that that's what you've got to show here? [00:04:30] Speaker 04: that their construction can't be the broadest reasonable construction, and ours must be, but as your question said correctly. [00:04:38] Speaker 01: And it's your position that their construction is not reasonable, right? [00:04:42] Speaker 04: Precisely because it's not consistent with either the claim language or the specification or the prosecution history. [00:04:48] Speaker 04: And I think that just to add to your question, the prosecution history, including the disclaimers, are a critical part of this. [00:04:54] Speaker 04: And so a construction that says, as the [00:04:57] Speaker 04: as the board did here, that it was going to disregard the disclaimers because that would narrow improperly the scope of the claims. [00:05:05] Speaker 04: That's not applying the BRI standard. [00:05:07] Speaker 02: What work, in your view, is the first use of encrypted doing in this phrase, the opening phrase of the body of 13? [00:05:18] Speaker 04: So the first use of encrypted meaning in receiving an encrypted digital information transmission. [00:05:24] Speaker 04: Exactly. [00:05:26] Speaker 04: I take the point that including encrypted information would do some of the same work. [00:05:35] Speaker 04: In other words, that that would. [00:05:37] Speaker 02: I guess my question is, why wouldn't it do all of the work? [00:05:41] Speaker 02: And I'm not suggesting this is dispositive. [00:05:44] Speaker 02: But we have a language question. [00:05:46] Speaker 02: We have a spec question. [00:05:47] Speaker 02: We have a prosecution history question. [00:05:49] Speaker 02: We've so far been talking about the language. [00:05:51] Speaker 02: And the language originated in a kind [00:05:53] Speaker 02: belt and suspenders way, so you have an explanation, but just on the text. [00:05:58] Speaker 04: I think just on the text, if this had been what it said all along, we might have a surplusage argument, but I think as your last question alluded to, these two words, encrypted digital, [00:06:10] Speaker 04: the encrypted digital information transmission, two words were added during prosecution as a belt and suspenders way of insuring to the examiner's satisfaction. [00:06:21] Speaker 02: Just as a textual matter, I guess I'm not hearing an explanation of how this claim language would be any different if that first word, encrypted, were taken out, or even perhaps the digital taken out, although at least the first, that does give you a textual [00:06:40] Speaker 02: something quasi-determinative about the digital nature of the whole transmission. [00:06:45] Speaker 04: Precisely. [00:06:45] Speaker 04: And I think that because of the way that the principal phrase and then the modifying phrase work together, that [00:06:52] Speaker 04: In some ways, the second does take away some of what the first would otherwise do. [00:06:57] Speaker 04: So the first phrase specifies that you need encryption, and you need digital, and you need the other elements as well. [00:07:03] Speaker 04: You need information that is transmitted. [00:07:06] Speaker 04: And then the second phrase specifies that the encryption can be partial. [00:07:11] Speaker 04: It must include encrypted information. [00:07:13] Speaker 04: It's maybe not the most artful way of giving effect, but as we've just been discussing, [00:07:19] Speaker 04: because it was done in this belt and suspenders way to ensure that digital was going to be a limitation. [00:07:27] Speaker 02: And claim 26 encompasses a transmission that has both analog and digital in it. [00:07:34] Speaker 02: But the including encrypted, you say, is still only digital. [00:07:41] Speaker 02: That's right. [00:07:42] Speaker 04: That's right. [00:07:43] Speaker 04: And so for claim 26, we would need to [00:07:46] Speaker 04: look just to the disclaimers rather than in addition to the claim amendment. [00:07:50] Speaker 04: We don't have a claim amendment in claim 26. [00:07:52] Speaker 01: So for claim 26, you're relying on the specifications description of encryption to suggest that it could be digital only. [00:08:02] Speaker 01: I think you've got that argument in there. [00:08:04] Speaker 01: Correct. [00:08:05] Speaker 01: And then also you've got some prosecution history from the first two [00:08:11] Speaker 01: responses to the office actions are before the amendment to add digital. [00:08:16] Speaker 01: There's those prosecution history statements there. [00:08:19] Speaker 01: Those are the things you're relying on. [00:08:20] Speaker 04: And then in