Case Number: Case: 18-1936
Bench: REYNA, TARANTO, and STOLL, Circuit Judges
Court: Allahabad High Court
Decided on: 13/03/2020

Case Summery

Apple Inc., to pay $308.5 million for patent infringement.

 

The judgement in the case of Personalized Media Communications, LLC v. Apple Inc., rules in favour of Personalized Media Communications (hereinafter referred to as the ‘Appellant’ ) and has ordered that Apple Inc., (hereinafter referred to as the ‘Appelle’) pay $308.5 million to the appellant on grounds of infringement of patented technology associated with digital rights management. The judgement delivered arises from a challenge raised by the Appellant in the present case, on a decision of the Patent Trial and Appeal Board on U.S Patent No. 8,191, 091 wherein the challenge was on the basis of the Board’s decision on grounds of anticipation and obviousness. The Board’s decision in the case’s prior proceedings in Apple Inc. v. Personalized Media Commc’ns, LLC (2017), on the basis of which the current judgement stands delivered, upheld the challenged claims brought forth by Apple Inc., in determining the grounds of anticipation and obviousness. The Board in its 2017 judgement favoured Apple on consideration of the claim language, specification and prosecution history of the ‘091 patent and on application of the standard of broadest reasonable interpretation to claim construction, particularly on the Appellant’s specification broad definition of the term ‘programming’. The Board rejected PMC’s argument that the broadest reasonable interpretation of the claim phrase must be limited to digital transmission juxtaposed to Apple’s accepted argument that the primary prior art references disclosed mixed analog and digital (information) transmission and therefore the broadest reasonable interpretations is not so limited.

The judgement in the said appeals case bought forth by the appellant challenges the Board’s construction of “an encrypted digital information transmission including encrypted information”. The crux of the factual matrix of the case before the Appeals Court was applying the standard of broadest reasonable interpretation to the aforementioned claim construction which is ‘whether is it limited to digital information or can it also include analog information’. The judgement delivered by the Appeals Court emphasized on three factors that must be considered while construing claims terms and maintained the last factor to be critical importance, which are (i) claim terms (ii) specification and (iii) prosecution history of the patent. The prosecution history in the present case aided the Appellant’s argument of limiting the scope of the claims to all digital transmissions. The Appeals court in its decision laid down that the Board’s decision of interpreting the specification is plausible as the definitional passage in the specification by the appellant captures both digital and analog signal however it further held that the definitional passage in itself is not decisive. The Appeals court decision rejected the judgement furnished by the Board and maintained that in absence of any ordinary meaning to the claim term or no clear interpretation of the specification, the Appellants persistent remarks during prosecution and the amendment supplemented by explanatory remarks proved to be decisive with respect to the disputed claim term.

The Appeals Court reversed the Board’s final written decision invalidating claims 13, 16, 18, 20, 21, 23, and 24 of the ’091 patent and affirmed the Board’s decision of invalidating claims 26, 27, and 30 of the ’091 patent.

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