PMC1

Unified v.
Personalized Media
IPR Petition U.S. Pat. 7,801,304
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.,
Petitioner
v.
Personalized Media Communications, LLC,
Patent Owner
IPR2015-00521
Patent 7,801,304
____________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,801,304
Unified v. Personalized Media

TABLE OF CONTENTS
TABLE OF CONTENTS .......................................................................................... ii
TABLE OF AUTHORITIES ................................................................................... iv
EXHIBIT LIST ..........................................................................................................v
I.
MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ........................1

A.
Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) ............................ 1
B.
Related Matters Under 37 C.F.R. 42.8(b)(2) ..................................... 1
C.
Lead and Back-Up Counsel................................................................... 2
D.
Service Information Under 37 C.F.R. 42.8(b)(4) ............................... 2
E.
Grounds for Standing Under 37 C.F.R. 42.104(a) ............................. 3
II.
INTRODUCTION ...........................................................................................3
III.
OVERVIEW OF THE 304 PATENT ............................................................4
IV.
PRIORITY .......................................................................................................9
V.
STATEMENT OF PRECISE RELIEF REQUESTED .................................10
VI.
LEVEL OF ORDINARY SKILL IN THE ART ...........................................10
VII. CLAIM CONSTRUCTION ..........................................................................11

A.
Digital Programming/Mass Medium Presentation

Signal/Television ............................................................................... 11
B.
Said Decryptor ................................................................................. 12
C.
A Processor ...................................................................................... 12
VIII. SPECIFIC PROPOSED GROUNDS FOR REJECTION .............................13

A.
Claims 1, 11, 18, 23, and 24 Would Have Been Obvious Over
Guillou in View of the Knowledge of a Person Having
Ordinary Skill in the Art...................................................................... 14
1.
Claim 1 ......................................................................................17
2.
Claim 11 ....................................................................................26
3.
Claim 18 ....................................................................................26
4.
Claim 23 ....................................................................................27
5.
Claim 24 ....................................................................................32
ii

B.
Claim 22 Would Have Been Obvious Over Guillou in View of

Block, Guillou 011, and the Knowledge of a Person Having
Ordinary Skill in the Art...................................................................... 38
1.
C.
D.
IX.
X.
Claim 22 ....................................................................................40
Claims 11 and 16 Would Have Been Obvious Over Guillou in

View of Block and the Knowledge of a Person of Ordinary
Skill in the Art. .................................................................................... 50
1.
Claim 11 ....................................................................................50
2.
Claim 16 ....................................................................................52
Claims 1, 16, and 18 are Anticipated by FIPS PUB 81. ..................... 53
OBVIOUSNESS CONSIDERATIONS ........................................................58

A.
Reasons to Combine ............................................................................ 58
B.
Secondary Considerations Fail to Overcome the Strong

Evidence of Obviousness. ................................................................... 59
CONCLUSION .............................................................................................60
iii

TABLE OF AUTHORITIES
In re Trans Texas Holdings Corp.,
498 F.3d 1290 (Fed. Cir. 2007) ..................................................................... 11
Leapfrog Enters. Inc. v. FisherPrice, Inc.,
485 F.3d 1157 (Fed. Cir. 2007) ..................................................................... 60
Newell Cos., Inc. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988) ....................................................................... 60
Personalized Media Commcns., LLC v. Amazon.com, Inc.,
No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013) ................................... 1
OTHER AUTHORITIES
35 U.S.C. 102 .................................................................................................passim
35 U.S.C. 103 .................................................................................................passim
35 U.S.C. 311319 ................................................................................................ 1
37 C.F.R. 42.8 ..................................................................................................... 1, 2
37 C.F.R. 42.15 ..................................................................................................... 60
37 C.F.R. 42.100 ...............................................................................................1, 11
37 C.F.R. 42.104 ..................................................................................................... 3
iv

EXHIBIT LIST
Exhibit
No.
1001
U.S. Patent No. 4,694,490 (the 490 patent)
1002
U.S. Patent No. 4,965,825 (the 825 patent)
1003
Prosecution File History of U.S. Patent No. 7,769,170
1004
U.S. Patent No. 7,801,304
1005
Prosecution File History of U.S. Patent No. 7,801,304
1006
Declaration of Anthony J. Wechselberger in Support of Petition for

Inter Partes Review of U.S. Patent No. 7,801,304
1007
U.S. Patent No. 4,337,483 (Guillou)
1008
U.S. Patent No. 4,225,884 (Block)
1009
U.S. Patent No. 4,352,011 (Guillou 011)
1010
International Patent Application No. WO 80/01636 (Guillou PCT)
1011
Declaration of Annemarie Mattheyse in Support of Petition for Inter

Partes Review of U.S. Patent No. 7,801,304
1012
Curriculum vitae of Anthony J. Wechselberger
1013
List of publications by Anthony J. Wechselberger
1014
DES Modes of Operation, Federal Information Processing Standards

Publication 81), U.S. Dept. of Commerce, Natl Bureau of Standards
(Dec. 2, 1980) (FIPS PUB 81)
1015
Data Encryption Standard, Federal Information Processing Standards

Publication 81), U.S. Dept. of Commerce, Natl Bureau of Standards
(Jan. 15, 1977) (FIPS PUB 46)
1016
U.S. Patent No. 4,172,213 (Barnes)
1017
U.S. Patent No. 4,182,933 (Rosenblum)
1018
Unified Patents Inc.s Voluntary Interrogatory Responses
Description

Under 35 U.S.C. 311319 and 37 C.F.R. 42.100 et seq., Petitioner
Unified Patents Inc., (Unified or Petitioner) requests inter partes review of
U.S. Patent No. 7,801,304 (the 304 patent), assigned to Personalized Media
Communications, LLC (PMC or Patent Owner). Petitioner files a motion for
joinder concurrently herewith to join this proceeding with Amazon.Com and
Amazon Web Svcs., LLC v. Personalized Media Comm., LLC, Case IPR201401532 (the Amazon IPR), in which the Petition was filed on September 22,
2014. This petition is substantively identical to the one in the Amazon IPR.
I.
MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)

The following mandatory notices are provided as part of this petition.
A.
Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the

real party-in-interest, and further certifies that no other party exercised control or
could exercise control over Unifieds participation in this proceeding, the filing of
this petition, or the conduct of any ensuing trial. See Ex. 1018.
B.
Related Matters Under 37 C.F.R. 42.8(b)(2)
The 304 patent is involved in the Amazon IPR, which is pending, as well as
in co-pending litigation captioned Personalized Media Commcns., LLC v.
Amazon.com, Inc., No. 1:13-cv-1608-RGA (D. Del. filed Sept. 23, 2013).

Amazon.com, Inc. and Amazon Web Services, LLC are parties to the litigation.
PMC served its Complaint on September 24, 2013.
C.
Lead and Back-Up Counsel
Unified provides the following designation of counsel, all of whom are

included in Customer No. 22,850 identified in Unifieds Power of Attorney.
Lead Counsel
Back-up Counsel
Michael L. Kiklis (Reg. No. 38,939)

cpdocketkiklis@oblon.com
Postal and Hand-Delivery Address:
1940 Duke Street
Alexandria, VA 22314
Telephone: (703) 413-2707
Facsimile: (703) 413-2220
Scott A. McKeown (Reg. No. 42,866)

cpdocketmckeown@oblon.com
1940 Duke Street
Telephone: (703) 413-6297
Facsimile: (703) 413-2220
Katherine D. Cappaert (Reg. No. 71,639)
cpdocketcappaert@oblon.com
1940 Duke Street
Telephone: (703) 236-2674
Facsimile: (703) 413-2220
D.
Service Information Under 37 C.F.R. 42.8(b)(4)
Please address all correspondence to lead counsel and back-up counsel at the
address shown above. Unified also consents to electronic service by email to:
cpdocketkiklis@oblon.com.

E.
Grounds for Standing Under 37 C.F.R. 42.104(a)
Unified certifies that the 304 patent is available for inter partes review and
that Unified is not barred or estopped from requesting an inter partes review
challenging the patent claims on the grounds identified in this petition.
II.
INTRODUCTION
In 1981, the inventors filed Patent Application No. 06/317,510, which had a
22-column specification. Ex. 1001. In 1987, they filed a continuation-in-part that

inflated the specification to over 300 columns.
Ex. 1002.
Right before the
effective date of the GATT legislation, PMC filed 328 patent applications, all
claiming priority to both the 1987 and 1981 applications.
PMC overwhelmed the Patent Office with a huge number of patent
applications, an unclear specification, thousands of prior-art references,
inconsistent definitions of claim terms, and thousands of pending claims. See Ex.
1003 at 2627. This, in conjunction with ex parte reexaminations filed against
PMCs earlier-issued patents, caused the Patent Office to suspend prosecution for
about ten years. Of PMCs 328 patent applications filed in 1995, one issued in
1999. The next one issued in 2010. Since then, the Patent Office has issued to
PMC approximately 80 additional patents. These 80 patents, along with about 20
pending patent applications, trace their roots back to the 328 patent applications
filed in 1995, and allegedly back to the 1987 and 1981 specifications.
3

With this strategy, PMC has secured patents having about a 50-year span
between the alleged priority date and the expiration date. For example, the 304
patent expires on September 21, 2027, with an alleged priority of November 3,
1981, a 46-year span. Moreover, PMC has continually broadened the scope of its
claims during the 30+ years of prosecution. PMC now alleges that these claims
read on present-day Internet technologies even though they rely on a specification
that describes only point-to-multipoint broadcast technologies such as television
and radio.
PMCs attempts to obtain broad patent protection have resulted in claims
that encompass the prior art. For the reasons discussed below, the Board should
find that there is a reasonable likelihood that claims 1, 11, 16, 18, and 2224 of the
304 patent are unpatentable in light of the prior art. Accordingly, Petitioner
requests that the Board to grant this petition and institute this inter partes review.
III.
OVERVIEW OF THE 304 PATENT

The 304 patent was filed on May 24, 1995, and issued on September 21,
2010. Ex. 1004. As discussed above, the 304 patent claims priority to a series of
continuation and continuation-in-part applications dating back to November 3,
1981, and includes a 285-column specification and 32 issued claims.
As issued, the 304 patent generally relates to the encryption and decryption
of programming. Claim 24 is representative:
4