conjunction with the amendment, there is an explanatory statement that doesn't just explain the amendment. [00:08:26] Speaker 04: It explains PMC's position writ large that decryption does not include analog, and specifically does not include de-scrambling. [00:08:34] Speaker 04: So yes, it's all of those things. [00:08:36] Speaker 01: And you're saying it's preserved in the third response? [00:08:38] Speaker 01: that encryption point, you've preserved it in your remarks in the third response that was filed in December of 2011? [00:08:46] Speaker 04: I believe that that's right, which is the... In distinguishing Mason? [00:08:51] Speaker 04: Yes, which I believe is at 11... No, that's not right. [00:08:56] Speaker 04: It's at 2312 to 13 of the appendix. [00:08:59] Speaker 04: That's right. [00:09:00] Speaker 04: And then, so the other thing that the board relied on actually goes to the specification and one of the reasons that, as your question alluded to, we do say that the specification also explains that decrypting means digital. [00:09:15] Speaker 01: And the board said... So what's your response to that passage that the board was relying on? [00:09:19] Speaker 04: Right. [00:09:20] Speaker 04: Our response to that passage [00:09:22] Speaker 04: begins with the first sentence of that passage, which I'd like to take to court, too. [00:09:27] Speaker 04: So appendix 1099, column 159. [00:09:30] Speaker 04: If I could, I'd like to ask the court to start at, I guess it's line 46, which is the beginning of a paragraph that says, it is obvious to one of ordinary skill in the art. [00:09:40] Speaker 04: And there, the... [00:09:43] Speaker 04: The example seven has concluded, and the specification is explaining ways in which example seven might be modified. [00:09:50] Speaker 04: And then there are a number of examples. [00:09:52] Speaker 04: The third example, which begins at line 57, is the line to which your question, Judge Stoll, alluded and that the board relied on. [00:10:01] Speaker 04: It says that the Wall Street Week transmission may be of conventional analog television, meaning instead of the digital television that example seven has made very clear is the [00:10:12] Speaker 04: transmission at issue in embodiment. [00:10:15] Speaker 04: And then, so if that's true, then [00:10:17] Speaker 04: the decryptors may be conventional descramblers. [00:10:20] Speaker 04: We do not read that as saying that decryptors may be descramblers as a matter of the lexicography of this patent. [00:10:28] Speaker 04: We read that as saying that just as the digital transmission that we just told you about, and I believe it's column 148, the beginning of example seven, may instead be analog, the decryptors that we've told you about may be substituted for descramblers. [00:10:45] Speaker 01: I was just going to say that thinking about broadest reasonable construction again, and thinking about whether the board's position is reasonable, or whether you were acting as a lexicographer in your patent, you know, there are other sections of your patent where you more expressly say, this term means such and such. [00:11:04] Speaker 01: Like, for example, the term programming refers to, and then there's an express definition. [00:11:09] Speaker 01: I don't see something of the same express lexicography [00:11:13] Speaker 01: in your specification. [00:11:15] Speaker 01: And then you also have this passage here that we've just been talking about, which in all, to me, detracts from the idea that you were your own lexicographer. [00:11:26] Speaker 01: And I just want to give you an opportunity to respond to that. [00:11:29] Speaker 04: Sure. [00:11:29] Speaker 04: And to be clear, we think that even if you disagreed with our lexicography argument, we still think that we would win based on the claim language, based on the use [00:11:39] Speaker 04: preponderance of the usage in the specification, because we don't think this detracts from it, and the express statements during prosecution history. [00:11:46] Speaker 04: So in other words, even if you didn't think we'd expressly said, and now I'm being a lexicographer, that I think we would still prevail because of the reasons that I've just given you for distinguishing 159. [00:11:57] Speaker 00: How do you treat that? [00:11:59] Speaker 00: In each one of these claims that we're talking about, it starts off by addressing programming. [00:12:06] Speaker 00: And programming has been expressly defined as all electronic information. [00:12:12] Speaker 00: I would assume that that means both digital and analog. [00:12:14] Speaker 