Case: 18-1936 Document: 60 Page: 1 Filed: 03/13/2020
United States Court of Appeals for the Federal Circuit ______________________
PERSONALIZED MEDIA COMMUNICATIONS, LLC, Appellant
v.
APPLE INC., Appellee ______________________
2018-1936 ______________________
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2016- 00755. ______________________
Decided: March 13, 2020 ______________________
WILLIAM M. JAY, Goodwin Procter LLP, Washington, DC, argued for appellant. Also represented by CE LI, STEPHEN SCHREINER; DOUGLAS J. KLINE, TODD MARABELLA, Boston, MA.
MARCUS EDWARD SERNEL, Kirkland & Ellis LLP, Chi- cago, IL, argued for appellee. Also represented by JOEL ROBERT MERKIN, MEREDITH ZINANNI; GREG AROVAS, ALAN RABINOWITZ, New York, NY. ______________________
Before REYNA, TARANTO, and STOLL, Circuit Judges. Case: 18-1936 Document: 60 Page: 2 Filed: 03/13/2020
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STOLL, Circuit Judge. Personalized Media Communications, LLC (PMC) ap- peals from the final written decision of the Patent Trial and Appeal Board holding certain claims of U.S. Patent No. 8,191,091 unpatentable on anticipation and obvious- ness grounds. PMC specifically challenges certain claim constructions underpinning the Board’s anticipation and obviousness determinations. Because we agree that the Board erred in construing one of the claim terms at issue, we reverse the Board’s decision as to the applicable claims. We affirm the Board’s decision as to the remaining claims. BACKGROUND I The ’091 patent is directed to methods for enhancing broadcast communications with user-specific data by em- bedding digital signals in those broadcast communications. The specification discloses a number of embodiments that include analog broadcast signals with embedded digital signals. Claim 13 of the ’091 patent is illustrative: 13. A method of decrypting programming at a re- ceiver station, said method comprising the steps of: receiving an encrypted digital information trans- mission including encrypted information; detecting in said encrypted digital information transmission the presence of an instruct-to-enable signal; passing said instruct-to-enable signal to a proces- sor; determining a fashion in which said receiver sta- tion locates a first decryption key by processing said instruct-to-enable signal; Case: 18-1936 Document: 60 Page: 3 Filed: 03/13/2020
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locating said first decryption key based on said step of determining; decrypting said encrypted information using said first decryption key; and outputting said programming based on said step of decrypting. ’091 patent col. 285 l. 61–col. 286 l. 9 (emphases added to disputed claim terms). Independent claim 20 also recites “an encrypted digital information transmission including encrypted infor- mation.” Id. at col. 286 ll. 29–47. Independent claim 26 re- cites “an information transmission including encrypted information,” which lacks the “encrypted digital” modifier. Id. at col. 286 l. 63–col. 287 l. 9. The ’091 patent issued from one of several hundred continuation applications filed shortly before the GATT rules impacting patent expiration dates went into effect. Accordingly, the ’091 patent has priority to at least 1987, yet remains unexpired. II In March 2016, Apple Inc. filed a petition requesting inter partes review of claims 13–16, 18, 20, 21, 23, 24, 26, 27, and 30 of the ’091 patent. The Board instituted an IPR of all the challenged claims in September 2016. Following an oral hearing in June 2017, the Board issued a final writ- ten decision holding the challenged claims anticipated and obvious. See generally Apple Inc. v. Personalized Media Commc’ns, LLC, No. IPR2016-00755, 2017 WL 4175018 (P.T.A.B. Sept. 19, 2017) (Decision). The Board’s anticipation and obviousness determina- tions were premised on its construction of various claim terms. The primary prior art references asserted by Apple undisputedly disclosed mixed analog and digital infor- mation transmissions as opposed to information Case: 18-1936 Document: 60 Page: 4 Filed: 03/13/2020
