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




 2           PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 STOLL, Circuit Judge.
     Personalized Media Communications, LLC (PMC) ap-
 peals from the final written decision of the Patent Trial and
 Appeal Board holding certain claims of U.S. Patent
 No. 8,191,091 unpatentable on anticipation and obvious-
 ness grounds. PMC specifically challenges certain claim
 constructions underpinning the Board’s anticipation and
 obviousness determinations. Because we agree that the
 Board erred in construing one of the claim terms at issue,
 we reverse the Board’s decision as to the applicable claims.
 We affirm the Board’s decision as to the remaining claims.
                         BACKGROUND
                               I
     The ’091 patent is directed to methods for enhancing
 broadcast communications with user-specific data by em-
 bedding digital signals in those broadcast communications.
 The specification discloses a number of embodiments that
 include analog broadcast signals with embedded digital
 signals.
     Claim 13 of the ’091 patent is illustrative:
     13. A method of decrypting programming at a re-
     ceiver station, said method comprising the steps of:
     receiving an encrypted digital information trans-
     mission including encrypted information;
     detecting in said encrypted digital information
     transmission the presence of an instruct-to-enable
     signal;
     passing said instruct-to-enable signal to a proces-
     sor;
     determining a fashion in which said receiver sta-
     tion locates a first decryption key by processing
     said instruct-to-enable signal;
Case: 18-1936    Document: 60      Page: 3   Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.             3



    locating said first decryption key based on said step
    of determining;
    decrypting said encrypted information using said
    first decryption key; and
    outputting said programming based on said step of
    decrypting.
 ’091 patent col. 285 l. 61–col. 286 l. 9 (emphases added to
 disputed claim terms).
     Independent claim 20 also recites “an encrypted digital
 information transmission including encrypted infor-
 mation.” Id. at col. 286 ll. 29–47. Independent claim 26 re-
 cites “an information transmission including encrypted
 information,” which lacks the “encrypted digital” modifier.
 Id. at col. 286 l. 63–col. 287 l. 9.
     The ’091 patent issued from one of several hundred
 continuation applications filed shortly before the GATT
 rules impacting patent expiration dates went into effect.
 Accordingly, the ’091 patent has priority to at least 1987,
 yet remains unexpired.
                              II
     In March 2016, Apple Inc. filed a petition requesting
 inter partes review of claims 13–16, 18, 20, 21, 23, 24, 26,
 27, and 30 of the ’091 patent. The Board instituted an IPR
 of all the challenged claims in September 2016. Following
 an oral hearing in June 2017, the Board issued a final writ-
 ten decision holding the challenged claims anticipated and
 obvious. See generally Apple Inc. v. Personalized Media
 Commc’ns, LLC, No. IPR2016-00755, 2017 WL 4175018
 (P.T.A.B. Sept. 19, 2017) (Decision).
     The Board’s anticipation and obviousness determina-
 tions were premised on its construction of various claim
 terms. The primary prior art references asserted by Apple
 undisputedly disclosed mixed analog and digital infor-
 mation transmissions as opposed to information
Case: 18-1936    Document: 60      Page: 4    Filed: 03/13/2020




 4           PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 transmissions that were entirely digital. PMC argued that
 the broadest reasonable interpretation of the claim phrase
 “an encrypted digital information transmission including
 encrypted information” must be limited to entirely digital
 transmissions—i.e., “an information transmission carrying
 entirely digital content at least a portion of which is en-
 crypted.” Decision, 2017 WL 4175018, at *3 (quoting
 J.A. 468). Apple disagreed with PMC’s construction, con-
 tending that the broadest reasonable interpretation is not
 so limited, and may also include transmissions with infor-
 mation that is not encrypted or digital—i.e., “an infor-
 mation transmission that is partially or entirely digital, at
 least a portion of which is encrypted.” Id. (quoting
 J.A. 192).
     After considering the claim language, specification,
 and prosecution history of the ’091 patent and related pa-
 tents, the Board agreed with Apple:
     [A]n “encrypted digital information transmission
     including encrypted information” includes at least
     some encrypted digital information, and does not
     preclude, with that transmission, non-encrypted
     information or scrambled analog information. In
     other words, the “transmission” requires some en-
     crypted digital information, but does not preclude
     other information such as non-encrypted infor-
     mation or analog information, and “encrypted in-
     formation” does not preclude scrambled analog
     information.
 Id. at *9 (internal citation omitted). In doing so, the Board
 specifically found that there was no plain and ordinary
 meaning of “encrypting” at the time of the invention, as the
 term was used somewhat interchangeably with the analog
 process of “scrambling” through at least 1987. Id. at *14.
     The Board also denied PMC’s request for rehearing,
 which challenged the Board’s claim construction based on
 three statements in the prosecution history. See generally
Case: 18-1936    Document: 60     Page: 5    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.            5