04: It does, Your Honor, but that doesn't change the meaning of decrypting, and this is a point that we made in our reply brief, and it really is just the flip side of the board's argument about... But it lends support, doesn't it, to the readableness of the board's finding? [00:12:28] Speaker 04: I don't think so, Your Honor, because what we're talking about is a limitation on decrypting. [00:12:34] Speaker 04: We're not talking about, for example, a complete mismatch between decrypting and programming. [00:12:39] Speaker 04: So we know that the thing that has to be decrypted is programming. [00:12:43] Speaker 04: So if we were advocating for a definition that didn't fit with programming at all, OK, I could see that point. [00:12:49] Speaker 04: But the analogy that we gave in our brief is that if we talked about winding a watch, a watch can be analog, a watch can be digital, but only one kind of watch can be wound. [00:12:58] Speaker 04: And the fact that it's winding a watch wouldn't change the meaning of the word winding. [00:13:03] Speaker 04: And I would just add to that the fact that the programming appears in the preamble [00:13:07] Speaker 04: The preamble is not limiting, and what the court should be looking to is really the first step in the method. [00:13:13] Speaker 04: Because the first step in the method, the encrypted digital information transmission [00:13:16] Speaker 04: All of the information that is then alluded to later in the steps of the method it all flows back to that because the information has to be included in that encrypted digital information Transmission for the reasons I've given before it that has to be digital no other information comes in that is not all included within that Okay, you're into your rebuttal time. [00:13:36] Speaker 00: I'll restore some of your time. [00:13:37] Speaker 00: Okay. [00:13:38] Speaker 00: Thank you your honor. [00:13:38] Speaker 00: Thank you counselor sir now [00:13:47] Speaker 03: Good morning. [00:13:48] Speaker 03: May it please the court. [00:13:49] Speaker 03: Mark Sernell on behalf of Apple. [00:13:51] Speaker 03: Two issues in the case. [00:13:53] Speaker 03: Most of the questions were on encryption, decryption, so I'd like to start there. [00:13:56] Speaker 03: I'd like to first frame the question here in terms of the construction of encryption, decryption, and remind you that what PMC is arguing here is that the broadest reasonable interpretation of encryption and decryption somehow excludes prior, or nearly contemporaneous prior, just a few years before, [00:14:15] Speaker 03: prior art that is describing systems that uses the exact terms, encryption and decryption, to describe the processes disclosed therein. [00:14:22] Speaker 03: The Gilhausen, which starts at appendix 1164. [00:14:26] Speaker 01: Do you mind if I just direct you? [00:14:27] Speaker 01: I have a couple questions that I want to make sure I ask you about. [00:14:30] Speaker 01: I'm interested in some of the argument that was made at page A2312. [00:14:36] Speaker 01: This is the prosecution history. [00:14:41] Speaker 01: I think that there's pretty strong evidence here that would support the view, not necessarily that encryption is limited to digital, but that the language digital information transmission, I might have that wrong, encrypted digital information transmission, that that is limited to entire digital. [00:15:02] Speaker 01: So I'm looking at the last full paragraph on page 2312 [00:15:08] Speaker 01: And it does seem to say that Mason teaches a hybrid system. [00:15:14] Speaker 01: And then the very next sentence says, but it does not teach the encryption of an entire digital signal transmission. [00:15:20] Speaker 01: I'd like to get your response to that. [00:15:23] Speaker 03: So first of all, I think we're in the prosecution history. [00:15:25] Speaker 03: So we're in the world of arguing for a clear and unmistakable disclaimer. [00:15:29] Speaker 02: Are we? [00:15:30] Speaker 02: Not necessarily. [00:15:31] Speaker 02: I don't think I've ever seen a say that you need to meet a clear and unmistakable disavowal disclaimer standard when using the prosecution history not to overcome an otherwise clear meaning of the language or the spec, but merely to enable you to understand which of several possible meanings. [00:15:51] Speaker 03: And I apologize, but if I could just address that foundational piece of this. [00:15:55] Speaker 03: I believe there is a common, ordinary meaning that was the starting point. [00:16:00] Speaker 03: As I was pointing out, [00:16:00] Speaker 