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transmissions that were entirely digital. PMC argued that the broadest reasonable interpretation of the claim phrase “an encrypted digital information transmission including encrypted information” must be limited to entirely digital transmissions—i.e., “an information transmission carrying entirely digital content at least a portion of which is en- crypted.” Decision, 2017 WL 4175018, at *3 (quoting J.A. 468). Apple disagreed with PMC’s construction, con- tending that the broadest reasonable interpretation is not so limited, and may also include transmissions with infor- mation that is not encrypted or digital—i.e., “an infor- mation transmission that is partially or entirely digital, at least a portion of which is encrypted.” Id. (quoting J.A. 192). After considering the claim language, specification, and prosecution history of the ’091 patent and related pa- tents, the Board agreed with Apple: [A]n “encrypted digital information transmission including encrypted information” includes at least some encrypted digital information, and does not preclude, with that transmission, non-encrypted information or scrambled analog information. In other words, the “transmission” requires some en- crypted digital information, but does not preclude other information such as non-encrypted infor- mation or analog information, and “encrypted in- formation” does not preclude scrambled analog information. Id. at *9 (internal citation omitted). In doing so, the Board specifically found that there was no plain and ordinary meaning of “encrypting” at the time of the invention, as the term was used somewhat interchangeably with the analog process of “scrambling” through at least 1987. Id. at *14. The Board also denied PMC’s request for rehearing, which challenged the Board’s claim construction based on three statements in the prosecution history. See generally Case: 18-1936 Document: 60 Page: 5 Filed: 03/13/2020
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Apple Inc. v. Personalized Media Commc’ns, LLC, No. IPR2016-00755, 2018 WL 1224738 (P.T.A.B. Mar. 6, 2018) (Rehearing Decision). Of particular relevance here, the Board rejected PMC’s reliance on the prosecution his- tory because “the prosecution history presents a murky pic- ture as opposed to a clear waiver.” Id. at *11 (first citing Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002); then citing Ath- letic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580 (Fed. Cir. 1996); and then citing Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1090 (Fed. Cir. 2003)). PMC appeals the Board’s decisions. We have jurisdic- tion under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION On appeal, PMC challenges the Board’s construction of “an encrypted digital information transmission including encrypted information.” 1 We review de novo the Board’s ultimate claim constructions and any supporting determi- nations based on intrinsic evidence. Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir. 2018). We review any subsidiary factual findings involving extrinsic evidence for substantial evidence. Id. at 1362.
1 PMC’s challenge is more generally directed to the “encryption/decryption terms” of the challenged claims, a group that includes this phrase. See Appellant’s Br. 27–50. We focus on this phrase because it is dispositive for the challenged claims. PMC also challenges the Board’s con- struction of the claim terms “locates” and “locating,” which appear only in claim 13 and its dependent claims. See id. at 50–55. Because we reverse the Board’s determination for claim 13 and its dependent claims based on the Board’s erroneous construction of “an encrypted digital information transmission,” we do not reach this issue. Case: 18-1936 Document: 60 Page: 6 Filed: 03/13/2020
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I “The task of claim construction requires us to examine all the relevant sources of meaning in the patent record with great care, the better to guarantee that we determine the claim’s true meaning.” Athletic Alts., 73 F.3d at 1578. “When construing claim terms, we first look to, and primar- ily rely on, the intrinsic evidence, including the claims themselves, the specification, and the prosecution history of the patent, which is usually dispositive.” Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); then citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We consider these various sources of meaning “[b]ecause the meaning of a claim term as under- stood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idi- osyncratically.” Phillips, 415 F.3d at 1314. The prosecution history, in particular, “may be critical in interpreting disputed claim terms because it ‘contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representa- tions made by the applicant regarding the scope of the claims.’” Sunovion, 731 F.3d at 1276 (quoting Vitronics, 90 F.3d at 1582). Accordingly, even where “prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366 (Fed. Cir. 2015). For example, an applicant’s repeated and consistent remarks during prosecution can define a claim term by demonstrating how the inventor understood the invention. Sunovion, 731 F.3d at 1277. Similarly, an ap- plicant’s amendment accompanied by explanatory remarks can define a claim term by demonstrating what the appli- cant meant by the amendment. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977–78 (Fed. Cir. 2014). Case: 18-1936 Document: 60 Page: 7 Filed: 03/13/2020