24. A method for controlling decryption of digital television or
computer programming at a receiver station, said method comprising
the steps of:
storing a procedure for locating or identifying a specific digital
instruct-to-decrypt signal in a plurality of signal types;
receiving an information transmission that includes a plurality of
signal types and at least one unit of digital television or
computer programming;
passing at least some of said information transmission to a
detector;
detecting data of said plurality of signal types and transferring said
detected data to a processor;
identifying or locating said specific digital instruct-to-decrypt
signal by processing said detected data in accordance with
said stored information; and
decrypting at least some of said unit of digital television or
computer programming on the basis of said identified or
located specific digital instruct-to-decrypt signal.
Claim 24 recites a method for controlling decryption of encrypted data at a
receiver station using a transmitted decryption signal. Claim 23 recites a similar
method where a decryptor is controlled to alter its decryption pattern or technique.
Claim 1 recites a method of decryption using an encrypted decryption signal,
which would be decrypted at the receiver station to then decrypt the encrypted
data. Claims 11, 16, and 18 are dependent claims of claim 1 and respectively add

limitations requiring two different signal-transmission sources, the storage of data
evidencing receiver processing, and the inclusion of computer data as part of the
programming.
Claim 22 describes a method for transmitting decryption
information to a receiver station in response to a query and using that information

to decrypt encrypted data.
The 32 issued claims of the 304 patent originated from 7 different
applications: 08/449,263; 08/481,074; 08/469,994; 08/485,775; 08/477,712;
08/449,413; and 08/448,810. Ex. 1005 at 237, 462. Claims 1, 16, and 18 of the
304 patent were added in a supplemental preliminary amendment in the
08/449,263 application as claims 3, 6, and 10 respectively. Ex. 1005 at 2729.
Initially, the Patent Office rejected claims 3 and 6 as being anticipated by Guillou
(U.S. Patent No. 4,337,483) and rejected claim 10 as being obvious in light of
Guillou. Ex. 1005 at 6770. The Patent Office also rejected these claims for
double patenting and indefiniteness. Id. at 4667 and 7273.
In response, PMC amended claims 3 and 10 and argued that Guillou does
not disclose every claim element:
Guillou fails to disclose the step of decrypting a control signal portion
of some programming to select or decrypt the information portion of
the programming. Guillou does not suggest decrypting a control signal
portion to select or decrypt an information portion. Guillou decrypts
encoded text-video at a receiver station, but nothing in Guillou
6

suggests decrypting something in order to select or decrypt something
else. Furthermore, Guillou fails to disclose the step of decrypting a
control signal which causes at least one of passing an information
portion to a decryptor and decrypting an information portion of some
programming.
Ex. 1005 at 8486 and 10710. The Patent Office rejected PMCs arguments and
amendments for claims 3, 6, and 10, and reasserted its 102 rejection of claims 3
and 6, and its 103 rejection of claim 10, under Guillou, finding every limitation
disclosed in Guillou and noting that PMCs arguments and characterization of
Guillou were unpersuasive. Ex. 1005 at 14349.
PMC then amended claims 3, 6, and 10, including adding over ten lines of
limitations to claim 3 (these limitations were later deleted). Ex. 1005 at 19497.
In a separate Amendment, PMC added claim 21 from the 08/481,074 application,
which became claim 64 and issued as claim 22. Ex. 1005 at 22324, 237.
PMC never overcame the rejections based on Guillou. Rather, in the next
Office Action, a new examiner simply took a different approach to rejecting the
claims. Compare Ex. 1005 at 241, with id. at 128. Under this new approach,
PMCs claims were rejected on multiple grounds, including under 103. But these
rejections were global and not claim specific, and did not include the prior
rejections under Guillou. See Ex. 1005 at 35390. The examiner never suggested
that PMC had overcome the rejections based on Guillou.
7

In response to the new rejections, PMC again added new claims from copending applications. These included claim 4 from the 08/485,775 application,
which became claim 92 and later issued as claim 23; claim 15 from the 08/477,712
application, which became claim 123 and later issued as claim 11; and claim 3
from the 08/448,810 application, which became claim 156 and later issued as claim
24. Ex. 1005 at 465, 480, 497, and 462.
PMC then filed a 1358-page response, which included amendments to
claims 3, 6, 10, 92, 123, and 156. Ex. 1005 at 51820, 558, 569, and 58485.
Claim 3 was amended to delete over twelve lines of limitations, including the ten
lines that were added in the August 5, 1998 Amendment; claim 6 was amended to
add the limitation wherein said subscriber station stored information that
evidences processing said programming; and claim 92 was amended to add the
limitation in accordance with a varying pattern of timing or location. Ex. 1005
at 51819, 558.
The Patent Office then issued a miscellaneous action that was later expunged
from the file history and is not part of the 304 patents certified file history. See
Ex. 1005 at 1963 (cover page to Sept. 10, 2001 Notice of Nonresponsiveness) and
2021 (withdrawing the Sept. 10, 2001 Notice of Nonresponsiveness). In response,
PMC made minor amendments to claims 3, 64, 92, and 156. Ex. 1005 at 1972,
1982, 199394.
8

This essentially marked the end of the substantive examination of the
application. Prosecution of the application appears to have been suspended until
late 2009, when the Patent Office filed its next Interview Summary. See Ex. 1005
at 20182033. After a series of interviews and minor claim amendments, claims 3,
123, 6, 10, 64, 92, 156 were allowed, and issued as claims 1, 11, 16, 18, and 22
24, respectively. Ex. 1005 at 20292045. No office actions were issued by the
Patent Office after 2001.
In the Notice of Allowability, the examiner amended the claims and noted
that the prior art did not disclose 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; decrypting said encrypted digital information of said programming
using said decryptor at said subscriber station based on the decrypted control signal
portion. Ex. 1005 at 2063. Yet, these limitations only applied to claim 3, which
issued as claim 1.
IV.
PRIORITY
For this review, Petitioner only asserts prior art dated before the November
3, 1981 filing date. Petitioner therefore believes it is unnecessary to address

priority but reserves the right to do so should PMC attempt to antedate the prior
art.
9

V.
STATEMENT OF PRECISE RELIEF REQUESTED

Petitioner requests that the Board cancel claims 1, 11, 16, 18, and 2224 of
the 304 patent based on the following grounds for unpatentability:

Ground 1: Claims 1, 11, 18, 23, and 24 are unpatentable under 35 U.S.C.
103 as obvious over Guillou in view of the knowledge of a person having
ordinary skill in the art;
Ground 2: Claim 22 is unpatentable under 35 U.S.C. 103 as obvious over
Guillou in view of Block, Guillou 011, and the knowledge of a person having
ordinary skill in the art;
Ground 3: Claims 11 and 16 are unpatentable under 35 U.S.C. 103 as
obvious over Guillou in view of the knowledge of a person having ordinary skill in
the art, and in further view of Block;
Ground 4: Claims 1, 16, and 18 are unpatentable under 35 U.S.C. 102(a)
as anticipated by FIPS PUB 81.
A detailed explanation of how claims 1, 11, 16, 18, and 2224 are
unpatentable is set forth below in Section VIII. Additional explanation and support
are included in the Declaration of Anthony J. Wechselberger. Ex. 1006.
VI.
LEVEL OF ORDINARY SKILL IN THE ART

A person having ordinary skill in the art for purposes of the 304 patent
would be an individual having a bachelors degree in electrical engineering, or
10

equivalent experience, and two to four years of experience in the broadcast or
cablecast television transmission fields. Ex. 1006 2630.
VII. CLAIM CONSTRUCTION
The claim terms in the 304 patent are presumed to take on their ordinary and
customary meaning based on the broadest reasonable interpretation of the claim
language in light of the specification. 37 C.F.R. 42.100(b); In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007).
Unifieds position
regarding the scope of the claims should not be taken as an assertion regarding the
appropriate claim scope in other forums where a different standard of claim
construction applies. Unified sets forth the following to clarify certain claim terms
under the broadest reasonable interpretation standard.
A.
Digital Programming/Mass Medium Presentation

Signal/Television
The terms digital programming, and digital mass medium presentation

signal do not appear in the 304 patent outside of the claims. The term digital
television appears in the specification once, but it does not provide a definition of
the term. Ex. 1004 at 235:9. Throughout the specification, digital signals are
discussed as embedded in analog television. See, e.g., Ex. 1004 at Fig. 1; 10:4962
(The video transmission is inputted to video transmission divider, 4, which is a
conventional divider that splits the transmission into two paths. One is inputted
11

continuously to TV signal decoder, 203, and the other to microcomputer, 205. TV
signal decoder, 203, which is described more fully below, has capacity for
receiving a composite video transmission; detecting digital information embedded
there in . . . .); id. at 160:3337; 234:39235:43. Therefore, under the broadest
reasonable
interpretation,
digital
programming,
digital
mass
medium
presentation signal, and digital television can include broadcast transmissions

containing digital signals with analog television signals.
B.
Said Decryptor
In the 304 patent, some embodiments use a single decryptor, while other
embodiments use multiple decryptors. See, e.g., Ex. 1004 at Figs. 3A, 4, 7. The
304 patent also discusses a decryptor as being part of a controller. See, e.g., Ex.
1004 at Fig. 2C; 137:5361. In light of these ambiguities and under the broadest
reasonable interpretation, said decryptor in limitations 1(e) and 1(f) of claim 1
can refer to a single decryptor as well as multiple decryptors. The term can also
refer to a single logical decryptor comprising a plurality of physical (or logical)
decrypting circuits.
C.
A Processor
Claim 24 refers to a processor, ostensibly as the circuitry that performs the

decrypting. The 304 patent includes many instances of the term processor,
including ones that perform a decrypting function. See, e.g., Ex. 1004 at 75:3034.
12

The 304 patent also describes decryptors having the same functionality as a
decryptor that is found within a processor. See, e.g., Ex. 1004 at Fig. 2; 83:4345
(Said decryptor, 39K, is a conventional decryptor that is identical to decryptor,
10, of signal processor, 200.). In claim 24, the only functionality associated with
the processor in limitation 24(d) is identifying or locating, processing,
(limitation 24(e)) and decrypting (limitation 24(f)). These are not functions
exclusive to a processora decryptor or other circuits can perform these
functions. Under the broadest reasonable interpretation, the term a processor can
refer to a decryptor or a decryption circuit, as well as a decoder, a detector, a
discriminator, an unscrambler, or other similar components.1
VIII. SPECIFIC PROPOSED GROUNDS FOR REJECTION
Claims 1, 11, 16, 18, and 2224 of the 304 patent are unpatentable for the
reasons set forth below.
As further support for this construction, PMC proposed in the related
district court litigation that processor in claim 24 of the 304 patent means any
device capable of performing operations on data.
13

A.
Claims 1, 11, 18, 23, and 24 Would Have Been Obvious Over
Guillou in View of the Knowledge of a Person Having Ordinary
Skill in the Art.
Guillou was filed on January 31, 1980, and issued on June 29, 1982. Ex. 1007.
Guillou is therefore prior art to the 304 patent at least under 102(e). Guillous
disclosure is prior art under 102(b) by virtue of its publication on August 7, 1980
as WO 80/01636. See Ex. 1010, 1011. PMC never disputed that Guillou is prior
art during prosecution of the 304 patent.
Guillou traces its roots back to the development of the French ANTIOPE
system in the late 1970s. Ex. 1007 at 1:762 (stating that the invention could be
used with the ANTIOPE system and incorporating by reference a number of
documents relating to the ANTIOPE system). Guillou discloses an access-control
video-transmission system that controls a subscribers access to transmitted data.
Id. at Figs. 2, 7; 4:458. Figure 7 shows an embodiment of the invention:
14