03: The prior art we're talking about here that was found to anticipate by the board used the terms encryption-decryption to refer to systems that were processing, at least in part, analog information. [00:16:11] Speaker 03: So that was the common usage at the time. [00:16:13] Speaker 03: And so I would suggest that the only way the prosecution history is going to help PMC get to where they need to be is with respect to a clear and unmistakable disclaimer. [00:16:21] Speaker 01: Did the board find that that was the plain meaning? [00:16:23] Speaker 01: I thought that the board said there was no plain meaning. [00:16:25] Speaker 03: The board said that the meanings were in flux. [00:16:28] Speaker 03: I think we're in a situation kind of like in Ray Paulson, where in that case, there was a question of what the term computer meant. [00:16:36] Speaker 03: And it said, well, there's no rigid and fixed meaning of computer, but there's sort of a core understanding that it's something that's going to, a device that engages in calculations. [00:16:44] Speaker 03: And the question was, because there were more sophisticated computers described in the specification, [00:16:49] Speaker 03: is that the meaning of computer we're going to use and so in Ray Paulson they said well there's a core meaning that it means at least this. [00:16:56] Speaker 01: I understand what you're saying but I'm just kind of going back to did the board find that because I don't think the board found that. [00:17:02] Speaker 03: I think the board did find that the core the common meaning and this is appendix I think 32 the common meaning understood at the time was that it was [00:17:13] Speaker 03: something used to decipher, to scramble, et cetera, using a key algorithm or other digital information. [00:17:21] Speaker 03: And so that was sort of the core understanding. [00:17:23] Speaker 03: And then the question is, is it exclusively digital, as PMC argues, or can it include analog components? [00:17:28] Speaker 03: And so with that context, I think we look at the prosecution history, [00:17:32] Speaker 03: And what they're arguing here are essentially claim construction type arguments. [00:17:37] Speaker 03: Clearly they're trying to argue that the claim construction of encryption-decryption should require a digital signal. [00:17:44] Speaker 03: And I'm going to get back to that in a minute as to if, even if there was a disclaimer, what that disclaimer might be. [00:17:50] Speaker 03: They're making that argument, but then clearly here in the December 2011 [00:17:54] Speaker 03: prosecution history back and forth, they're pivoting from that and saying, well, we acknowledge that it can be argued that Mason teaches encrypted elements. [00:18:03] Speaker 03: And so the question here is, is the term encryption, decryption, the issue that is being raised here is, do those terms exclusively require an exclusive digital process with only digital information? [00:18:16] Speaker 01: Just above this, in the paragraph above, they say it's their view that encryption is limited to digital. [00:18:22] Speaker 01: So how is it unreasonable for me to read that sentence and think that when they then use that word, encrypted, they mean digital? [00:18:30] Speaker 03: So if you look at the bottom sentence on Appendix 2312, what they're arguing is this amendment in no way affects. [00:18:39] Speaker 03: So they're amending the claims. [00:18:41] Speaker 03: They're adding limitations that ultimately gained allowance. [00:18:44] Speaker 03: But they're saying applicants position that encryption requires a digital signal. [00:18:48] Speaker 03: Let's talk about what that even means. [00:18:50] Speaker 01: It's OK. [00:18:50] Speaker 01: So your view is that this sentence that says Mason teaches encrypted elements as part of its analog information transmission is not saying that Mason is hybrid. [00:19:01] Speaker 03: I believe Mason certainly has digital elements. [00:19:05] Speaker 03: The point here is even if we were to get in the world of thinking there might be a disclaimer, what the position they've taken and the position that's stated here is encryption requires a digital signal. [00:19:16] Speaker 03: That doesn't necessarily require exclusively digital, excluding all of analog. [00:19:21] Speaker 03: There's no clear and unmistakable statement here that says this has to be an exclusively digital transmission. [00:19:27] Speaker 01: What about the word entire? [00:19:31] Speaker 03: Where do you see that? [00:19:32] Speaker 01: The next sentence. [00:19:33] Speaker 01: But