 Apple Inc. v. Personalized Media Commc’ns, LLC,
 No. IPR2016-00755, 2018 WL 1224738 (P.T.A.B. Mar. 6,
 2018) (Rehearing Decision). Of particular relevance here,
 the Board rejected PMC’s reliance on the prosecution his-
 tory because “the prosecution history presents a murky pic-
 ture as opposed to a clear waiver.” Id. at *11 (first citing
 Inverness Med. Switz. GmbH v. Warner Lambert Co.,
 309 F.3d 1373, 1380–82 (Fed. Cir. 2002); then citing Ath-
 letic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580
 (Fed. Cir. 1996); and then citing Rambus Inc. v. Infineon
 Techs. AG, 318 F.3d 1081, 1090 (Fed. Cir. 2003)).
     PMC appeals the Board’s decisions. We have jurisdic-
 tion under 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
     On appeal, PMC challenges the Board’s construction of
 “an encrypted digital information transmission including
 encrypted information.” 1 We review de novo the Board’s
 ultimate claim constructions and any supporting determi-
 nations based on intrinsic evidence. Knowles Elecs. LLC
 v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir.
 2018). We review any subsidiary factual findings involving
 extrinsic evidence for substantial evidence. Id. at 1362.




    1    PMC’s challenge is more generally directed to the
 “encryption/decryption terms” of the challenged claims, a
 group that includes this phrase. See Appellant’s Br. 27–50.
 We focus on this phrase because it is dispositive for the
 challenged claims. PMC also challenges the Board’s con-
 struction of the claim terms “locates” and “locating,” which
 appear only in claim 13 and its dependent claims. See id.
 at 50–55. Because we reverse the Board’s determination
 for claim 13 and its dependent claims based on the Board’s
 erroneous construction of “an encrypted digital information
 transmission,” we do not reach this issue.
Case: 18-1936    Document: 60      Page: 6    Filed: 03/13/2020




 6           PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




                               I
     “The task of claim construction requires us to examine
 all the relevant sources of meaning in the patent record
 with great care, the better to guarantee that we determine
 the claim’s true meaning.” Athletic Alts., 73 F.3d at 1578.
 “When construing claim terms, we first look to, and primar-
 ily rely on, the intrinsic evidence, including the claims
 themselves, the specification, and the prosecution history
 of the patent, which is usually dispositive.” Sunovion
 Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271,
 1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp.,
 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); then citing
 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
 (Fed. Cir. 1996)). We consider these various sources of
 meaning “[b]ecause the meaning of a claim term as under-
 stood by persons of skill in the art is often not immediately
 apparent, and because patentees frequently use terms idi-
 osyncratically.” Phillips, 415 F.3d at 1314.
     The prosecution history, in particular, “may be critical
 in interpreting disputed claim terms because it ‘contains
 the complete record of all the proceedings before the Patent
 and Trademark Office, including any express representa-
 tions made by the applicant regarding the scope of the
 claims.’” Sunovion, 731 F.3d at 1276 (quoting Vitronics,
 90 F.3d at 1582). Accordingly, even where “prosecution
 history statements do not rise to the level of unmistakable
 disavowal, they do inform the claim construction.” Shire
 Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366
 (Fed. Cir. 2015). For example, an applicant’s repeated and
 consistent remarks during prosecution can define a claim
 term by demonstrating how the inventor understood the
 invention. Sunovion, 731 F.3d at 1277. Similarly, an ap-
 plicant’s amendment accompanied by explanatory remarks
 can define a claim term by demonstrating what the appli-
 cant meant by the amendment. Tempo Lighting, Inc.
 v. Tivoli, LLC, 742 F.3d 973, 977–78 (Fed. Cir. 2014).
Case: 18-1936    Document: 60      Page: 7    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.             7