Id. at Fig. 7. As shown above, Guillou discloses an apparatus for encrypting and
decrypting digital signals and data using a double-key (two layer) encryption
scheme2 that changes periodically. Id. at 8:524. Notably, Guillou contemplates
Guillou also refers to FIPS PUB 46 in describing its encryption/decryption
system. Ex. 1007 at 11:310; Ex. 1015. The use of double-key encryption was
well known, and numerous other prior-art references disclose double-key
encryption and the use of DES and its modes of operation, including FIPS PUB 81
15

the use of this access-control scheme as an add-on to both unidirectional broadcast
systems and two-directional interactive systems. Id. at 21:2328 (It also goes
without saying that the disclosed broadcasting system is used only by way of an
example and that the invention could be applied to other systems without any
difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE
systems or the VIEWDATA or PRESTEL systems.); 1:1020. A person having
ordinary skill in the art in 1981 would know that the foregoing examples of teletext
systems supported the broadcast of supplementary information as digital data
embedded in the vertical blanking interval (VBI) or in full fields of analog
television signals. Ex. 1006 3840, 46, 52.
More specifically, Guillou discloses that data is encrypted at the emitting
center 2 using an operating key K. Ex. 1007 at Fig. 7; 10:436. The operating key
K changes randomly at intervals determined by the emitting center. Id. at 8:3943;
10:47. In addition to encrypting the data, the emitting center also encrypts the
operating key K using subscribers keys Ci, resulting in messages Mi. Id. at 8:44
58; 15:5265. The subscribers keys Ci are generated by the subscription center
100, which distributes these keys to both the emitting center and to the subscribers.
(showing modes of operation based on FIPS PUB 46), Barnes (U.S. Pat. No.
4,172,213), and Rosenblum (U.S. Pat. No. 4,182,933). Exs. 1014, 1016, 1017.
16

Id. at 15:4650; 16:2629. The encrypted data and the encrypted messages Mi are
transmitted to receiver stations 4, each of which uses a stored subscribers key Ci to
decrypt and extract the operating key K from the encrypted messages Mi. Id. at
15:6616:10; 20:3421:12. After decrypting operating key K, the receiver station
uses this operating key K to decrypt the encrypted data. Id. at 10:4166.
As demonstrated below, it would have been obvious to a person having
ordinary skill in the art to modify the teachings of Guillou to arrive at the methods
recited in claims 1, 11, 18, 23, and 24 of the 304 patent.3
1.
Claim 1
1(pre) A method
for controlling the
decryption of
programming at a
subscriber station,
Said method
comprising the
steps of:
1(a) receiving
3
Claim 1
Guillou
Guillou discloses a method for controlling the decryption of
programming at a subscriber station. Ex. 1007 at Abstract;
Figs. 2, 710; 9:4810:66; 15:4216:17.
Guillou discloses a digital encrypted key delivery process,
Unified believes that Guillou discloses each and every limitation of claims
1, 11, 18, 23, and 24 as discussed herein and therefore anticipates these claims.
Nevertheless, Unified asserts Guillou under an obviousness ground of rejection
because Unified cannot predict which, if any, limitations PMC might argue are not
disclosed by Guillou, or how the Board might construe the claims.
17

Claim 1
programming,
said programming
having a first
encrypted digital
control signal
portion and an
encrypted digital
Information
portion;
Guillou
which controls the decryption of encrypted digital data, where
the encrypted digital data along with the encrypted digital key
are transmitted from an emitter center and are received by a
subscriber station. Id. at Figs. 1, 2, 7, 9; 2:814; 6:6268; 8:5
43; 9:6064.
first encrypted digital control signal portion
The encrypted digital control signal is message Mi, which
contains the operating key K (i.e., digital control signal). Mi is
encrypted but is detectable, readable, and capable of being
decrypted to obtain the key K. The messages Mi are sent from
the emitter center and are received by the subscriber station.
Both Mi and K are digital. Id. at Figs. 2, 7, 8, 10; 8:5558;
8:599:12; 15:4216:17; 16:6317:15; 18:1959; 20:53
21:14; claims 1, 68.
As soon as a distribution centre generates a new operating
key K, it calculates, for each current subscribers key in use Ci
for this service, a message Mi by means of an algorithm Mi =
FCi (K), with the keys Ci acting as parameters. Id. at 8:4448.
All the messages Mi in force together constitute the
information for access control associated with the service
being broadcast. This access control information is obviously
not locked up by the electronic lock. Id. at 8:5558.
encrypted digital information portion
The encrypted digital information is Dj, which is the encrypted
form of digital information dj. Both Dj and dj are digital. Dj is
transmitted from the emitter center and received by the
subscriber station. Id. at Figs. 2, 7, 8; 2:2327; 2:643:3;
5:5357; 6:5060; 7:3342; 10:2836; 11:310; see also claim
1.
Using d1, d2, d3 . . . to denote the clear octets of a row, C1, C2,
C3 to denote the encoding octets delivered by the generator,
and D1, D2, D3 . . . to denote the encoded octets, we have the
18

Claim 1
Guillou
following table of the series of codes . . . Id. at 14:2024.
Id. at 14:2631 (a table describing Dj).
1(b) detecting
said first
encrypted digital
control signal
portion of said
programming;
Then come the data octets d1, d2, . . . dn. These octets are
inserted between the start of the current line and either a line
endstart of new lineor the end of a page. These octets d1,
d2, . . . dn represent the information constituting the service
being broadcast. Thus the information element in a system of
this kind is the displayable line. Id. at 3:5561.
A video-data separator 142, a selection circuit 143, and a
decoding circuit 145 detect and extract data octets from the
transmitted signal. Some of these data octets contain the
encrypted digital control signal message Mi. This detecting
step is performed by any one of these three components or the
three of them in combination. Id. at Figs. 7, 9, 10; 8:559:12;
17:1918:51; 19:4220:17; 20:4052; see also claim 1.
The receiving station shown comprises, in the line 18 for
processing numerical signals, a video-data separator 142
(which operates by a known procedure to extract a series of
octets from the analog signal) the input of which is connected
to the video output of the circuit 14. This separator has its
output connected to a primary selection circuit 143 (which also
operates by a known procedure so as to extract the octets
carried in a numerical line). The output of the circuit 143 is
connected by a junction 144 to a page selecting and data
decoding circuit 145 whose output is connected to the input of
a page memory 146. Id. at 19:415.
19

Claim 1
Guillou
Id. at Fig. 9.
1(c) passing said The video-data separator 142 passes encrypted digital control
signal message Mi to the selection circuit 143, which passes
first encrypted
digital control
the encrypted digital control signal message to the decoding
signal portion of circuit 145, which passes the encrypted digital control signal to
said programming a Krestoring circuit 110. Id. at Figs. 7, 9, 10; 16:110; 20:6
to a decryptor at
17.
said subscriber
station;
At the level of processing the functional pages, the circuit 145
has programmes permitting analysis and use of the access
control pages. At the appropriate address in the memory 108 of
the card 106, the circuit locates a valid subscription block from
which it extracts the subscription index. Then, in the access
page, it searches for the line corresponding to this subscription
index (since, as has been seen, the lines are numbered by the
indices). There, it recovers the access block and extracts the
message Mi from it. This message is transmitted to the circuit
110 which calculates the key K using the subscribers key Ci
appearing in the subscription block which has just been located
in the card. Id. at 20:4052.
The message Mi is decrypted using the K-restoring circuit 110
1(d) decrypting
said first
to obtain the operation key K. Id. at Figs. 7, 9, 10; 8:599:12;
encrypted digital 16:6317:15; 20:617; 20:4052; claims 1, 5, 8.
control signal
portion of said
programming
using said
20

Claim 1
decryptor at said
subscriber station;
1(e) passing said

encrypted digital
information
portion of said
programming to
said decryptor;
Guillou
Id. at 20:5321:14.
The video-data separator 142 passes encrypted digital
information Dj to the decoding circuit 145, which passes
information Dj to a discriminator 42. Id. at Figs. 2, 7, 9, 10;
7:4858; 10:4150; 19:430; 20:639.
21

Claim 1
Guillou
Id. at Fig. 10.

The circuit 145 therefore has to be completed in order to take
these two new elements into account. The necessary
supplements are of two kinds: (1) At the level of decoding the
pages of information: the decoder should unlock the
information line by line, using an octet generator similar to
that used on emission; (2) At the level of processing the
functional pages: the decoder should know the method of
using the access control pages and should also be able to hold
a dialogue with a subscription card in order to obtain K, the
operating key. Id. at 19:6120:5.
1(f) decrypting
said encrypted
digital
information
portion of said
See also discussion below with respect to said decryptor.

Guillou discloses the decryption of Dj using the decoding octet
Cj to yield decrypted digital information dj. Cj is generated
from digital control signal K, which was decrypted. Id. at
Figs. 2, 7, 5, 9, 10; 7:488:4; 10:4211:2; 13:2514:62; claims
1, 2.
22

Claim 1
programming
using said
decryptor at said
subscriber station
based on the
decrypted control
signal portion;
and
Guillou
In the present invention, in the presence of a new line of
information, the decoder 145 initialises the generator of
decoding octets 26 according to the process indicated above
with reference to FIG. 5, which uses nine successive orders.
Then, for each octet in the line, the decoder 145 causes the
generation of a decoding octet Cj (c6 = c7 = c8 = 0), and if the
octet Dj received is not a control code (columns 0 and 1),
which is verified by the comparator 42, the decoder combines
it, by OR-exclusive, with the decoding octet in the gate 46.
Id. at 20:2939.
At the level of decoding the pages of information: the decoder
should unlock the information line by line, using an octet
generator similar to that used on emission. Id. at 19:6568.
1(g) presenting
said
programming.
See also claim chart for Guillou limitation 1(e) and discussion
below with respect to said decryptor.
Guillou discloses that the digital information portion (i.e., from
digital line element 18) along with video programming (i.e.,
from video line element 16) are presented on a display device
20. Id. at Figs. 1, 2, 7, 9; 2:19; 7:4; 10:56; see also claim 1.
The receiver illustrated in FIG. 9 comprises the large
functional blocks already mentioned with regard to FIGS. 1
and 2, namely: a receiving and demodulating circuit 14, a line
16 for processing picture signals, a line 18 for processing
numerical signals and display means 20. The circuit 14
delivers, on the one hand, the sound to a loudspeaker 15 and,
on the other hand, the video signal to a colour decoder and
scanning generator 19. The colour signals B1, V1 and R1, and
the luminance L1 from the circuit 19 are transmitted to the tube
140 through a video switch 141. Id. at 18:6119:3.
The receiving station shown comprises, in the line 18 for
processing numerical signals, a video-data separator 142
(which operates by a known procedure to extract a series of
octets from the analog signal) the input of which is connected
23