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The broadest reasonable interpretation standard ap- plies in this IPR proceeding. 2 Thus, the Board’s interpre- tation must be reasonable in light of the specification, prosecution history, and the understanding of one skilled in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). The broadest reasonable interpretation must also take into account “the context of the entire patent.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58 (Fed. Cir. 2007) (applying Phillips “best practices” to claim construction under broadest reasonable interpretation standard). II With these principles in mind, we turn to the broadest reasonable interpretation of “an encrypted digital infor- mation transmission including encrypted information.” As framed by the parties, the issue is whether the broadest reasonable interpretation of this term is limited to digital information or can also include analog information. A We begin our analysis with the claim language itself. Independent claims 13 and 20 recite “receiving an
2 Per recent regulation, the Board applies the Phil- lips claim construction standard to IPR petitions filed on or after November 13, 2018. See Changes to the Claim Con- struction Standard for Interpreting Claims in Trial Pro- ceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b)). Because Apple filed its IPR petition before November 13, 2018, we apply the broadest reasonable in- terpretation standard. Case: 18-1936 Document: 60 Page: 8 Filed: 03/13/2020
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encrypted digital information transmission including en- crypted information.” ’091 patent col. 285 l. 61–col. 286 l. 9, col. 286 ll. 29–47. The claims use the adjective “digi- tal” to describe the “information transmission,” thus sup- porting the view that the information is, in fact, digital. On the other hand, the claims do not say “entirely digital.” Moreover, the claims do not recite just “an encrypted digi- tal information transmission”; rather, they state that the information transmission “includ[es] encrypted infor- mation.” This “including encrypted information” clause suggests that the adjective “encrypted” does not limit the information transmission to just encrypted information and, by the same logic, that “digital” does not limit the in- formation transmission to just digital information. Indeed, the Board interpreted the claims to allow for some non-digital information based on the claims’ use of the “including encrypted information” clause. The Board reasoned that PMC’s interpretation should be disfavored because it renders superfluous the phrase “including en- crypted information.” PMC insists that the “digital” modi- fier constrains the scope of the claim term to digital information only, and that the “including encrypted infor- mation” language cannot add back in what is excluded by the word “digital.” PMC further asserts that the phrase “including encrypted information” is not surplusage be- cause it specifies that the transmission does not have to be entirely encrypted—even as it must be entirely digital. See Oral Arg. at 3:32–3:58, available at http://oralargu- ments.cafc.uscourts.gov/default.aspx?fl=2018-1936.mp3. While we agree with PMC that this is “not the most artful way” to achieve such an effect, id. at 6:44–7:26, we con- clude that the claim language neither precludes PMC’s Case: 18-1936 Document: 60 Page: 9 Filed: 03/13/2020
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interpretation, nor does it compel the Board’s interpreta- tion. 3 The Board also reasoned that “encrypted information” must accommodate analog signals based on the presence of “programming” in the independent claims, along with cer- tain dependent claims that further specify that encrypted information includes “television programming.” See, e.g., ’091 patent col. 285 l. 61–col. 286 l. 9 (independent claim 13 reciting “[a] method of decrypting programming” and “outputting said programming based on said step of decrypting”), col. 286 ll. 23–24 (dependent claim 18 recit- ing “said encrypted information includes television pro- gramming”). In support of its interpretation, the Board pointed to the specification’s express definition of “pro- gramming,” which “refers to everything that is transmitted electronically to entertain, instruct or inform, including tel- evision, radio, broadcast print, and computer programming [as] well as combined medium programming.” Decision, 2017 WL 4175018, at *2 (quoting ’091 patent col. 6 ll. 31– 34). According to the Board, “everything that is transmit- ted electronically” must include “conventional analog tele- vision signals.” Id. at *11. Although we agree with the Board that the specifica- tion’s broad definition of “programming” could encompass analog signals, we do not agree that it necessarily requires them. Instead, the definition is largely agnostic to the par- ticular technology employed. In other words, that “pro- gramming” can encompass many things does not mean
