Unified Patents Inc.v.Personalized Media Communications, LLCDownload PDFPatent Trial and Appeal BoardJun 8, 201508449263 (P.T.A.B. Jun. 8, 2015) Copy Citation Trials@uspto.gov Paper 13 571-272-7822 Entered: June 8, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UNIFIED PATENTS, INC., Petitioner, v. PERSONALIZED MEDIA COMMUNICATIONS, LLC, Patent Owners. ____________ Case IPR2015-00521 Patent 7,801,304 B1 ____________ Before KARL D. EASTHOM, TRENTON A. WARD, and GEORGIANNA W. BRADEN, Administrative Patent Judges. WARD, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2015-00521 Patent 7,801,304 B1 2 I. INTRODUCTION Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes review of claims 1, 11, 16, 18, and 22–24 (“challenged claims”) of U.S. Patent No. 7,801,304 B1 (Ex. 1004, “the ’304 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 3, 10. Personalized Media Comm., LLC (“Patent Owner”) timely filed a Patent Owner Preliminary Response (“Prelim. Resp.”). Paper 10. We have jurisdiction under 35 U.S.C. § 314. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the particular circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d) and deny the Petition. A. Related Matters Petitioner informs us that the ’304 patent is the subject of a lawsuit: Personalized Media Communications, LLC v. Amazon.com, Inc., No. 1:13- cv-1608-RGA (D. Del. filed Sept. 23, 2013). Pet. 1. Additionally, Petitioner identifies another inter partes review filed by third parties that involves the ’304 patent, namely, Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media Comm., LLC (collectively “Amazon”), IPR2014-01532. In IPR2014-01532, we instituted an inter partes review of claims 1, 11, 16, 18, and 22–24 of the ’304 patent on March 31, 2015. IPR2015-00521 Patent 7,801,304 B1 3 IPR2014-01532, Paper 8. Petitioner filed its Petition, challenging the same claims, along with a Motion for Joinder requesting that we join this proceeding with IPR2014-01532. Pet. 10; Paper 3, 1. In a decision entered concurrently, Petitioner’s Motion for Joinder is denied. B. The’304 Patent The ’304 patent is titled “Signal Processing Apparatus and Methods” and generally relates to a unified system of programming communication. Ex. 1004, Abstr. The challenged claims relate to methods of controlling the decryption of programming at a subscriber station or receiver station. Claim 1 is reproduced below: 1. A method for controlling the decryption of programming at a subscriber station, said method comprising the steps of: receiving programming, said programming having a first encrypted digital control signal portion and an encrypted digital information portion; detecting said first encrypted digital control signal portion of said programming; passing said first encrypted digital control signal portion of said programming to a decryptor at said subscriber station; decrypting said first encrypted digital control signal portion of said programming using said decryptor at said subscriber station; passing said encrypted digital information portion of said programming to said decryptor; IPR2015-00521 Patent 7,801,304 B1 4 decrypting said encrypted digital information portion of said programming using said decryptor at said subscriber station based on the decrypted control signal portion; and presenting said programming. The Patent Owner describes claim 1 as directed to a method decrypting the encrypted digital information portion of programming using a decryptor at a subscriber station based on a decrypted control signal portion of the programming. Prelim. Resp. 10. The ’304 patent describes access control to transmitted content at a receiver station. Ex. 1004, 143:39–49. Figure 4 of the ’304 patent, reproduced below, illustrates a receiver station: As shown above in Figure 4, the ’304 patent discloses a receiver station having signal processor 200 to control tuners 214, 215, and 223, the IPR2015-00521 Patent 7,801,304 B1 5 switching of matrix switch 258, and decrypting by decryptors 107, 224, and 231. Id. at 148:12–16. 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 149:5–8. 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 149:8–12. 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 150:5–14. Executing the instructions causes controller 20 to receive the cable channel transmission, select the information of a cipher key Ca from among the information portion, and transfer the cipher key to decryptor 107. Once the ciper 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 151:58–63; 152:25–30. Subsequently, a second SPAM message that consists of an “01” header provides “1 st -stage-enable-WSW-program” instructions as the information segment information. Id. at 153:19–24. Executing the “1 st - 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 153:47–50. Controller 20 selects the decryption cipher key Ba and transfers it to selected decryptor 224. Id. at IPR2015-00521 Patent 7,801,304 B1 6 153:47–65; 154:10–11. Controller 20 causes decryptor 224 to commence decrypting the received information using decryption cipher key Ba and decryption cipher algorithm B. Id. at 154:10–14. A third SPAM message provides “2 nd -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 156:44–56. 