Claim 1
Guillou
to the video output of the circuit 14. This separator has its
output connected to a primary selection circuit 143 (which also
operates by a known procedure so as to extract the octets
carried in a numerical line). The output of the circuit 143 is
connected by a junction 144 to a page selecting and data
decoding circuit 145 whose output is connected to the input of
a page memory 146. A subscribers keyboard 147 is connected
to the control inputs of blocks 143 and 145 and to the switch
141. The output of the memory 146 is connected to the input
of a character generator 148. The signal outputs of the
generator 148 are connected to the colour inputs R2, V2 and B2
of the video switch 141 and to a luminance input L2. Id. at
19:421.
In limitations 1(e) and 1(f), the claim refers to said decryptor, thereby
suggesting that the same decryptor that decrypted the encrypted digital control
signal portion must also decrypt the encrypted digital information portion.
Guillou discloses that decoder 145 performs these decrypting functions: The
circuit 145 therefore has to be completed in order to take these two new elements
into account. The necessary supplements are of two kinds: (1) At the level of
decoding the pages of information: the decoder should unlock the information line
by line, using an octet generator similar to that used on emission; (2) At the level
of processing the functional pages: the decoder should know the method of using
the access control pages and should also be able to hold a dialogue with a
subscription card in order to obtain K, the operating key. Id. at 19:6120:5.
24

Figure 10 of Guillou shows two decryption circuits connected to the decoder
145 that decrypt the encrypted digital control signal portion and the encrypted
digital information portion.
The first is the K-restoring circuit 110, which
decrypts the encrypted digital control signal message Mi. The second decryption
circuit is the automatic decryption means 38 (i.e., a discriminator 42 in
combination with an OR-exclusive-type logic circuit 46), which decrypts the
encrypted digital information Dj. Id. at Fig. 10; 20:621:14. Although these
circuits are described separately, these two circuits collectively comprise the
claimed decryptor that performs the steps recited in 1[e] and 1[f]. Ex. 1006 58.
To the extent it is alleged that Guillou lacks the said decryptor limitation
in 1(e) and 1(f) merely because Guillou discloses two decrypting circuits (one for
the encrypted digital control signal portion and one for the encrypted digital
information portion), it would have been obvious to a person having ordinary skill
in the art to combine both the K-restoring circuit 110 and the automatic decryption
means 38 (i.e., a discriminator 42 in combination with an OR-exclusive-type logic
circuit 46), to constitute a single multipurpose decryptor because this was merely a
matter of design tradeoffs such as signal processing requirements and cost. Ex.
1006 58, 6062, 67. It also would have been obvious to a person having
ordinary skill in the art to consider or refer to both the K-restoring circuit 110 and
the discriminator 42 logically as a single decryptor. Ex. 1006 58, 60, 6367.
25

Underscoring the obviousness of this element, the 304 patent itself fails to
explain how the encrypted digital control signal portion and the encrypted digital
information portion are decrypted using a single decryptor. Ex. 1006 6466.
Given the lack of any disclosure of a single decryptor decrypting both the
encrypted digital control signal portion and the encrypted digital information
portion, no patentable weight should be given to any allegation that the claims
require a single decryptor. Ex. 1006 4749, 61, 6466.
2.
Claim 11
11(a) The
method of
claim 1
wherein said
programming
and a signal
necessary for
decryption
are received
from
difference
sources.
3.
Claim 18
18(a) The
method as in
Claim 11
Guillou
The subscribers keys Ci is a signal necessary for decryption and is
received by the subscriber station from the subscription card 106
and card reader 36, by way of the subscription-card-charging
station 112 and subscription center 100, which are each sources
different than the emitting center 2, which transmits the
programming having a first encrypted digital control signal
portion and an encrypted digital information portion. Ex. 1007 at
Figs. 7, 10; 8:538; 15:4616:38; 16:5562; 20:4057; claim 6.
[A]t least one charging station 112 connected to the subscription
administration centre 100, from which it receives the signals
corresponding to the different subscribers keys Ci generated by
this centre; each of these stations is capable of temporarily
receiving subscription holders and recording in their memories 108
one of the subscribers keys Ci. Id. at 16:1117.
Claim 18
Guillou
The encrypted digital signals received via digital line 18 could
include computer data. Id. at Figs. 1, 2, 7; 1:1020.
26

Claim 18
claims 1, or
14, wherein
said digital
programming
includes
computer data.
Guillou
It also goes without saying that the disclosed broadcasting
system is used only by way of an example and that the invention
could be applied to other systems without any difficulty for the
man skilled in the art, and notably to the CEEFAX or ORACLE
systems or the VIEWDATA or PRESTEL systems. Id. at 21:23
28.
See also claim chart for Guillou limitation 1(a) with respect to
encrypted digital information portion.
4.
Claim 23
23(pre) A method
of processing
signals at a
receiver station,
said receiver
station having a
receiver, a digital
detector
operatively
connected to said
receiver for
detecting
encrypted digital
data, a decryptor
operatively
connected to said
digital detector
for decrypting
said encrypted
digital data, and a
controller
operatively
connected to said
digital detector or
Claim 23
Guillou
programming at a receiver station, where the receiver station
includes the components claimed in this preamble. Figs. 7, 9,
and 10 show that the receiver station has a receiving circuit 14,
which is connected to a video-data separator 142, a selection
circuit 143, and a decoding circuit 145, each (or in
combination) serving as a digital detector for detecting
encrypted digital data. An automatic decryption means 38
(i.e., a discriminator 42 in combination with an OR-exclusivetype logic circuit 46) for decrypting the encrypted digital data
is connected to the decoding circuit 145. Finally, both the
decoding circuit 145 and a K-restoring circuit are operatively
connected to and control the automatic decryption means. Id.
at Figs. 2, 7, 9, 10; 7:4858; 10:4150; 19:430; 19:6520:52.
27

Claim 23
said decryptor for
controlling said
decryptor, said
method
comprising the
steps of:
23(a) receiving a
plurality of
signals including
digital
programming and
inputting at least
some of said
plurality of
signals to said
digital detector;
Guillou
Id. at Fig. 10.

The receiver station receives a plurality of signals, which
include encrypted digital data and an encrypted digital control
signal message Mi. Id. at Fig. 9; see claim chart for Guillou,
limitation 1(b), with respect to detecting.
See also claim chart for Guillou, limitation 1(a), with respect
to first encrypted digital control signal portion and
encrypted digital information portion.
Further, Guillou discloses that these signals are inputted to a

digital detector.
In Guillou, the encrypted digital control signal message Mi, is
23(b) detecting
said encrypted
detected by a video-data separator 142, a selection circuit 143,
digital data in
and a decoding circuit 145 (either alone or in combination).
said at least some These components (either alone or in combination) pass the
of said plurality
message Mi to a decryptor (K-restoring circuit) 110. See claim
of signals in
chart for limitation 1(b), with respect to the detecting step
accordance with a and the claim chart for limitation 1(c), with respect to the
varying pattern of passing step.
timing or location
28

Claim 23
and passing said
detected
encrypted digital
data to said
decryptor;
Guillou
varying pattern of timing
A new operating key K is generated (and therefore also
messages Mi) every five minutes. This transmission interval
does not have to be at a constant interval (aperiodic) and can
vary through the control of the headend system operator. Id. at
8:1114; 8:3943.
The advantage of the assembly described is that the user is in
control of the service life of the operating key K and of the
moments for inserting the access control page in the locked
magazine. Id. at 18:5255.
[A] generator 22 delivering a numerical signal representing
an operating key K, this key changing randomly at
predetermined intervals. Id. at 7:1012.
For each chargeable service, approximately every five
minutes, a new operating key K is generated at random, by
each distribution centre concerned. Thus, in the course of a
session of a service (one or more hours), several dozen
operating keys may succeed one another. Id. at 8:3943.
These keys have a relatively long service life (from 1 to 12
months), compared with the operating key (which is of the
order of a few minutes). Id. at 8:1114.
As soon as a distribution centre generates a new operating
key K, it calculates, for each current subscribers key in use Ci
for this service, a message Mi by means of an algorithm Mi =
FCi (K), with the keys Ci acting as parameters. Thus, for a
service using the subscription plan described above, there are
22 different messages in force at any one time. The duration of
a message is equal to that of the operating key K, and for a
given service, at any one time, there are as many messages as
there are subscribers keys in use. All the messages Mi in force
together constitute the information for access control
associated with the service being broadcast. This access
control information is obviously not locked up by the
29

Claim 23
Guillou
electronic lock. Id. at 8:4458.
varying pattern of . . . location
The receipt and storage of these messages into pages within
page memory 146 according to different subscriber
subscriptions results in a collection of messages stored across
an access control page. The messages are stored spatially in
different indexed page memory locations as part of the
detection process and before the decryption process. Id. at
8:559:2; 17:3943; 18:2551; claim 1.
In this instance, the messages Mi are grouped in a special
page, known as the access control page, which is updated each
time the operating key is changed. Id. at 8:6063.
However, among these functional pages, a new variety has
been introduced on emission for control purposes: this is the
access control page, whose structure is described hereinbefore.
Moreover, according to the invention, the pages of information
are locked up line by line, apart from the zero line which is
regarded as an integral part of the procedure. The circuit 145
therefore has to be completed in order to take these two new
elements into account. Id. at 19:5563
23(c) controlling
said decryptor to
At the level of processing the functional pages, the circuit 145

has programmes permitting analysis and use of the access
control pages. At the appropriate address in the memory 108 of
the card 106, the circuit locates a valid subscription block from
which it extracts the subscription index. Then, in the access
page, it searches for the line corresponding to this subscription
index (since, as has been seen, the lines are numbered by the
indices). There, it recovers the access block and extracts the
message Mi from it. This message is transmitted to the circuit
110 which calculates the key K using the subscribers key Ci
appearing in the subscription block which has just been located
in the card. Id. at 20:4052.
After Mi is decrypted to obtain a new operating key K, the
generator 26 produces a new Cj in response to the new
30

