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Record of Oral Hearing Held: October 26, 2017 ______ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC., Petitioner, v. PERSONALIZED MEDIA COMMUNICATIONS LLC, Patent Owner. _____________ Case IPR2016-01520 Patent 8,559,635 B1 ____________ Record of Oral Hearing Held: October 26, 2017 ____________ ORDER Amended Trial Hearing 37 C.F.R. § 42.70 Before KARL D. EASTHOM, KEVIN F. TURNER, and GEORGIANNA W. BRADEN, Administrative Patent Judges. Case IPR2016-01520 Patent 8,559,635 B1 APPEARANCES: ON BEHALF OF THE PETITIONER: MARCUS E. SERNEL, ESQUIRE Kirkland & Ellis LLP 300 North LaSalle Street 1300 I Street, N.W. Chicago, IL 60654 ON BEHALF OF THE PATENT OWNER: DOUGLAS J. KLINE, ESQUIRE Goodwin Proctor LLP 100 Northern Avenue Boston, MA 02210 The above-entitled matter came on for hearing on Thursday, October 26, 2017, at 1 p.m., at the U.S. Patent and Trademark Office, Madison Building East, 600 Dulany Street, Alexandria, Virginia. 2 Case IPR2016-01520 Patent 8,559,635 B1 P R O C E E D I N G S 1 - - - - - 2 JUDGE EASTHOM: Welcome to the Patent Trial & Appeal Board. 3 This is IPR2016-01520, U.S. patent No. 8,559,635, Personalized Media 4 Communications LLC v. Apple, Inc. We have Judge Braden in Dallas and 5 Judge Turner over to the – on the screen. He’s in San Jose. So if you would 6 just remember when you’re speaking to try to reference the slide numbers. 7 We have some slidesin this case. 8 Why don’t we start out with introducing yourselves for the record, and 9 start with Petitioner, please. 10 MR. SERNEL: Your Honors, my name is Marc Sernel. I represent 11 Apple. With me today is Joel Merken (phonetic) – 12 JUDGE BRADEN: I’m sorry, counselor. Could we remind you to 13 please go to the podium and please speak into the microphone for the remote 14 judges. 15 MR. SERNEL: My apologies. My name is Marc Sernel. I represent 16 Petitioner Apple Incorporated. With me today are Joel Merken and Alan 17 Rabinowitz. 18 MR. KLINE: Good afternoon, Your Honors. My name is Doug 19 Kline. I represent Personalized Media Communications, LLC, the Patent 20 Owner in this matter. With me are Steve Schreiner, Fong Den (phonetic), 21 Tom Scott, Jennifer Albert. Thank you. 22 JUDGE EASTHOM: Welcome. Okay. Just a couple of 23 preliminaries. We’ve scheduled 45 minutes per side. We understand 24 Petitioner – well Patent Owner raised an issue with respect to another 3 Case IPR2016-01520 Patent 8,559,635 B1 1 proceeding IPR2016-00754, I believe claims 4, 7 and 13 in that case where - 2 - in a final written decision so it raises a 315 issue here and I understand the 3 Parties want to address that issue preliminarily or do you want to wait until - 4 - I think, why don’t we just get that over with. It looks like Petitioner, from 5 your slides, it looks like you’re not going to discuss those here; is that 6 correct? 7 MR. SERNEL: That’s correct. We don’t intend to present any 8 argument with respect to those three claims. 9 JUDGE EASTHOM: Okay. And Patent Owner? 10 MR. KLINE: We should be able to accomplish the same thing, Your 11 Honor. 12 JUDGE EASTHOM: Okay. 13 MR. KLINE: Thanks. 14 JUDGE EASTHOM: Thank you. So are you going to withdraw your 15 motion to – 16 MR. KLINE: Well no. I mean we think they should be dismissed 17 from the case, from this proceeding, and I understand that the request to file 18 the motion came in recently so it hasn’t been able to -- the Board hasn’t been 19 able to consider it and resolve it yet today, but I think for purposes of this 20 hearing I don’t think it’s going to influence significantly how this hearing 21 proceeds. But we would like to file the motion because we do think those 22 claims should be dismissed from this proceeding. 23 JUDGE EASTHOM: It’s Mr. Kline, right? 24 MR. KLINE: Yes, I’m sorry, yes. 4 Case IPR2016-01520 Patent 8,559,635 B1 1 JUDGE EASTHOM: Okay, okay. Mr. Kline, I understand your 2 argument. 3 MR. KLINE: Right. 4 JUDGE EASTHOM: The way I think the panel views it is that 5 Petitioner cannot proceed on those claims but we’ve gone so far now that -- 6 and because Petitioner can’t proceed, they can’t maintain it -- they’re not 7 going to present argument here and that’s their view of it. 8 MR. KLINE: Right. 