it does not teach the encryption of an entire digital signal transmission. [00:19:38] Speaker 01: It signs up from the bottom of 2312. [00:19:44] Speaker 03: So I guess let me take a step back. [00:19:47] Speaker 03: When we're now talking about the phrase in the claim, receiving encrypted digital information transmission, including encrypted information, that's something the board has adopted a claim construction. [00:20:00] Speaker 03: It was challenged on rehearing by PMC, and they've not challenged it here. [00:20:05] Speaker 03: So we have a construction of that phrase that is binding on this court. [00:20:09] Speaker 03: They've waived the ability to argue about that. [00:20:11] Speaker 03: We're simply now arguing about encrypted and decrypted separate and apart from that phrase. [00:20:17] Speaker 03: And the board found, with respect to, and this is Appendix 21, an encrypted digital information transmission, including encrypted information, [00:20:25] Speaker 03: includes at least some encrypted digital information and does not preclude with that transmission non-encrypted information or scrambled analog information. [00:20:34] Speaker 03: So we're not looking at that entire phrase on the issue that PMC's raised here on appeal. [00:20:38] Speaker 03: We're simply looking at encryption and decryption. [00:20:41] Speaker 03: And with respect to those phrases, at most we can glean from the prosecution history that it requires a digital signal. [00:20:48] Speaker 03: Now let's think about what the board found in terms of encryption-decryption. [00:20:52] Speaker 03: Again, there's two questions with respect to what needs to be digital. [00:20:56] Speaker 03: One, sort of the payload, the digital information, the content, the programming. [00:21:00] Speaker 03: And then secondly, you have potentially an algorithm, key, or other digital information. [00:21:05] Speaker 03: On that second piece, the board did read in a digital requirement. [00:21:09] Speaker 03: and all of the prior art that the board relied upon has that digital key as part of it. [00:21:15] Speaker 03: The question is, does the programming, the content, the information need to be exclusively digital or not? [00:21:22] Speaker 03: And nothing in the prosecution history, even if you find that there may be something that moves towards a disclaimer, suggests that an exclusively digital information transmission with everything being digital, excluding analog. [00:21:35] Speaker 03: And so I judge. [00:21:39] Speaker 03: Toronto had questions about the claim language. [00:21:43] Speaker 03: I think the claim language, as we walk through the hierarchy of intrinsic evidence, fully supports what the board found here as well, where we have this concept of an encrypted digital information transmission, including encrypted information. [00:21:56] Speaker 03: I think all you need to do is look at Phillips, not only Phillips in terms of its teachings with respect to the canons of claim construction, but also the specific facts of Phillips, where Phillips had the situation of steel baffles. [00:22:08] Speaker 03: And the Phillips and Bonk court explained that the fact that you use the word steel to describe baffles strongly implied that the term baffles does not inherently mean objects of steel. [00:22:21] Speaker 03: Similarly here, where you have the concept of encrypted [00:22:24] Speaker 03: information or encrypted digital information, that strongly implies based on the claim language that not all encrypted information is digital. [00:22:33] Speaker 03: And they need that to be the case in order for their position to prevail here. [00:22:37] Speaker 03: Also, as Judge Raina pointed out, this concept that we have decrypting programming. [00:22:41] Speaker 03: Again, programming is defined very, very broadly in the specification. [00:22:45] Speaker 03: And it certainly includes analog transmissions and analog programming. [00:22:50] Speaker 03: And the fact that we're decrypting programming, I think, is also strong context support for the board's finding here. [00:22:58] Speaker 02: Can I ask you something very specific? [00:23:01] Speaker 02: Sure. [00:23:01] Speaker 02: On page nine of your red brief, you're describing the background of Wall Street Week in particular and saying the programming [00:23:11] Speaker 02: that is decrypted using the embedded signals is often standard 1980s analog television or radio programming. [00:23:18] Speaker 02: For example, example 7, 107 decrypts the audio portion of Wall Street Week, and 224 decrypts the video portion. [00:23:28] Speaker 