Claim 23
alter its
decryption pattern
or technique on
the basis of
information
included in said
detected
encrypted digital
data; and
Guillou
operating key K. This Cj is used to decrypt Dj to obtain
unencrypted digital data dj. Mi changes with each new
operating key K placed into service and causes the decoding
circuit 145 and a K-restoring circuit to alter the decryption
pattern or technique of the automatic decryption means 38
(i.e., a discriminator 42 in combination with an OR-exclusivetype logic circuit 46). Id. at Fig. 10; 20:621:14.
See claim chart for limitation 1(d), with respect to decrypting

said first encrypted digital control signal portion and claim
chart for limitation 1(f), with respect to decrypting said
encrypted digital information portion and claim chart for
limitation 1(e), with respect to said decryptor.
23(d) decrypting The encrypted digital information is Dj is decrypted using Cj to
at least a portion obtain unencrypted digital data dj. The particular operating key
of said digital
K in use is the selected decryption pattern or technique based
programming
on said step of detecting. See claim chart for Guillou,
using a selected
limitation 1(f), with respect to decrypting said encrypted
decryption pattern digital information portion of said programming, limitation
or technique
1(g), with respect to presenting said programming, and
based on said step limitation 23(c) with respect to controlling said decryptor.
of detecting in
order to provide a
decrypted output
of programming
to a viewer or
listener.
To the extent it is alleged that Guillou lacks the detecting limitation of
claim 23(b), it would have been obvious to a person having ordinary skill in the art
to vary the service life of the key K (thereby varying the pattern of timing of the
transmission of messages Mi). Ex. 1006 58, 6972. Guillou states that the
system operator controls the service life of the key K; that is, the service life of the
31

key K could be varied by the operator. Ex. 1007 at 18:5255 (The advantage of
the assembly described is that the user is in control of the service life of the
operating key K and of the moments for inserting the access control page in the
locked magazine.). The system operator may vary the service life of the key K
randomly or on an as-needed basis. Ex. 1006 69.
For example, the service life of the operating key could be randomized or
shortened (e.g., to one minute), in order to enhance the strength of the encryption
by making it more difficult for an unauthorized user to decipher due to the
shortened or unpredictable intervals. Ex. 1006 70. The service life of the key
could be changed instantly if the system operator knew that the current key was
compromised. Id. Further, the service life of the key could be lengthened (e.g., to
an hour) if the system operator believed that the encryption scheme was
sufficiently strong. Id. Any variance to the service life of the key K would cause
the receiver station to detect[] said encrypted digital data [messages Mi] in said at
least some of said plurality of signals in accordance with a varying pattern of
timing. Id. 71.
5.
Claim 24
24(pre) A method
for controlling
decryption of
digital television
Claim 24
Guillou
computer programming at a receiver station. Guillou teaches
the use of the disclosed access-control system with both
unidirectional broadcast systems and two-directional
32

Claim 24
or computer
programming at a
receiver station,
said method
comprising the
steps of:
24(a) storing a
procedure for
locating or
identifying a
specific digital
instruct-todecrypt signal in
a plurality of
signal types;
Guillou
interactive systems, including computer-programming
systems. Ex. 1007 at Abstract; Figs. 2, 710; 9:4810:66;
15:4216:17.
It also goes without saying that the disclosed broadcasting
system is used only by way of an example and that the
invention could be applied to other systems without any
difficulty for the man skilled in the art, and notably to the
CEEFAX or ORACLE systems or the VIEWDATA or
PRESTEL systems. Id. at 21:2328.
It can be used in the transmission and display of information
on television receivers for purposes of entertainment,
information or education. The invention applies essentially to a
broadcas[t] system (i.e. unidirectional) by means of which
alphanumerical information organised into pages and
magazines can be put into television lines and to interactive
system (i.e. two-directional) affording access to data bases
(general information, directories, etc.) and to interactive
services (transactions, messages, education) through the
telephone system. Id. at 1:1020.
The disclosed system has a stored procedure for locating or
identifying a specific digital instruct-to-decrypt signal. This
procedure involves decrypting only data octets Dj that are not
control codes (and therefore not encrypted). The decoding
circuit 145 and the automatic decryption means 38 (i.e., a
discriminator 42 in combination with an OR-exclusive-type
logic circuit 46) work together to identify which data octets
need to be decrypted and which can pass through without
decrypting. Id. at Abstract; Figs. 25, 7, 9, 10; 2:503:61;
5:4757; 6:2740; 7:1332; 7:478:4; 8:559:2; 10:927;
10:5115:35; 19:5563; 20:634.
Then, for each octet in the line, the decoder 145 causes the
generation of a decoding octet Cj (c6 = c7 = c8 = 0), and if the
octet Dj received is not a control code (columns 0 and 1),
which is verified by the comparator 42, the decoder combines
it, by OR exclusive, with the decoding octet in the gate 46.
33

Claim 24
Guillou
Id. at 20:3439.
[A]utomatic decryption means 38 comprising: (i) a
discriminator 42 with an input receiving the encrypted octets;
this discriminator is adapted to distinguish, among these coded
octets, those wherein the 7th and 6th binary elements are zero,
this discriminator having two outputs 43 and 44, the first
carrying these octets wherein the 7th and 6th binary elements
are zero, this first output being connected to the display means
20, the second carrying the coded octets Dj wherein the 7th
and/or 6th binary elements are not zero. Id. at 10:4150.
See also discussion below with respect to storing a procedure

for locating or identifying a specific digital instruct-to-decrypt
signal in a plurality of signal types.
The receiver station receives a plurality of signals, which
24(b) receiving
include encrypted digital data and a variety of encrypted
an information
transmission that subscription based (e.g., monthly, yearly) digital control signal
messages Mi. See claim chart for Guillou, limitation 1(a), with
includes a
plurality of signal respect to first encrypted digital control signal portion and
types and at least encrypted digital information portion.
one unit of digital
television or
Guillou also discloses that these signals could constitute at
computer
least one unit of computer programming. See claim chart for
programming;
Guillou, limitation 24(pre), with respect to computer
programming.
The receiving circuit 14 passes the information transmission
24(c) passing at
least some of said that it receives to a video-data separator 142, which is
connected to a selection circuit 143 and a decoding circuit 145.
information
transmission to a The video-data separator 142, selection circuit 143, and
decoding circuit 145 (either alone or in combination) detect
detector;
and extract data octets from the transmitted signal. Some of
these data octets form the encrypted digital control signal
message Mi and others form encrypted digital data octets Dj.
Other data octets form unencrypted (clear) digital data
octets. Id. at Figs. 2, 7, 9; 19:415.
See claim chart for limitation 1(b), with respect to detecting.
34

Claim 24
24(d) detecting
data of said
plurality of signal
types and
transferring said
detected data to a
processor;
24(e) identifying
or locating said
specific digital
instruct-todecrypt signal by
processing said
detected data in
accordance with
said stored
information; and
Guillou
The encrypted digital control signal message Mi, encrypted
digital data octets Dj, and clear digital data octets are detected
by a video-data separator 142, a selection circuit 143, and a
decoding circuit 145 (either alone or in combination). These
components (either alone or in combination) pass Mi and Dj
and the clear octets to a decryptor (either a K-restoring circuit
110 or the automatic decryption means 38). See claim chart
for Guillou, limitation 1(b), with respect to detecting.
See also discussion below with respect to processor.
The data octets Dj that are not control codes (and therefore not
encrypted) are different and distinguishable from octets that
are control codes, which have a 0 in both columns 0 and 1.
The data in columns 0 and 1 of the data octets are digital
instruct-to-decrypt signals that indicate whether the data octet
would be encrypted (and later decrypted) or not; and these are
signals are identified or located by the discriminator to
determine whether to pass the data octet to the OR-exclusive
logic circuit for decryption. Id. at Fig. 10; see claim chart for
Guillou, limitation 24(a) and discussion below with respect to
storing a procedure for locating or identifying a specific
digital instruct-to-decrypt signal in a plurality of signal types
and claim chart for limitation 24(d) and discussion below with
respect to processor.
Id. at 5:4757.
The rules for decryption are analogous to the rules for
encryption; at each new octet received, belonging to an
encrypted line, a new decoding octet is generated. There are
35

Claim 24
Guillou
two possibilities: If the octet received belongs to columns 0
and 1, it is transmitted as it stands to the interpreting circuits;
If the octet received does not belong to columns 0 and 1
(because its 6th and/or 7th binary elements are not zero) it is
combined by an OR-exclusive circuit with the decoding octet
before interpretation is carried out. Id. at 6:2736.
The decryption of data octets Dj using the decoding octets Cj to
24(f) decrypting
at least some of
yield digital information dj. The decryption of Dj is instructed
said unit of digital to occur through the appropriate coding of columns 0 and 1 of
television or
the Dj. See claim chart for Guillou, limitation 1(f), with
computer
respect to decrypting and claim chart for limitation 24(e),
programming on with respect to identifying or locating said specific digital
the basis of said
instruct-to-decrypt signal.
identified or
located specific
digital instruct-todecrypt signal.
With respect to limitation 24(a), Guillou inherently discloses storing a
procedure for locating or identifying a specific digital instruct-to-decrypt signal in
a plurality of signal types because the system has a procedure for locating or
identifying a specific digital instruct-to-decrypt signal, therefore the procedure
must be stored for this functionality to exist. Ex. 1006 58. Specifically, the
decoding circuit 145 and the automatic decryption means 38 (i.e., a discriminator
42 in combination with an OR-exclusive-type logic circuit 46) work together to
identify which data octets Dj need to be decrypted and which data octets can pass
through without decrypting. Id.
36

With respect to the processor in limitation 24(d) and processing in
limitation 24(e), the automatic decryption means 38, particularly the discriminator
42, is a processor that can perform the function of identifying and distinguishing
different signal types (i.e., discriminating or processing) among the data octets that
pass through. Id.
To the extent it is alleged that Guillou lacks the processor limitation of
Claim 24(d) or the processing limitation of Claim 24(e), it would have been
obvious to a person having ordinary skill in the art to replace the discriminator 42
with a processor to perform the function of identifying and distinguishing
between the encrypted and clear digital data octets, thereby performing the step of
Claim 24(e) identifying or locating said specific digital instruct-to-decrypt signal
by processing said detected data in accordance with said stored information. Ex.
1006 7374. This would have been obvious because it was merely a design
tradeoff between signal processing requirements and cost.
For example, the
Krestoring circuit is a processor, because it performs the reverse function of the

messages forming circuit 102, which Guillou explicitly calls a processor. Id.; Ex.
1007 at 16:6317:18 (Calculation of the messages from the subscribers key Ci
and the key K is effected in the emitting centre by the circuit 102 which is
organised round a microprocessor.). Alternatively, it would have been obvious to
37

a person having ordinary skill in the art to consider or refer to the discriminator 42
as a processor or a type of processor. Ex. 1006 7374.
B.
Claim 22 Would Have Been Obvious Over Guillou in View of