     The broadest reasonable interpretation standard ap-
 plies in this IPR proceeding. 2 Thus, the Board’s interpre-
 tation must be reasonable in light of the specification,
 prosecution history, and the understanding of one skilled
 in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
 Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
 (en banc). The broadest reasonable interpretation must
 also take into account “the context of the entire patent.”
 Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374
 (Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see
 also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58
 (Fed. Cir. 2007) (applying Phillips “best practices” to claim
 construction under broadest reasonable interpretation
 standard).
                              II
     With these principles in mind, we turn to the broadest
 reasonable interpretation of “an encrypted digital infor-
 mation transmission including encrypted information.” As
 framed by the parties, the issue is whether the broadest
 reasonable interpretation of this term is limited to digital
 information or can also include analog information.
                              A
    We begin our analysis with the claim language itself.
 Independent claims 13 and 20 recite “receiving an


     2    Per recent regulation, the Board applies the Phil-
 lips claim construction standard to IPR petitions filed on or
 after November 13, 2018. See Changes to the Claim Con-
 struction Standard for Interpreting Claims in Trial Pro-
 ceedings Before the Patent Trial and Appeal Board, 83 Fed.
 Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
 § 42.100(b)). Because Apple filed its IPR petition before
 November 13, 2018, we apply the broadest reasonable in-
 terpretation standard.
Case: 18-1936     Document: 60     Page: 8    Filed: 03/13/2020




 8            PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 encrypted digital information transmission including en-
 crypted information.” ’091 patent col. 285 l. 61–col. 286
 l. 9, col. 286 ll. 29–47. The claims use the adjective “digi-
 tal” to describe the “information transmission,” thus sup-
 porting the view that the information is, in fact, digital. On
 the other hand, the claims do not say “entirely digital.”
 Moreover, the claims do not recite just “an encrypted digi-
 tal information transmission”; rather, they state that the
 information transmission “includ[es] encrypted infor-
 mation.” This “including encrypted information” clause
 suggests that the adjective “encrypted” does not limit the
 information transmission to just encrypted information
 and, by the same logic, that “digital” does not limit the in-
 formation transmission to just digital information.
     Indeed, the Board interpreted the claims to allow for
 some non-digital information based on the claims’ use of
 the “including encrypted information” clause. The Board
 reasoned that PMC’s interpretation should be disfavored
 because it renders superfluous the phrase “including en-
 crypted information.” PMC insists that the “digital” modi-
 fier constrains the scope of the claim term to digital
 information only, and that the “including encrypted infor-
 mation” language cannot add back in what is excluded by
 the word “digital.” PMC further asserts that the phrase
 “including encrypted information” is not surplusage be-
 cause it specifies that the transmission does not have to be
 entirely encrypted—even as it must be entirely digital. See
 Oral Arg. at 3:32–3:58, available at http://oralargu-
 ments.cafc.uscourts.gov/default.aspx?fl=2018-1936.mp3.
 While we agree with PMC that this is “not the most artful
 way” to achieve such an effect, id. at 6:44–7:26, we con-
 clude that the claim language neither precludes PMC’s
Case: 18-1936     Document: 60      Page: 9    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.               9



 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




 10             PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 that “decrypting” or “encrypted information” encompasses
 many things. The specification’s definition of “program-
 ming” focuses on the types of audiovisual material trans-
 mitted, not the means of transmittal.             Indeed, the
 definition only requires that the material be transmitted
 electronically. We therefore do not agree that the specifi-
 cation’s definition of “programming” compels that “en-
 crypted information,” as used in the disputed claim term,
 must include analog signals. But even if we assume that
 “programming” necessarily includes analog signals, PMC’s
 interpretation would still remain plausible. For the same
 reasons discussed above, the “digital” modifier for “trans-
 mission” could still serve as a limit on the scope of the claim
 such that the dependent claims cover only all-digital trans-
 missions of television programming.
     In support of its interpretation, the Board also refer-
 enced claim language from a related patent, “wherein the
 at least one encrypted digital information transmission is
 unaccompanied by any non-digital information transmis-
 sion,” as evidence that PMC knew how to exclude analog
 signals from the claimed transmissions when it wanted to.
 Decision, 2017 WL 4175018, at *5 (emphasis modified)
 (quoting U.S. Patent No. 8,559,635 col. 288 ll. 13–16). Alt-
 hough we agree that language from related patent claims
 can be relevant, this particular evidence is counterbal-
 anced by other claims of the ’091 patent itself. Claim 26
 distinctly recites “an information transmission including
 encrypted information,” without the “digital” modifier.
 ’091 patent col. 286 l. 63–col. 287 l. 9. Before the Board
 and this court, PMC conceded that claim 26 covers mixed
 digital and analog transmissions. Decision, 2017 WL
 4175018, at *4 (noting PMC’s argument that “[t]hose mixed
 analog/digital embodiments support the broader ‘infor-
 mation transmission’ (claim 26) instead” (quoting
 J.A. 472)); see also Oral Arg. at 34:23–34:55. PMC’s con-
 cession is consistent with an interpretation of the claims in
Case: 18-1936    Document: 60      Page: 11    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.             11