3 Unfortunately, the ordinary meaning of “en- crypted” does not impart a more precise understanding of the claim limitation. As the Board found, the meaning of “encryption”—and particularly whether it applied to ana- log or digital data—was “in flux” in the 1980s. Decision, 2017 WL 4175018, at *14. Neither party challenges this finding on appeal. Case: 18-1936 Document: 60 Page: 10 Filed: 03/13/2020
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that “decrypting” or “encrypted information” encompasses many things. The specification’s definition of “program- ming” focuses on the types of audiovisual material trans- mitted, not the means of transmittal. Indeed, the definition only requires that the material be transmitted electronically. We therefore do not agree that the specifi- cation’s definition of “programming” compels that “en- crypted information,” as used in the disputed claim term, must include analog signals. But even if we assume that “programming” necessarily includes analog signals, PMC’s interpretation would still remain plausible. For the same reasons discussed above, the “digital” modifier for “trans- mission” could still serve as a limit on the scope of the claim such that the dependent claims cover only all-digital trans- missions of television programming. In support of its interpretation, the Board also refer- enced claim language from a related patent, “wherein the at least one encrypted digital information transmission is unaccompanied by any non-digital information transmis- sion,” as evidence that PMC knew how to exclude analog signals from the claimed transmissions when it wanted to. Decision, 2017 WL 4175018, at *5 (emphasis modified) (quoting U.S. Patent No. 8,559,635 col. 288 ll. 13–16). Alt- hough we agree that language from related patent claims can be relevant, this particular evidence is counterbal- anced by other claims of the ’091 patent itself. Claim 26 distinctly recites “an information transmission including encrypted information,” without the “digital” modifier. ’091 patent col. 286 l. 63–col. 287 l. 9. Before the Board and this court, PMC conceded that claim 26 covers mixed digital and analog transmissions. Decision, 2017 WL 4175018, at *4 (noting PMC’s argument that “[t]hose mixed analog/digital embodiments support the broader ‘infor- mation transmission’ (claim 26) instead” (quoting J.A. 472)); see also Oral Arg. at 34:23–34:55. PMC’s con- cession is consistent with an interpretation of the claims in Case: 18-1936 Document: 60 Page: 11 Filed: 03/13/2020
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which “digital” is used to specify transmissions that are all- digital. In view of the plain claim language and the parties’ ar- guments, we cannot say that the Board’s interpretation of the claim language is unreasonable. But we cannot say that the claim language is decisive either. Rather, both proposed constructions are equally plausible in view of the claim language. B We turn next to the specification. As the Board cor- rectly points out, the specification of the ’091 patent does not expressly define the phrase “encrypted digital infor- mation transmission.” The Board also correctly notes that the specification contemplates and discloses a number of mixed analog and digital embodiments consistent with the Board’s interpretation. In support of its interpretation, PMC points to two “def- initional passages” from the specification that, in its view, distinguish the digital processes of “encryption” and “de- cryption” from the analog processes of “scrambling” and “descrambling.” Appellant’s Br. 24; see also id. at 30–35. The first passage discusses prior art: Various scrambling means are well known in the art for scrambling, usually the video portion of an- alogue television transmissions in such a fashion that only subscriber stations with appropriate de- scrambling means have capacity to tune suitably to the television transmissions and display the trans- mitted television image information. Encryp- tion/decryption means and methods, well known in the art, can regulate the reception and use of, for example, digital video and audio television trans- missions, digital audio radio and phonograph transmissions, digital broadcast print transmis- sion, and digital data communications. Case: 18-1936 Document: 60 Page: 12 Filed: 03/13/2020