Block, Guillou 011, and the Knowledge of a Person Having
Ordinary Skill in the Art.
U.S. Patent No. 4,225,884 (Block) is 102(b) prior art to the 304 patent
because it issued on September 30, 1980. Ex. 1008. Block describes a system for
subscription-television billing and access. Id. at Fig. 1; 2:3557. Fig. 1 shows an
embodiment of Blocks invention.
Id. at Fig. 1. In Block, television programming is scrambled at the central station

in accordance with a scramble-control signal. Id. at 3:3849; Figs. 1, 3. This
scrambled programming, along with a transmitted scramble code (TSC) and a
transmitted program-ID code (TPC), are transmitted to a subscriber station. Id. at
Figs. 13, 3:5061; 5:656:20. At the subscriber station, the received and detected
scramble code and program-ID code are processed and compared to a stored
38

received scramble code (RSC), resulting in the generation of signals that control
the unscrambling of the scrambled programming. Id. at Figs. 1, 4; 5:1932; 6:62
7:26. In addition, Block discloses a subscription-management subsystem, where
the subscriber station and a billing computer can communicate with each other via
a telephone line. Id. at Figs. 1, 4; 7:2746. Data could be transmitted in both
directions, such as sending an updated received scramble code (RSC) from the
billing computer to the subscriber station for storage, or sending stored billing
information (stored program codes (SPC)) from the subscriber station to the billing
computer. Id. at Figs. 1, 4; 7:4768.
U.S. Patent No. 4,352,011 (Guillou 011) is 102(e) prior art regardless of
the alleged priority of the 304 patent because Guillou 011 was filed on January
23, 1980, and issued on September 28, 1982. Ex. 1009. Guillou 011 relates to the
same system described in Guillou (U.S. 4,337,483), but focuses on the subscription
card and subscription-card-charging station, and supplies additional disclosure. Id.
at Abstract; Figs. 2, 4; 6:1341; 8:589:24; claim 1.
As demonstrated below, Guillou in combination with Block, Guillou 011,
and the knowledge of a person having ordinary skill in the art, would have
rendered claim 22 of the 304 patent obvious at the time of invention.4
See Section IX for the motivation to combine these references.
39

1.
Claim 22
Claim 22
Guillou + Block + Guillou 011 + knowledge of one of skill

in the art
22(pre) A method Guillou discloses a method for controlling the decryption of a
mass-medium-program presentation at a receiver station using
of providing
digital-enabling information (subscribers keys Ci) provided to
digital enabling
information to a
the receiver from a first remote source. Ex. 1007 at Abstract;
receiver station
Figs. 7, 9, 10; 8:538; 9:4810:66; 15:4216:17; 16:3062.
from a first
remote source,
Block discloses a subscription-television system that transmits
said digital
scramble codes, program codes, and scrambled television
enabling
programming together to control viewer access. This system
information for
includes a subscription-management subsystem, where the
use at the receiver receiver station can communicate with a central billing
station in
computer in order to receive scramble codes (i.e., digital
decrypting a mass enabling information) for enabling descrambling and to send
medium program billing information. Ex. 1008 at Abstract; Figs. 1, 4, 5; 2:35
presentation, said 68; 4:2036; 5:1946; 6:627:68; 8:19:54; claims 68.
method
comprising the
steps of:
22(a) storing
In Guillou, the subscribers keys Ci are stored at both the
digital enabling
subscription center 100 and the subscription-card-charging
information at
station 112, both of which are remote sources. Ex. 1007 at
said first remote
Figs. 7, 10; 8:538; 15:4650; 16:2638; claim 6.
source;
Subscription center 100
The subscribers keys are stored at the subscription center 100,
which remotely manages the subscription keys and the billing
of subscribers. Id. at Fig. 7; 8:532; 15:4650; 16:2638;
claim 6.
The subscribers keys are generated in the subscription
administration centre 100 which provides the emitting centres
2 and the card-charging stations 112 with lists. Id. at 16:26
29.
See discussion below with respect to storing.
40

Claim 22

in the art
Subscription-card-charging station 112
The subscribers keys are transmitted from the subscription
center 100 to the subscription-card-charging station 112 and
stored there to transfer the subscribers keys to individual
subscriber cards 106. Id. at Figs. 7, 10; 8:2538; 16:2638;
claim 6.
[A]t least one charging station 112 connected to the
subscription administration centre 100, from which it receives
the signals corresponding to the different subscribers keys Ci
generated by this centre; each of these stations is capable of
temporarily receiving subscription holders and recording in
their memories 108 one of the subscribers keys Ci. Id. at
16:1117.
In Block, the disclosed system has digital scramble codes
located at the billing computer 20 that control scrambling and
unscrambling operations. Ex. 1008 at 2:5057; 5:4146;
7:5563; 9:1636; claims 12, 13.
Similarly, the computer 20 may transmit a code to the access
unit 32 commanding it to generate a strobe or write signal STR
in order to transmit new scramble codes RSC through the
access unit to the signal storage device 68. Id. at 7:5559.
In addition, the central station equipment 10 may include a
billing data gathering computer 20. It should however be
understood that the billing data gathering computer 20 may be
located at any convenient central location and need not be
located at the transmitting site. Id. at 3:5661.
41

Claim 22

in the art
Id. at Fig. 2.
During the vertical retrace interval, various equalizing and
synchronization pulses are provided and it is in this interval
that the scrambled and program ID codes are preferably
combined with the transmitted program signal. These codes
are preferably encoded in a digital form as illustrated in FIG. 2
although it should be understood that any well known coding
technique such as the tone burst technique described in U.S.
Pat. No. 3,824,332 may be utilized. Id. at 4:675:7; Fig. 2.
Thus, for example, when the received scramble code RSC is
compared to the stored scramble code SSC and is identified as
an invert signal, the VCS signal causes the program video
unscramble 62 to invert the subsequent frame of video signals.
Similarly, when the received scramble code is compared with
the stored scramble code and is identified as a non-invert
signal, the video signal is passed by the program video
unscrambler 62 in an uninverted form. Id. at 7:1625.
See discussion below with respect to storing.
22(b) receiving at This limitation is rendered obvious by Guillou in view of
Block and Guillou 011 or by Guillou in view of Block,
said first remote
Guillou 011, and the knowledge of a person having ordinary
source a query
from said receiver skill in the art. See discussion below with respect to query.
Ex. 1007 at Figs. 7, 10; 15:6668; 16:1138; 20:617; 20:40
station;
52; claim 6.
42

Claim 22

in the art
In Block, the receiver station can initiate a call to the billing
computer 20, which can then transmit the scramble codes to
the receiver station. Ex. 1008 at Abstract; Figs. 1, 4, 5; 2:35
68; 4:2036; 5:1946; 6:627:68; 8:19:54; claims 68.
In this connection, the computer 20 and access unit 32 may be
connected over the telephone lines through conventional
telephone switching equipment as commanded either from the
access unit 32 or from the computer 20. After the connection is
effected between the computer 20 and the access unit 32,
various data may be transmitted over the telephone lines. Id.
at 7:4046.
Similarly, when the signal storage device 68 is full and can
store no more program codes, the access unit 32 may place a
call to the data gathering computer 20 to transfer billing
information thereto. Id. at 7:3639.
access unit to the signal storage device 68. During normal
operation, then, the signal storage devise may be supplied with
scramble codes for one months programs and at the end of
that month new scramble codes may be supplied for the next
months programming. Id. at 7:5563.
Id. at Fig. 1.
43

Claim 22

in the art
22(c) transmitting With respect to transmitting said digital enabling information
. . . from said first remote source to said receiver station in
said digital
response to said step of receiving said query, this limitation is
enabling
satisfied as discussed above in limitation 22(b) and discussion
information
which is effective below with respect to query.
to enable
With respect to said receiver station storing at least some of
decryption from
said transmitted enabling information, this limitation is
said first remote
rendered obvious by Guillou in view of Block. See discussion
source to said
receiver station in below with respect to storing.
response to said
step of receiving Guillou discloses a subscriber card that stores the subscribers
keys as well as a subscription-card-charging station 112 that
said query, said
stores the subscribers keys. Ex. 1007 at Figs. 7, 10; 8:2838;
receiver station
16:1162.
storing at least
some of said
A subscription block is therefore made up of 168 binary
transmitted
elements, or 21 octets. A block of this kind can easily be
enabling
recorded in a holder of the credit card type which would have
information;
a PROM memory (Programmable Read Only Memory) with a
capacity of 4096 binary elements which can be used for this
purpose. A card of this kind could accumulate up to 24
subscription blocks having the above characteristics. Id. at
16:5562.
[A]t least one charging station 112 connected to the
subscription administration centre 100, from which it receives
the signals corresponding to the different subscribers keys Ci
generated by this centre; each of these stations is capable of
temporarily receiving subscription holders and recording in
their memories 108 one of the subscribers keys Ci. Id. at
16:1117.
In Block, a scramble code is provided by the billing computer
20 in response to the query by the receiver station and is stored
by the receiver station. This scramble code is effective to
enable unscrambling of the scrambled programming. Ex. 1008
44

Claim 22

in the art
at Figs. 15; 2:5057; 3:3849; 3:624:9; 4:205:32; 5:5168;
6:939; 6:627:25.
Id. at Fig. 4.
The received scrambled code is supplied to a scramble code
comparator 66 and the received program code is supplied to a
conventional signal storage device 68 for storage and later
recall by the access unit 32. The scramble code comparator 66
receives a stored scramble code signal SSC from the signal
storage device 68 and generates the video and audio
unscramble control signals VCS and ACS, respectively.
These two signals are supplied to the respective program video
unscrambler 62 and the program audio unscrambler 60 in order
to reconstitute the scrambled video and audio signals to their
original form prior to scrambling by the program signal
scrambler 14 at the central station equipment. Id. at 6:68
7:14.
With respect to which is effective to enable decryption, this
limitation is satisfied as discussed in the claim chart for
Guillou, limitation 1(f).
22(d) transmitting With respect to transmitting . . . to said receiver station an
from a second
encrypted digital mass medium presentation signal, this
remote source to limitation is satisfied as discussed in the claim chart for
45

Claim 22
said receiver
station an
encrypted digital
mass medium
presentation
signal which is
decrypted on the
basis of said
stored at least
some of said
digital enabling
information to
present said mass
medium
programming
presentation.

in the art
Guillou, limitation 1(a), with respect to an encrypted digital
information portion.
With respect to from a second remote source, this limitation
is satisfied as discussed in the claim chart for Guillou,
limitation 11(a). To the extent Guillou by itself is insufficient
to satisfy this limitation, this limitation is rendered obvious by
Guillou in view of Block. See claim chart for Guillou in
combination with Block, claim 11, in Section C below, with
respect to differen[t] sources.
With respect to which is decrypted on the basis of said stored
at least some of said digital enabling information to present
said mass medium programming presentation, this limitation
is satisfied as discussed in the claim chart for Guillou,
limitation 1(f).
See Ex. 1008 at Abstract; Figs. 14; 3:3861; 4:575:3; 5:8
18; 6:920; 6:4043; claims 1, 4, 6, 10, 14.
Limitation 22(a) recites storing digital enabling information at a first

remote source. This storing step is inherently disclosed in Guillou because the
subscription center 100 generates the subscribers keys Ci, and therefore must store
the keys there, at least temporarily. Ex. 1006 75. This storing step is also
inherently disclosed in Block because the billing computer 20 has scramble codes
that are sent to the receiver stations and therefore must store the codes there, at
least temporarily. Id. Moreover, Block inherently discloses that these scramble
codes are digital because Block explicitly teaches that the scramble codes
transmitted via broadcast with the scrambled programming may be digital. Id.; Ex.
46

