Case: 18-1936 Document: 60 Page: 1 Filed: 03/13/2020
United States Court of Appeals
for the Federal Circuit
______________________
PERSONALIZED MEDIA COMMUNICATIONS, LLC,
Appellant
v.
APPLE INC.,
Appellee
______________________
2018-1936
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00755.
______________________
Decided: March 13, 2020
______________________
WILLIAM M. JAY, Goodwin Procter LLP, Washington,
DC, argued for appellant. Also represented by CE LI,
STEPHEN SCHREINER; DOUGLAS J. KLINE, TODD MARABELLA,
Boston, MA.
MARCUS EDWARD SERNEL, Kirkland & Ellis LLP, Chi-
cago, IL, argued for appellee. Also represented by JOEL
ROBERT MERKIN, MEREDITH ZINANNI; GREG AROVAS, ALAN
RABINOWITZ, New York, NY.
______________________
Before REYNA, TARANTO, and STOLL, Circuit Judges.
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2 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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.
BACKGROUND
I
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
signals.
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
signal;
passing said instruct-to-enable signal to a proces-
sor;
determining a fashion in which said receiver sta-
tion locates a first decryption key by processing
said instruct-to-enable signal;
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PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 3
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
decrypting.
’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 infor-
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.
II
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-
mation transmissions as opposed to information
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4 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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
information.
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
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PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 5
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).
DISCUSSION
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.
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6 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
I
“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).
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PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 7
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
standard).
II
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.
A
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.
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8 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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-
ments.cafc.uscourts.gov/default.aspx?fl=2018-1936.mp3.
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
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interpretation, nor does it compel the Board’s interpreta-
tion. 3
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 (independent
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.
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10 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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-
mation transmission’ (claim 26) instead” (quoting
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
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which “digital” is used to specify transmissions that are all-
digital.
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.
B
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.
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12 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
’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
added).
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
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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.
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14 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
Thus, we conclude that the evidence from the specifica-
tion also fails to resolve the scope of the disputed claim
term.
C
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 Gilhousen 4 and
Mason, 5 the two primary prior art references asserted by
Apple in the IPR proceedings on appeal. The applicant ex-
plained:
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-
cided in Ex parte Personalized Media
4 U.S. Patent No. 4,613,901.
5 U.S. Patent No. 4,736,422.
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PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 15
Communications, LLC . . . that encryption requires
a digital signal. Each of the claims of this amend-
ment involves the use of digital signals through ref-
erence to “decryption” and “encryption.”
“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
“scrambling” interchangeably, the invention’s
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
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16 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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
PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 17
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
specification.
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
18 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.
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 clear. The applicant as-
serted that the amended claims should be allowed because
the prior art “does not teach the encryption of an entire dig-
ital signal transmission.”
Id. (emphasis added). Accord-
ingly, we conclude that the applicant’s repeated and
consistent statements during prosecution, along with its
amendment to the same effect, are decisive as to the mean-
ing of the disputed claim term—even if those statements
do not rise to the level of a disclaimer. See
Shire, 787 F.3d
at 1366; Tempo
Lighting, 742 F.3d at 977–78;
Sunovion,
731 F.3d at 1276–77.
D
The Board’s determination that claims 13–16, 18, 20,
21, 23, and 24 of the ’091 patent are unpatentable was
predicated on its determination that “an encrypted digital
information transmission including encrypted infor-
mation” includes mixed digital and analog signals. All the
grounds of unpatentability for these claims rely on prior art
that uses mixed analog and digital signals. Because we
find that the disputed claim term is limited to all-digital
signals, we reverse the Board’s unpatentability determina-
tion for those claims.
Claims 26, 27, and 30 do not include the disputed claim
term and instead recite “an information transmission in-
cluding encrypted information.” Because the prosecution
history statements and amendments that we found deci-
sive to the interpretation of “encrypted digital information
transmission” do not apply to claims 26, 27, and 30, and
because PMC conceded to the Board and this court that
these claims include mixed digital and analog signals
within their scope, we affirm the Board’s unpatentability
determination for these claims.
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PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC. 19
CONCLUSION
We have considered the parties’ other arguments, and
we do not find them persuasive. For the foregoing reasons,
we reverse the Board’s final written decision invalidating
claims 13–16, 18, 20, 21, 23, and 24 of the ’091 patent. We
affirm the Board’s decision invalidating claims 26, 27,
and 30 of the ’091 patent.
AFFIRMED-IN-PART, REVERSED-IN-PART
COSTS
No costs.