9 JUDGE EASTHOM: I think that’s a reasonable view. So we can go 10 ahead and proceed on those claims -- 11 MR. KLINE: Right. 12 JUDGE EASTHOM: -- and the way we look at it without any more 13 input from Petitioner on them. But you’re free to make an argument if you 14 want to about your motion and then we’ll entertain it probably later. 15 MR. KLINE: Sure. I mean the argument I would make about the 16 motion is the Statute provides that when the claims are subject to a final 17 written decision, they’re -- Petitioner is estopped from proceeding here, so -- 18 JUDGE EASTHOM: Okay. 19 MR. KLINE: -- that’s the argument. 20 JUDGE EASTHOM: I understand. Thank you, Mr. Kline. 21 MR. KLINE: Right, thank you. 22 JUDGE EASTHOM: Okay. 23 JUDGE BRADEN: Actually, Judge Easthom, I have a question for 24 the Patent Owner. Looking at the Rule it specifically says that Petitioner 25 may not maintain the claims within the IPR proceeding. Do you have 5 Case IPR2016-01520 Patent 8,559,635 B1 1 anything to support your argument saying that the Board itself could not 2 maintain the claims within the proceeding? 3 MR. KLINE: I do not off the top of my head, Your Honor. 4 JUDGE BRADEN: All right. Thank you very much. 5 MR. KLINE: Thank you. 6 JUDGE EASTHOM: Okay. So, Mr. Sernel, are you going to proceed 7 with -- 8 MR. SERNEL: Yes, Your Honor, and I’d like to reserve I think ten 9 minutes for rebuttal, and I also have for people here hard copies of the slides 10 if that would be helpful? 11 JUDGE EASTHOM: That would help me at least. 12 MR. SERNEL: May I approach? 13 JUDGE EASTHOM: Please, please. 14 (Counsel approached the bench.) 15 MR. SERNEL: May I proceed, Your Honor? 16 JUDGE EASTHOM: Please do. Thank you. 17 MR. SERNEL: And certainly Judges Braden and Turner, please 18 interrupt at any time. I sometimes go quickly but I certainly welcome any 19 questions and please interrupt me when you have a question. 20 In terms of this proceeding, there are the following instituted grounds. 21 This is slide 1. As we’ve greyed out here and as we just discussed, I don’t 22 intend to address claims 4, 7 and 13 which were already found unpatentable 23 in the 754 proceeding. I plan to focus on claims 3, 18, 20, 32 and 33 and the 24 arguments with respect to Campbell and Chandra and the related arguments. 6 Case IPR2016-01520 Patent 8,559,635 B1 1 So this is the 635 patent. The Board is very familiar with the PMC 2 patent family and in particular the 635 patent. Again, these are a set of pre- 3 GATT filed applications that date back to priority applications file in the 4 1981 and then in the 1987 time frame. One of the key issues in this 5 proceeding is whether the claims at issue are entitled to 1981 priority or not 6 and I will discuss that in detail in a few minutes. 7 Just to set the stage, again here’s the implicated claims. Not going to 8 touch 2, 4, 7 or 13, 2 was actually disclaimed back as a result of the 754 9 proceeding, 4, 7, and 13 we talked about. I’m going to focus on the 10 remaining five claims. 11 So the disputed issues that we will just tackle here today, there are 12 issues relating to the priority date and several issues there that we will 13 discuss. In terms of claim construction there are some issues that have been 14 briefed with respect to claim construction but as we’ll talk about in a few 15 minutes, I think many of those have been dealt with or the main ones have 16 already been dealt with in the 754 proceeding. We’ll then move into the 17 prior art and, as I said, Campbell and Chandra being the focus, and then I’ll 18 spend probably a few minutes on PMC’s motion to amend at the end. 19 So moving onto slide 5, this just sets forth the different issues with 20 respect to the priority date and you can see we’ve identified the claims that 21 each issue pertains to. I’m going to focus mostly on programming which 22 has already been dealt with, and then the fourth issue there is probably the 23 main issue that will get the most attention at this hearing which relates to 24 claims 18, 20, 32 and 33. 7 Case IPR2016-01520 Patent 8,559,635 B1 1 JUDGE TURNER: Counsel, before you go on, while you’re on slide 2 5, let me ask you a quick question. I’m assuming you’re acquainted with 3 our IPR 2016 754 with respect to the same patent? 4 MR.
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