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 158:4–10. 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 159:36–40. C. Alleged Grounds of Unpatentability Petitioner challenges the patentability of claims 1, 11, 16, 18, and 22– 24 of the ’304 patent based on the following grounds: Reference(s) Basis Claim(s) Challenged Guillou 1 § 103 1, 11, 18, 23, and 24 Guillou, Block, 2 and Guillou ’011 3 § 103 22 Guillou and Block § 103 11 and 16 FIPS PUB 81 4 § 102 1, 16, and 18 1 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1007) (“Guillou”). 2 US Patent No. 4,225,884, filed Jun. 30, 1978 (Ex. 1008) (“Block”). 3 US Patent No. 4,352,011, filed Jan. 23, 1980 (Ex. 1009) (“Guillou ’011”). 4 DES Modes of Operation, Federal Information Processing Standards Publication 81), U.S. Dept. of Commerce, Nat’l Bureau of Standards, IPR2015-00521 Patent 7,801,304 B1 7 II. ANALYSIS Petitioner states that its “[P]etition is substantively identical to the one in [IPR2014-01532]” and requests that the Board grants its Petition and institute inter partes review. Pet. 1, 4. Patent Owner counters that Petitioner’s joinder request would: (i) complicate and delay the proceeding in IPR2014-01532; (ii) waste the Board’s resources; and (iii) prejudice the Patent Owner. Opposition to Petitioner’s Motion for Joinder (Paper 7, “Opp.”), 7–13. We have discretion under 35 U.S.C. § 325(d) to reject a petition when the same or substantially the same prior art or arguments were presented previously in another proceeding before the Office. The relevant portions of that statute are reproduced below: In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d). Although the grounds of unpatentability, claim construction, and supporting evidence in this proceeding are nearly identical to the grounds of unpatentability, claim construction, and supporting evidence in IPR2014- 01532 (compare Pet. 14–58 with IPR2014-01532, Paper 1, 13–57), Petitioner downplays the significance of the fact that this proceeding Dec. 2, 1980, (Ex. 1014) (“FIPS PUB 81”). IPR2015-00521 Patent 7,801,304 B1 8 includes at least one new substantive issue that is not before us in the proceeding in IPR2014-01532. As noted in our concurrent decision denying Petitioner’s motion for joinder, Petitioner is a company whose stated purpose is to deter NPE litigation by protecting technology sectors (Mot. 2); therefore, Patent Owner seeks additional discovery to determine what companies, if any, fund and control the Petitioner (Opp. 9). Patent Owner argues that this additional discovery will be required to address adequately whether Petitioner failed to identify all real parties-in-interest under 35 U.S.C. § 312(a)(2). Opp. 9. Additionally, Petitioner fails to address how instituting and joining this proceeding to IPR2014-01532 will affect the schedules in the other six related inter partes reviews between Amazon and the Patent Owner, which have all been instituted and share the same schedule as IPR2104-01532. See, e.g., IPR2014-01432, Paper 16, 1. Furthermore, Patent Owner argues that Petitioner will not be prejudiced by a denial of joinder because Petitioner may refile its Petition in the event that IPR2014-01532 is terminated. Opp. 13. Taking into consideration the efficient administration of the Office under 35 U.S.C. § 316(b), as well as the reasons set forth in the decision denying Petitioner’s Motion to Joinder entered concurrently, we exercise our discretion under 35 U.S.C. § 325(d) and deny the Petition in this proceeding because the same or substantially the same prior art and arguments were presented previously in IPR2014-01532. IPR2015-00521 Patent 7,801,304 B1 9 III. ORDER Accordingly, it is ORDERED that the Petition is DENIED. For PETITIONER: Michael Kiklis Scott McKeown Katherine Cappaert OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P cpdocketkiklis@oblon.com cpdocketmckeown@oblon.com cpdocketcappaert@oblon.com For PATENT OWNER: Stephen Schreiner Eleanor Yost GOODWIN PROCTER LLP sschreiner@goodwinprocter.com eyost@goodwinprocter.com Thomas Scott PERSONALIZED MEDIA COMMUNICATIONS, LLC tscott@pmcip.com Copy with citationCopy as parenthetical citation