02: And the first site to column 151 is the audio portion, 107. [00:23:33] Speaker 02: And the second is 153, column 153, the 224, which expressly describes in that [00:23:42] Speaker 02: in expressed terms, the video portion there is all digital. [00:23:49] Speaker 02: The words are receives, 224 receives the information of said video portion per ren, said information being encrypted digital video. [00:23:59] Speaker 02: So this does not suggest that at least example seven is in any way decrypting [00:24:09] Speaker 02: analog video. [00:24:10] Speaker 03: So let's, there's two answers to that. [00:24:13] Speaker 03: The second one will be, I'll point to other parts of the specification where clearly analog is being decrypted. [00:24:18] Speaker 02: Right, but not the part that is describing the [00:24:22] Speaker 03: I think it's important to remember that what we're talking about here is 1980s era technology and discussion of the technology. [00:24:30] Speaker 03: And so when we're talking about digital video and digital audio, and the board made a finding on this, this is Appendix 16, footnote 7, quoting Apple's expert at Appendix 843, 844, that a person of ordinary skill in the art in 1981 or 1987 [00:24:47] Speaker 03: would have considered, quote, digital television, quote, digital video, or quote, digital programming to be fundamentally comprised of an analog video signal that contained embedded digital content. [00:25:00] Speaker 03: And so the point here is that you're potentially going to have [00:25:04] Speaker 03: analog pieces of something that's being referred to in shorthand as digital video or digital audio. [00:25:11] Speaker 03: You can see at Column 148, they even use the phrase so-called digital video or digital audio. [00:25:17] Speaker 03: Again, this is the 1980s. [00:25:18] Speaker 03: Now, I would separately point out that even if you look at every reference to digital in the specification and conclude that it's an exclusively digital transmission, there are also other pieces. [00:25:29] Speaker 03: You talked about it with Council. [00:25:31] Speaker 03: Column 159 very clearly talks about [00:25:33] Speaker 03: The decryptors 107, 224, and 231 may be conventional descramblers, well known in the art, that descramble analog television transmissions. [00:25:44] Speaker 03: I would point to another example if you look at column 160. [00:25:48] Speaker 03: It talks about videotape recorders that transmit a transmission of conventional re-recorded programming that has been encrypted. [00:25:56] Speaker 03: This is about lines 18 through 20, and then talks about decryption of that encrypted programming from its videotape recorder. [00:26:04] Speaker 01: I understand your point to be that the vast majority of the specification when it's talking about digital is talking about hybrid systems in which there's analog and digital. [00:26:12] Speaker 03: That's correct, and I believe there's also just straight analog discussion as well. [00:26:19] Speaker 01: Can I ask you about location for a few more minutes? [00:26:22] Speaker 01: OK. [00:26:24] Speaker 01: I looked through the specification for the term locating and locate. [00:26:29] Speaker 01: And I was wondering, in most of the instances I saw, locate seems to mean find, not place, as in find my phone, not locate my business, instead locate my phone. [00:26:44] Speaker 01: find versus place. [00:26:47] Speaker 01: And are you aware of any instance in the specification where locating or locate is used to mean place as opposed to find? [00:26:56] Speaker 01: And I know it's a long specification, but I just wanted to give you an opportunity if you had an example to provide. [00:27:02] Speaker 03: I've got a few examples. [00:27:07] Speaker 03: One of them is at the top of column 62, where locates being used, where they talk about locating information. [00:27:17] Speaker 03: And then it lays out over multiple paragraphs how you have to find multiple fields and [00:27:33] Speaker 03: It's column 62, line 3, is sort of the original information that's found. [00:27:40] Speaker 03: And so my example here, I think it's effectively just sort of summarizing everything that's going on here. [00:27:45] Speaker 03: What you're having to do is find multiple pieces of information, compare them, make determinations, and then you cobble together information to find this information that's being located, which I think is supportive of the board's construction of locating, finding that information. [00:28:01] Speaker 02: And what exactly was it? [00:28:02] Speaker 02: Remind