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’091 patent col. 143 ll. 20–30 (emphases added). The sec- ond passage cited by PMC discusses decryption in the con- text of the invention: Decryptors, 107, 224 and 231, are conventional de- cryptors, well known in the art, with capacity for receiving encrypted digital information, decrypting said information by means of a selected cipher al- gorithm and a selected cipher key, and outputting the decrypted information. Id. at col. 147 ll. 21–26 (describing Fig. 4) (emphasis added). While these passages are consistent with PMC’s inter- pretation of the disputed claim term as being entirely digi- tal, they fall short of limiting encryption and decryption to all-digital processes. They are not definitional; instead, they are merely illustrations that use open-ended, permis- sive phrases such as “usually,” “for example,” and “with ca- pacity for.” And when considered in the context of the more than 280 columns of text in the specification of the ’091 pa- tent, these two passages fall far short of defining the rele- vant terms through repeated and consistent use. The specification discloses an Example #7, the “Wall Street Week” embodiment, which PMC identifies as the ba- sis for the claims of the ’091 patent. See Appellant’s Br. 16–21; see also ’091 patent col. 148 l. 5–col. 160 l. 27 (Example #7). The specification explains that the Wall Street Week transmission consists of “digital video” and “digital audio.” ’091 patent col. 148 ll. 13–16; see also id. at col. 153 ll. 40–47 (“said information being . . . encrypted digital video”). In support of its interpretation, the Board identified a different passage of the specification that ex- pressly states that the “Wall Street Week” embodiment can include analog signals: It is obvious to one of ordinary skill in the art that the foregoing is presented by way of example only Case: 18-1936 Document: 60 Page: 13 Filed: 03/13/2020
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and that the invention is not to be unduly restricted thereby since modifications may be made in the structure of the various parts without functionally departing from the spirit of the invention. . . . And for example, the “Wall Street Week” transmission may be of conventional analog television, and the decryptors, 107, 224, and 231, may be conventional descramblers, well, known [sic] in the art, that de- scramble analog television transmissions and are actuated by receiving digital key information. Id. at col. 159 ll. 46–61 (emphasis added). According to the Board, the specification expressly discloses that the de- cryptors from Example #7 may be “descramblers” used for analog television. PMC responds that this passage merely describes modifications to Example #7, not the scope of Ex- ample #7 itself. We find that this passage is sufficient to demonstrate that the Board’s construction is plausible in view of the specification, which expressly contemplates that mixed digital and analog systems are within the “spirit of the in- vention” and the “Wall Street Week” embodiment. Id. But we do not find this passage decisive. Embodiments de- scribed in a specification can certainly inform the meaning of a disputed claim term, but “a particular embodiment ap- pearing in the written description may not be read into a claim when the claim language is broader than the embod- iment.” Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364–65 (Fed. Cir. 2003) (citing Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048 (Fed. Cir. 1994)). So too if the claim language is narrower than the embodiment. At bottom, the challenged claims are not nec- essarily limited by, or coextensive with, Example #7—re- gardless of whether Example #7 includes or excludes analog signals. Case: 18-1936 Document: 60 Page: 14 Filed: 03/13/2020