1008 at 4:685:7; Fig. 2. Thus, the scramble codes that are transmitted via the
telephone line from the billing computer 20 to the receiver station must also be
digital because these are compared to the broadcast scramble codes to enable
unscrambling. Ex. 1006 75.
Limitation 22(b) requires that the remote station receives a query from the
receiver station. It would have been obvious to a person having ordinary skill in
the art to modify Guillou with the teachings of Block to implement a subscriptionmanagement system where the receiver station queries and receives the
subscribers keys via a telephone line from the subscription center 100. Ex. 1006
7578. Specifically, the subscription center 100 of Guillou could be substituted
with the billing computer 20 of Block, and the subscription holder 106 and
memory 108 (i.e., the subscription charge card) of Guillou could be substituted
with the access unit 32 of Block. Id. With this modification, the standalone
subscription-card-charging station 112 of Guillou would not be needed as its
functions would be performed by the billing computer 20 and the access unit 32 of
Block. Id.
The obviousness of this combination is evident from Guillou 011, which
teaches that the subscription-card-charging station 112 sends data such as billing
data upstream to the subscription center 100 and receives the subscribers keys
from the subscription center 100.
Id. In other words, the subscription-card47

charging station of Guillou and Guillou 011 performs the function of uploading
stored billing data to the subscription center 100 and receiving a subscribers key
in returnthis is the same function achieved by the access unit 32 of Block. Id.;
Ex. 1009 at Abstract; Figs. 2, 4; 6:1341; 8:589:24; 9:1319 (A charging station
of this kind is connected to the subscription administration centre, as shown in
FIG. 1: from this centre it receives lists of subscription blocks for sale and the price
list, and in return it supplies recordings of the transactions and the sum of the
charges taken.); claim 1.
To the extent it is alleged that the combination of Guillou, Block, and
Guillou 011 lacks the query limitation, it would have been obvious to a person
having ordinary skill in the art to modify this combination by configuring the
subscription-management subsystem disclosed in Block to automate the manual
call-in (query) process described in Blocks background section. Ex. 1008 at 1:61
66 (Another approach to billing on a per program basis requires the subscriber to
place a telephone call to some central location and request the receipt of a
particular program. The calling subscribers equipment is then enabled and charges
for the program can be recorded and billed to the calling subscriber.). Ex. 1006
7578. Because Block already discloses a system that communicates with a
billing computer to obtain scramble codes, it would have been obvious to modify
the system disclosed in Block to allow the receiver station to initiate a query to the
48

billing computer for a scramble code whenever one is necessary, such as for payper-view programming or at the beginning of a new billing cycle. Id.
Limitation 22(c) requires the receiver station to perform the step of storing
at least some of the transmitted enabling information.
In Guillou, the
subscription-card-charging station 112 stores the subscribers keys that are

transmitted from the subscription center 100; and the subscriber charge card stores
the subscribers keys that it obtained from the subscription-card-charging station
112. Id.; Ex. 1007 at 16:1117; 16:5562.
It would have been obvious to a person having ordinary skill in the art to
modify Guillou with the teachings of Block to implement a subscriptionmanagement system wherein the receiver station stores the subscribers keys that
are received from the first remote source. Ex. 1006 7578. As discussed above
in limitation 22(b), the subscription center 100 of Guillou could be substituted with
the billing computer 20 of Block, and the subscription holder 106 and memory 108
(i.e., the subscription charge card) of Guillou could be substituted with the access
unit 32 of Block. Id. In this configuration, the substituted access unit 32 of Block
performs the limitation of storing at least some of said transmitted enabling
information and the standalone subscription-card-charging station 112 of Guillou
would again not be needed as its functions would be performed by the billing
computer 20 and the access unit 32 of Block. Id.
49

C.
Claims 11 and 16 Would Have Been Obvious Over Guillou in

View of Block and the Knowledge of a Person of Ordinary Skill in
the Art.
As explained below, Guillou alone, or Guillou in combination with the

knowledge of a person having ordinary skill in the art, in combination with Block,
renders obvious claims 11 and 16 of the 304 patent.5
1.
Claim 11
11(a) The method
of claim 1
wherein said
programming and
a signal necessary
for decryption are
received from
difference
sources.
Claim 11
Guillou + Block + knowledge of one of skill in the art
Guillou discloses that the subscribers keys Ci is a signal
necessary for decryption and is received by the subscriber
station from the subscription card 106 and card reader 36, by
way of the subscription-card-charging station 112 and
subscription center 100. Ex. 1007 at Figs. 7, 10; 15:6668;
16:1138; 20:617; 20:4052.
In Block, the computer 20 sends scramble codes via telephone
lines to the access unit 32 of the subscriber station. The
computer 20 can be at a different location from the
broadcasting station. Ex. 1008 at Figs. 1, 4; 4:3236; 7:2668.
access unit to the signal storage device 68. During normal
operation, then, the signal storage devise may be supplied with
scramble codes for one months programs and at the end of
that month new scramble codes may be supplied for the next
Claims 11 and 16 depend from claim 1. Claim 1 is unpatentable for the
reasons discussed in Section A above. See Section IX for discussion on the

reasons to combine these references.
50

Claim 11

months programming. Id. at 7:5563.
In addition, the central station equipment 10 may include a
billing data gathering computer 20. It should however be
understood that the billing data gathering computer 20 may be
located at any convenient central location and need not be
located at the transmitting site. Id. at 3:5661.
See also claim chart for Guillou, limitation 11(a), in Section A
above.
To the extent it is argued that Guillou fails to disclose the limitation

wherein said programming and a signal necessary for decryption are received
from differen[t] sources, it would have been obvious to a person having ordinary
skill in the art to modify Guillou with the subscription-management system of
Block, wherein the subscriber station receives the subscribers keys via a telephone
line from either the subscription-card-charging station 112 or from the subscription
center 100. Ex. 1006 79, 7578. Specifically, the subscription-card-charging
station 112 of Guillou could be substituted with the billing computer 20 of Block,
and the subscription holder 106 and memory 108 (i.e., the subscription charge
card) of Guillou could be substituted with the access unit 32 of Block. Id. With
this modification, the programming would come from the emitting center 2, and a
signal necessary for decryption would come from the billing computer 20, which
is at a different location from the emitting center 2 (i.e., the broadcasting center).
Id.; Ex. 1008 at 3:5661.
51

2.
Claim 16
16(a) The method
as in claim 1, or
14, wherein said
subscriber station
stores information
that evidences
processing said
digital
programming.
Claim 16
Block discloses a system where received program codes RPC
corresponding to programming that has been processed and
unscrambled are stored. These program codes RPC are stored
for transmittal to the billing computer 20 for billing. Ex. 1008
at Abstract; Figs. 1, 4; 2:3557; 3:5061; 4:1046; 5:2632;
6:1 39; 6:557:4; 7:2568; 10:3854; claims 1, 3, 4, 6, 10,
14.
The code detector 64, when enabled by the accept signal
ACC, detects the received scramble code RSC and the
received program code in the video signal. The received
scrambled code is supplied to a scramble code comparator 66
and the received program code is supplied to a conventional
signal storage device 68 for storage and later recall by the
access unit 32. Id. at 6:667:4.
To the extent that it is alleged that Guillou does not expressly teach the
limitation wherein said subscriber station stores information that evidences
processing said digital programming, it would have been obvious to a person
having ordinary skill in the art to combine the subscription-management subsystem
of Block with the Guillou system to achieve a system that performs the function of
stor[ing] information that evidences processing said digital programming
because Block stores program codes for billing purposes. Ex. 1006 79, 7578;
Ex. 1008 at 6:667:4. These program codes evidence processing said digital
programming because they indicate that the programs were unscrambled (or
52

decrypted) and viewed. Ex. 1006 79, 7578; Ex. 1008 at 2:3549; 4:2736;
5:2632; 6:667:4; claims 3, 6, 10.
D.
Claims 1, 16, and 18 are Anticipated by FIPS PUB 81.
FIPS PUB 81 was a document published by the U.S. Department of

Commerce, National Bureau of Standards, on December 2, 1980, and is therefore
prior art to the 304 patent at least under 102(a), regardless of the alleged priority
date for the 304 patent.6 Ex. 1014. FIPS PUB 81 describes modes of operation
using the data encryption standard (DES) set forth earlier in 1977 in FIPS PUB
46, including the cipher block chaining mode, cipher feedback mode, and output
feedback mode. Ex. 1015.
FIPS PUB 81 discloses a method for controlling decryption at a subscriber
station. One particular method is the cipher block chaining mode. Ex. 1014 at 5,
7, 8, 11, 1415. In this mode, the same cipher text is produced whenever the same
plain text is encrypted using the same key and initialization vector. Id. at 14. After
performing an exclusive-or operation with the decrypted cipher block and the
initialization vector to obtain the first decrypted data block, subsequent data blocks
DES Modes of Operation, Federal Information Processing Standards Publication
81), U.S. Dept. of Commerce, Natl Bureau of Standards (Dec. 2, 1980) (FIPS
PUB 81) (Ex. 1014)
53

are decrypted and obtained by performing an exclusive-or operation using newly
decrypted cipher blocks (known as encryption input blocks) and the cipher block
from the previous time period. Id. at 8. Figure 2 illustrates this mode of operation.
Id. at 7 (Fig. 2).