me, what did the board say the construction was? [00:28:05] Speaker 03: The board said the construction was to determine or indicate the place, site or limits of. [00:28:13] Speaker 03: And so you're finding information. [00:28:15] Speaker 03: And so ultimately, PMC doesn't even challenge the board's construction at the reply brief at 23, I believe it is. [00:28:22] Speaker 03: They acknowledge that that is the plain meaning. [00:28:26] Speaker 03: What ultimately we then are disputing is this additional requirement where they basically say you need to use what you [00:28:33] Speaker 03: locate in exactly the form in which you locate it to then decrypt. [00:28:38] Speaker 03: And so that's the argument. [00:28:40] Speaker 03: And so they're trying to exclude the ability to find the information. [00:28:44] Speaker 02: Let me just ask you about that. [00:28:45] Speaker 02: I couldn't quite tell what to make of what you say is, I'm just going to call it the real dispute, which doesn't actually appear to be a dispute between the terminology the board adopted and the terminology they're suggesting. [00:29:02] Speaker 02: And so I was left uncertain about whether we can decide how much, let's call it, manipulation can be used and still be part of the process of locating. [00:29:19] Speaker 02: Assuming, as I guess I am assuming, because I don't understand how one could not assume, [00:29:24] Speaker 02: that this is all about finding and not placing. [00:29:27] Speaker 02: It's not about deciding where to put something, it's about getting it. [00:29:32] Speaker 02: And then the question is, what work is involved in getting? [00:29:34] Speaker 02: But I kind of thought that the board didn't ever really get to that question, but thought that deciding where to place was part of the construction, which seems [00:29:47] Speaker 02: just inapposite to everything that's going on here. [00:29:51] Speaker 03: I agree it's confused and I agree the PMC's arguments are confusing too. [00:29:55] Speaker 02: I don't think their arguments are confusing. [00:29:59] Speaker 02: I don't see a well-developed debate [00:30:03] Speaker 02: about what kinds of manipulations would be permissible for locating. [00:30:08] Speaker 02: They say translating from Cyrillic to Latin alphabet, that's fine. [00:30:14] Speaker 02: But computing, taking one piece of information, another piece of information, putting them together through some calculation, that is not. [00:30:25] Speaker 02: But I don't really see the engagement on that in the board's decision. [00:30:29] Speaker 02: That's what I'm genuinely confused about. [00:30:32] Speaker 03: And there's a dependent claim that says computing a key. [00:30:34] Speaker 03: And that's one of the arguments that they made. [00:30:37] Speaker 03: I would argue that computing doesn't exclude there also being some computing as part of locating the key. [00:30:44] Speaker 02: Well, it may be a question of how much. [00:30:46] Speaker 03: Right. [00:30:47] Speaker 02: Add three to every character. [00:30:52] Speaker 02: Right. [00:30:52] Speaker 02: That's, I suppose, computing, and that would presumably be roughly the equivalent, or actually the equivalent of simply translating it. [00:30:59] Speaker 03: And ultimately, I think the answer, the easy answer is, all of this is academic anyway, because the board has found, even under PMC's construction, that the Gilhausen reference, and I believe this is at 81 and 82 of the appendix, concludes that Gilhausen does [00:31:14] Speaker 03: The key that's already in existence and it's taking information that's transmitted and reproducing the key stream that already Existed on the subscriber or on the on the transmitter side of the apparatus Okay, let's stop at that point. [00:31:29] Speaker 00: I think you're well over your time. [00:31:31] Speaker 00: Thank you. [00:31:32] Speaker 00: Thank you for the argument. [00:31:39] Speaker 00: Councilor J. I'm going to restore you back to three minutes and [00:31:43] Speaker 02: Thank you very much. [00:31:43] Speaker 02: I'm going to use 10 seconds of it. [00:31:45] Speaker 02: Are we bound by what the board said by way of construction of the longer phrase, encrypted digital information transmission, which you don't seem either at all or quite to have appealed? [00:31:58] Speaker 04: We did not sort of break it out as a separate Roman numeral, but I guess I would point you to page 17 of the appendix in which the board itself says that the two constructions are interrelated and [00:32:10] Speaker 04: incorporates its analysis of the issue that we