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Thus, we conclude that the evidence from the specifica- tion also fails to resolve the scope of the disputed claim term. C We next turn to the prosecution history for guidance. PMC points to three statements in the prosecution history that, in PMC’s view, limit the scope of the claims to all- digital transmissions. For the reasons that follow, we agree with PMC, and accordingly, we adopt PMC’s con- struction of “encrypted digital information transmission.” As originally drafted, none of the original claims in- cluded the “encrypted digital” language. Instead, they re- cited “an information transmission including encrypted information,” the same phrase included in issued claim 26. See, e.g., J.A. 2242–43 (claims 13 and 20 then numbered as pending claims 45 and 52, respectively). When the appli- cant first presented the claims at issue to the examiner, the applicant expressly relied on a prior decision of the Board to distinguish the newly presented claims from the prior art of record. That prior art included both Gilhousen 4 and Mason, 5 the two primary prior art references asserted by Apple in the IPR proceedings on appeal. The applicant ex- plained: Each of the [newly presented] claims is patentable in light of the prior art. . . . [The prior art refer- ences before the examiner] disclose the use of en- coded control signals or other data to control the unscrambling of an analog video signal. The claims of this amendment, however, claim material relat- ing to the encryption and decryption of signals. . . . The Board of Patent Appeals and Interferences de- cided in Ex parte Personalized Media
4 U.S. Patent No. 4,613,901. 5 U.S. Patent No. 4,736,422. Case: 18-1936 Document: 60 Page: 15 Filed: 03/13/2020
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Communications, LLC . . . that encryption requires a digital signal. Each of the claims of this amend- ment involves the use of digital signals through ref- erence to “decryption” and “encryption.” “Encryption and decryption,” the Board goes on to say, “are not broad enough to read on scrambling and unscrambling.” Therefore, because [the prior art references] are directed to unscrambling of an- alog signals, none teach or suggest a method of con- trolling the decryption of digital information as is presented in the claims of this amendment. J.A. 2245–46 (quoting Ex parte Personalized Media Commc’ns, LLC, No. 2008-4228, 2008 WL 5373184, at *27 (B.P.A.I. Dec. 19, 2008)). The examiner rejected the newly presented claims as anticipated by Mason. In response, the applicant reiter- ated its reliance on the Board’s prior decision distinguish- ing encryption and decryption from scrambling and unscrambling. The applicant then distinguished Mason on the following basis: Although Mason uses the terms “encrypting” and “scrambling” interchangeably, the invention’s scope is limited to an analog television system. Ma- son characterizes the invention as a Direct Broad- cast Satellite (“DBS”) system. DBS systems were originally designed only to accommodate analog transmissions. Mason does not contemplate digital transmissions, therefore it does not address en- cryption. Its scope is limited to scrambling and un- scrambling. Mason does not anticipate claims 45– 50 and 52–56. J.A. 2291 (internal citations omitted). The examiner was not persuaded. Facing a final rejec- tion based on Mason, the applicant amended the claims to include the modifier “encrypted digital” such that they Case: 18-1936 Document: 60 Page: 16 Filed: 03/13/2020
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recited “an encrypted digital information transmission in- cluding encrypted information”—i.e., the claim term at is- sue on appeal. In its accompanying remarks, the applicant once again repeated its reliance on the Board’s prior deci- sion distinguishing encryption and decryption from scram- bling and unscrambling. The applicant further explained: Applicants’ [sic] had argued in their Amendment After Final Rejection that although Mason uses the terms “encrypting” and “scrambling” interchange- ably, it could not teach encryption because it only disclosed an analog signal transmission. . . . With- out abandoning their previous argument, Appli- cants acknowledge that it can be argued that Mason teaches encrypted elements as part of its analog information transmission. But it does not teach the encryption of an entire digital signal transmission. For the sake of advancing prosecu- tion, Applicants amend independent claims 45 and 52 to clarify that the information transmission re- ceived is an encrypted digital information trans- mission. . . . This amendment in no way affects Applicants’ position that encryption requires a dig- ital signal. Applicants amend the claims to provide clarification as an earnest attempt to advance the prosecution of the application. J.A. 2312–13 (emphasis added). The Board rejected this evidence because, in its view, PMC’s statements during prosecution did not constitute a clear and unmistakable surrender sufficient to rise to the level of disclaimer. See Decision, 2017 WL 4175018, at *16–*17; Rehearing Decision, 2018 WL 1224738, at *5– *11. According to the Board, PMC’s arguments to the ex- aminer seeking to distinguish Mason did not “clearly disa- vow mixed analog and digital information transmissions.” Decision, 2017 WL 4175018, at *16. Instead, PMC “ambig- uously quotes statements from a reexamination Board Case: 18-1936 Document: 60 Page: 17 Filed: 03/13/2020