With respect to claim 1, FIPS PUB 81 teaches that the subscriber station (the
decrypt system) receives programming (data) having a first encrypted digital
control signal (C cipher block at time = 2) and an encrypted digital information
portion (C cipher block at time = 1). Id. at 7, 8. This encrypted digital control
signal (C cipher at time = 2) is detected, passed to, and decrypted by the
subscriber stations decryptor (DES decrypt at time = 2), which results in a
decrypted control signal (I encryption input block at time = 2). Id. Then the
encrypted digital information portion (another C cipher, from time = 1), is
54

passed forward to the exclusive-or operator at time = 2. Id. An exclusive-or
operation is then performed using this C cipher and the I encryption input
block at time = 2. Id. This decrypts the encrypted digital information portion
(C cipher) resulting in decrypted information (D data block at time = 2), which
is presented. Id.
Table C1 provides an example of this mode of operation, showing the
encryption and decryption of ASCII code for the phrase Now is the time for all.
Id. at 15. With respect to claim 16, the exclusive-or operator stores, at least
temporarily, the I encryption input block, which evidences that the C cipher
was decrypted (evidencing processing said digital programming). With respect
to claim 18, FIPS PUB 81 discloses that the encrypted and decrypted digital
programming includes computer data. Id. at 1 (The Federal Data Encryption
55

Standard (DES) (FIPS 46) specifies a cryptographic algorithm to be used for the
cryptographic protection of sensitive, but unclassified, computer data.); id. at 11.
Because FIPS PUB 81 discloses each and every limitation of claims 1, 16,
and 18, those claims are anticipated and unpatentable. The claim charts below
provide greater detail in support of this ground.
Claim 1
1(pre) A method for
controlling the decryption
of programming at a
subscriber station, said
method comprising the
steps of:
1(a) receiving
programming, said
programming having a
first encrypted digital
control signal portion and
an encrypted digital
information portion;
1(b) detecting said first
encrypted digital control
signal portion of said
programming;
1(c) passing said first
programming to a
decryptor at said
subscriber station;
1(d) decrypting said first
FIPS PUB 81
Binary data may be cryptographically protected
(encrypted) using devices implementing the algorithm
specified in the Data Encryption Standard (DES)
(FIPS PUB 46) in conjunction with a cryptographic
key. Id. at 4; see id. at 1, 2, 7, 8, 14, 15.
FIPS PUB 81 teaches that the decrypt system
receives data, which comprises a C cipher block at
time = 1 and a C cipher block at time = 2. Id. at 7,
8, 15.
FIPS PUB 81 teaches that the C cipher at time = 2

(encrypted digital control signal) is detected, passed
to, and decrypted by the subscriber stations decryptor
(DES decrypt at time = 2), which results in a I
encryption input block at time = 2, which is a
decrypted control signal. Id. at 7, 8.
Id. at 7, 8. See limitation 1(b) above.
The second cipher text block is then used as the input

block and is processed through the DES in the decrypt
state. Id. at 8; see id. at 7; see also limitation 1(b)
56

Claim 1
programming using said
decryptor at said
subscriber station;
1(e) passing said
encrypted digital
information portion of
said programming to said
decryptor;
1(f) decrypting said
encrypted digital
information portion of
said programming using
said decryptor at said
subscriber station based
on the decrypted control
signal portion; and
1(g) presenting said
programming.
FIPS PUB 81
above.
FIPS PUB 81 teaches that the C cipher from time =
1 (encrypted digital information portion) is passed
forward to the exclusive-or operator at time = 2. Id.
at 7, 8.
FIPS PUB 81 teaches that an exclusive-or operation
is performed using this C cipher from time = 1 and
the I encryption input block at time = 2, and this
decrypts the C cipher from time = 1, resulting in
decrypted information (D data block at time = 2).
Id. at 7, 8.
[A]nd the resulting output block is exclusive-ORed
with the first cipher text block to produce the second
plain text data block. Id. at 8.
FIPS PUB 81 teaches that the decrypted data is
presented. Id. at 7, 8, 15.
Claim 16
16(a) The method as in
claim 1, or 14, wherein
said subscriber station
stores information that
evidences processing said
digital programming.
FIPS PUB 81
FIPS PUB 81 teaches that the exclusive-or operator
stores, at least temporarily, the I encryption input
block, which evidences that the C cipher was
processed and decrypted using the decryptor (DES
decrypt). Id. at 7, 8, 15.
Claim 18
18(a) The method as in
claims 1, or 14, wherein
said digital programming
includes computer data.
FIPS PUB 81
The Federal Data Encryption Standard (DES) (FIPS
46) specifies a cryptographic algorithm to be used for
the cryptographic protection of sensitive, but
unclassified, computer data. Id. at 1; see id. at 11, 15.
57

IX.
OBVIOUSNESS CONSIDERATIONS
A.
Reasons to Combine
A person having ordinary skill in the art would have had a reason to
combine Guillou and Block because they both relate to access-control systems for
broadcast- or cable-television-delivered programming. Ex. 1006 7678. More
specifically, both references relate to different techniques to encrypt/decrypt and
scramble/unscramble signals, embedded digital data, and programming that
enhance the convenience and security of the two systems.
Id.
A person of
ordinary skill in the art would have considered competitive designs for television
access-control systems and would have borrowed features from competitive
designs that they thought were useful, more efficient, or less costly. Id. Although
the teachings of Guillou and Block have some differences, the underlying accesscontrol technology and principles are identical.
Id.
As a result, various
components of the two references are compatible with and can be easily integrated
into the system of the other. Id.
Notably, the billing computer 20 and the access unit 32 of Block could be
considered a subscription-management subsystem that could be integrated into
other access-control program-distribution systems without difficulty. Ex. 1006
77.
In the same way, the subscription-management subsystem of Guillou
(subscription center 100, subscription-card-charging station 112, and subscription

58

holder 106 and memory 108 (i.e., the subscription charge card)) could be replaced
by another subscription-management system (such as the one in Block)
predictably, without much difficulty, and without altering the other portions of the
overall system. Id. A person of ordinary skill would have been motivated to make
this modification because it would automate billing and access, providing
customers the convenience of not having to go to a subscription-card-charging
station to pay for and recharge a subscription card. Id.
A person having ordinary skill in the art also would have had reason to
combine Guillou 011 with both Guillou and Block because Guillou 011 describes
the same system disclosed in Guillou, albeit in greater detail with respect to the
subscription-card-charging station and the subscription card. Ex. 1006 78. Both
Guillou 011 and Guillou have their sole inventor listed as Louis C. Guillou, both
were filed in January 1980, and both are assigned to the same entity. Id. Further,
Guillou 011 shares common figures and significant portions of the specification
with Guillou. Id. Because of these similarities, Guillou 011 and Guillou should
be considered a single reference for purposes of obviousness. Id.
B.
Secondary Considerations Fail to Overcome the Strong Evidence

of Obviousness.
PMC may attempt to present alleged secondary considerations of

nonobviousness. Although secondary considerations should be considered, they do
59

not control the obviousness conclusion. Newell Cos., Inc. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988). In cases where a strong prima facie obviousness
showing exists, the Federal Circuit has held that even relevant secondary
considerations supported by substantial evidence may be inadequate to overcome
a final conclusion . . . [of] obvious[ness]. Leapfrog Enters. Inc. v. FisherPrice,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Unified is unaware of any evidence that PMC might offer that would support
non-obviousness. Unified reserves the right to supplement its positions regarding
alleged secondary considerations based on PMCs potential arguments of
purported non-obviousness and any alleged secondary considerations.
X.
CONCLUSION
Petitioner respectfully submits that this petition has demonstrated a
reasonable likelihood that claims 1, 11, 16, 18, and 2224 of the 304 patent are
unpatentable in view of the prior art. Thus, Unified requests that the Board grant
inter partes review for each of the proposed grounds for rejection.
Petitioner authorizes the Patent and Trademark Office to charge any required
fees to Deposit Account No. 15-0030, including the fee as set forth in 37 C.F.R.
42.15(a) and any excess claim fees.
60

Respectfully submitted,
OBLON SPIVAK
Dated: December 31, 2014
Customer Number
22850
/Michael L. Kiklis/
Michael L. Kiklis (Reg. No. 38,939)
Attorney for UNIFIED PATENTS INC.
Tel: (703) 413-3000

Fax: (703) 413 -2220
(OSMMN 07/09)
61

CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105(b), the undersigned certifies
service of a copy of this Petition for Inter Partes Review and supporting materials
on the Patent Owner by USPS Express Mail at the correspondence address of
record for the 304 patent:
Goodwin Procter LLP
901 New York Avenue, N.W.
Washington, D.C. 20001
Courtesy copies of the foregoing Petition for Inter Partes Review and supporting
materials have also been served via USPS Express Mail on Patent Owners counsel
in the co-pending litigation:
Brian E. Farnan
Farnan LLP
919 North Market Street
12th Floor
Wilmington, DE 19801
Dated: December 31, 2014
By:
62
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939

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Unified v.

Unified v. Personalized Media

MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ........................1

Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) ............................ 1

Related Matters Under 37 C.F.R. 42.8(b)(2) ..................................... 1

Lead and Back-Up Counsel................................................................... 2

Service Information Under 37 C.F.R. 42.8(b)(4) ............................... 2

Grounds for Standing Under 37 C.F.R. 42.104(a) ............................. 3

OVERVIEW OF THE 304 PATENT ............................................................4

STATEMENT OF PRECISE RELIEF REQUESTED .................................10

LEVEL OF ORDINARY SKILL IN THE ART ...........................................10

VII. CLAIM CONSTRUCTION ..........................................................................11

Digital Programming/Mass Medium Presentation

Said Decryptor ................................................................................. 12

VIII. SPECIFIC PROPOSED GROUNDS FOR REJECTION .............................13

Unified v. Personalized Media

Claim 22 Would Have Been Obvious Over Guillou in View of

Claims 11 and 16 Would Have Been Obvious Over Guillou in

Claims 1, 16, and 18 are Anticipated by FIPS PUB 81. ..................... 53

OBVIOUSNESS CONSIDERATIONS ........................................................58

Reasons to Combine ............................................................................ 58

Secondary Considerations Fail to Overcome the Strong

Unified v. Personalized Media

Unified v. Personalized Media

U.S. Patent No. 4,694,490 (the 490 patent)

U.S. Patent No. 4,965,825 (the 825 patent)

Prosecution File History of U.S. Patent No. 7,769,170

U.S. Patent No. 7,801,304

Prosecution File History of U.S. Patent No. 7,801,304

Declaration of Anthony J. Wechselberger in Support of Petition for

U.S. Patent No. 4,337,483 (Guillou)

U.S. Patent No. 4,225,884 (Block)

U.S. Patent No. 4,352,011 (Guillou 011)

International Patent Application No. WO 80/01636 (Guillou PCT)

Declaration of Annemarie Mattheyse in Support of Petition for Inter

Curriculum vitae of Anthony J. Wechselberger

List of publications by Anthony J. Wechselberger

DES Modes of Operation, Federal Information Processing Standards

Data Encryption Standard, Federal Information Processing Standards

U.S. Patent No. 4,172,213 (Barnes)

U.S. Patent No. 4,182,933 (Rosenblum)

Unified Patents Inc.s Voluntary Interrogatory Responses

Unified v. Personalized Media

MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)

Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the

Related Matters Under 37 C.F.R. 42.8(b)(2)

Unified v. Personalized Media

Lead and Back-Up Counsel

Unified provides the following designation of counsel, all of whom are

Michael L. Kiklis (Reg. No. 38,939)

Scott A. McKeown (Reg. No. 42,866)

Service Information Under 37 C.F.R. 42.8(b)(4)

Unified v. Personalized Media

Grounds for Standing Under 37 C.F.R. 42.104(a)

22-column specification. Ex. 1001. In 1987, they filed a continuation-in-part that

Right before the

Unified v. Personalized Media

OVERVIEW OF THE 304 PATENT

Unified v. Personalized Media

Unified v. Personalized Media

Claim 22 describes a method for transmitting decryption

information to a receiver station in response to a query and using that information

Unified v. Personalized Media