have appealed into its analysis of the longer phrase. [00:32:17] Speaker 04: And so we did not break it out as a separate, even if you disagree with us about decrypting, you should have a separate discussion about this. [00:32:28] Speaker 04: But we do think that they are bound up together. [00:32:30] Speaker 04: And one of the reasons that the board's construction of that limiting phrase in the first method step is wrong [00:32:37] Speaker 04: is because its misunderstanding goes back to that first step as well. [00:32:43] Speaker 04: So I think it's fair to say that we did not separately appeal it, but we certainly have disputed it all along, and the board itself acknowledges that they are closely interrelated. [00:32:51] Speaker 00: So let's go back to a prior question that I had. [00:32:53] Speaker 00: If the inventor meant to only claim digital information, then why is the word programming included in all the different claims? [00:33:02] Speaker 00: I mean, why was programming not the word that was redefined? [00:33:07] Speaker 04: Well, respectfully, Your Honor, programming is only in the preamble. [00:33:10] Speaker 04: And so I don't think it was necessary to do that. [00:33:13] Speaker 00: Is it really? [00:33:15] Speaker 04: That's it? [00:33:15] Speaker 00: Of each claim. [00:33:16] Speaker 01: Is it in the last limitation of the claim? [00:33:21] Speaker 04: I guess that's right. [00:33:25] Speaker 04: Right. [00:33:28] Speaker 04: And I apologize. [00:33:28] Speaker 04: What I should have said is it is not what the operation that is discussed in the method is doing. [00:33:35] Speaker 04: So at the very end, the programming is outputted after the encryption and decryption have been done in the first through. [00:33:41] Speaker 00: So wouldn't it have been easier just to redefine programming to exclude analog information or to include just digital information? [00:33:49] Speaker 00: I mean, we probably wouldn't be here. [00:33:51] Speaker 04: That would have been a way to do it. [00:33:53] Speaker 04: But I think the question is, from [00:33:55] Speaker 04: What would a member of the public reading the file history and the text of the claim, the specification and the file history [00:34:03] Speaker 04: conclude. [00:34:03] Speaker 04: And that might have been a way to do it. [00:34:05] Speaker 04: But it certainly is not the only way to do it, especially because what you have here is a quite unambiguous statement in the third of the three file history excerpts, the one with the amendment in it, in which it's being added in that first method step rather than in the preamble. [00:34:22] Speaker 04: And I think, you know. [00:34:23] Speaker 02: If programming were redefined in the spec, then you would lose the greater breadth of claim 26, which clearly covers [00:34:31] Speaker 02: a transmission that includes, you know, Louis Rukeyser in non-digital with some, you know, little bits of digital information stuffed in. [00:34:41] Speaker 04: That's fair, and I apologize, my answer was kind of focused on the first claim, which we've been discussing, but what you say is correct, Mr. Rento, that that would have effects on other claims, and it wasn't even necessary. [00:34:56] Speaker 00: Well, you just redefine programming for each one of your claims as you need, just to make sure that there's no [00:35:00] Speaker 00: misunderstanding where analog information is included and where it's excluded. [00:35:05] Speaker 04: And that brings me exactly to a point that I wanted to make in this rebuttal, responding to something that my friend on the other side said, that all the dispute about what other pieces of art said or even what other pieces of the specification said. [00:35:18] Speaker 04: Of course, this is a specification from which many patents have issued. [00:35:21] Speaker 04: The question is, what is the broadest reasonable interpretation of this claim language in this patent with this file history? [00:35:27] Speaker 04: And so in addition to the digital amendment, even if there were no digital amendment, you'd still have the lexicography in the specification. [00:35:36] Speaker 04: And even if you didn't have that for this specific file history, you'd still have the three statements saying, we don't intend to claim analog, and we especially don't intend to claim descrambling. [00:35:45] Speaker 00: OK. [00:35:45] Speaker 00: I think we have your argument. [00:35:46] Speaker 00: Thank you very much, George. [00:35:47] Speaker 00: We thank the parties for their argument. [00:35:54] Speaker 00: Our next case is NRA AMP, AAMP.