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decision for a related patent without adopting those state- ments as its own.” Rehearing Decision, 2018 WL 1224738, at *6. Because “the prosecution history presents a murky picture as opposed to a clear waiver,” the Board reasoned that it should be discounted for the purpose of claim con- struction. Id. at *11 (first citing Inverness, 309 F.3d at 1380–82; then citing Athletic Alts., 73 F.3d at 1580; and then citing Rambus, 318 F.3d at 1090). We disagree with the Board’s legal analysis and con- clusion. Even where “prosecution history statements do not rise to the level of unmistakable disavowal, they do in- form the claim construction.” Shire, 787 F.3d at 1366. An applicant’s repeated and consistent remarks during prose- cution can define a claim term—especially where, as here, there is “no plain or ordinary meaning to the claim term” and the specification provides no clear interpretation. Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s amendment accompanied by explanatory remarks can de- fine a claim term where, as here, the claim language and specification fail to provide meaningful guidance. Tempo Lighting, 742 F.3d at 977–78. Thus, the Board erred by effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order to inform the mean- ing of the disputed claim term. Assuming without deciding that PMC’s statements and amendments were inadequate to give rise to a disclaimer, we still find that the prosecu- tion history provides persuasive evidence that informs the meaning of the disputed claim phrase and addresses an ambiguity otherwise left unresolved by the claims and specification. During prosecution, the applicant repeatedly and con- sistently voiced its position that encryption and decryption require a digital process in the context of the ’091 patent. The applicant never abandoned that position. Indeed, the applicant amended the claims—giving rise to the claim term at issue on appeal—only to clarify its position that “encryption requires a digital signal.” J.A. 2312. And to Case: 18-1936 Document: 60 Page: 18 Filed: 03/13/2020
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the extent that the applicant’s earlier prosecution state- ments were ambiguous regarding whether the entire signal must be digital, the applicant’s remarks accompanying the amendment made its position clear. The applicant as- serted that the amended claims should be allowed because the prior art “does not teach the encryption of an entire dig- ital signal transmission.” Id. (emphasis added). Accord- ingly, we conclude that the applicant’s repeated and consistent statements during prosecution, along with its amendment to the same effect, are decisive as to the mean- ing of the disputed claim term—even if those statements do not rise to the level of a disclaimer. See Shire, 787 F.3d at 1366; Tempo Lighting, 742 F.3d at 977–78; Sunovion, 731 F.3d at 1276–77. D The Board’s determination that claims 13–16, 18, 20, 21, 23, and 24 of the ’091 patent are unpatentable was predicated on its determination that “an encrypted digital information transmission including encrypted infor- mation” includes mixed digital and analog signals. All the grounds of unpatentability for these claims rely on prior art that uses mixed analog and digital signals. Because we find that the disputed claim term is limited to all-digital signals, we reverse the Board’s unpatentability determina- tion for those claims. Claims 26, 27, and 30 do not include the disputed claim term and instead recite “an information transmission in- cluding encrypted information.” Because the prosecution history statements and amendments that we found deci- sive to the interpretation of “encrypted digital information transmission” do not apply to claims 26, 27, and 30, and because PMC conceded to the Board and this court that these claims include mixed digital and analog signals within their scope, we affirm the Board’s unpatentability determination for these claims. Case: 18-1936 Document: 60 Page: 19 Filed: 03/13/2020
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CONCLUSION We have considered the parties’ other arguments, and we do not find them persuasive. For the foregoing reasons, we reverse the Board’s final written decision invalidating claims 13–16, 18, 20, 21, 23, and 24 of the ’091 patent. We affirm the Board’s decision invalidating claims 26, 27, and 30 of the ’091 patent. AFFIRMED-IN-PART, REVERSED-IN-PART COSTS No costs.