 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




 12             PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 ’091 patent col. 143 ll. 20–30 (emphases added). The sec-
 ond passage cited by PMC discusses decryption in the con-
 text of the invention:
      Decryptors, 107, 224 and 231, are conventional de-
      cryptors, well known in the art, with capacity for
      receiving encrypted digital information, decrypting
      said information by means of a selected cipher al-
      gorithm and a selected cipher key, and outputting
      the decrypted information.
 Id. at col. 147 ll. 21–26 (describing Fig. 4) (emphasis
 added).
      While these passages are consistent with PMC’s inter-
 pretation of the disputed claim term as being entirely digi-
 tal, they fall short of limiting encryption and decryption to
 all-digital processes. They are not definitional; instead,
 they are merely illustrations that use open-ended, permis-
 sive phrases such as “usually,” “for example,” and “with ca-
 pacity for.” And when considered in the context of the more
 than 280 columns of text in the specification of the ’091 pa-
 tent, these two passages fall far short of defining the rele-
 vant terms through repeated and consistent use.
     The specification discloses an Example #7, the “Wall
 Street Week” embodiment, which PMC identifies as the ba-
 sis for the claims of the ’091 patent. See Appellant’s
 Br. 16–21; see also ’091 patent col. 148 l. 5–col. 160 l. 27
 (Example #7). The specification explains that the Wall
 Street Week transmission consists of “digital video” and
 “digital audio.” ’091 patent col. 148 ll. 13–16; see also id.
 at col. 153 ll. 40–47 (“said information being . . . encrypted
 digital video”). In support of its interpretation, the Board
 identified a different passage of the specification that ex-
 pressly states that the “Wall Street Week” embodiment can
 include analog signals:
      It is obvious to one of ordinary skill in the art that
      the foregoing is presented by way of example only
Case: 18-1936    Document: 60     Page: 13    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.              13



     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




 14             PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




     Thus, we conclude that the evidence from the specifica-
 tion also fails to resolve the scope of the disputed claim
 term.
                                C
     We next turn to the prosecution history for guidance.
 PMC points to three statements in the prosecution history
 that, in PMC’s view, limit the scope of the claims to all-
 digital transmissions. For the reasons that follow, we
 agree with PMC, and accordingly, we adopt PMC’s con-
 struction of “encrypted digital information transmission.”
     As originally drafted, none of the original claims in-
 cluded the “encrypted digital” language. Instead, they re-
 cited “an information transmission including encrypted
 information,” the same phrase included in issued claim 26.
 See, e.g., J.A. 2242–43 (claims 13 and 20 then numbered as
 pending claims 45 and 52, respectively). When the appli-
 cant first presented the claims at issue to the examiner, the
 applicant expressly relied on a prior decision of the Board
 to distinguish the newly presented claims from the prior
 art of record. That prior art included both Gilhousen 4 and
 Mason, 5 the two primary prior art references asserted by
 Apple in the IPR proceedings on appeal. The applicant ex-
 plained:
      Each of the [newly presented] claims is patentable
      in light of the prior art. . . . [The prior art refer-
      ences before the examiner] disclose the use of en-
      coded control signals or other data to control the
      unscrambling of an analog video signal. The claims
      of this amendment, however, claim material relat-
      ing to the encryption and decryption of signals. . . .
      The Board of Patent Appeals and Interferences de-
      cided    in   Ex     parte      Personalized   Media


      4   U.S. Patent No. 4,613,901.
      5   U.S. Patent No. 4,736,422.
Case: 18-1936    Document: 60     Page: 15    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.              15



     Communications, LLC . . . that encryption requires
     a digital signal. Each of the claims of this amend-
     ment involves the use of digital signals through ref-
     erence     to   “decryption”    and    “encryption.”
     “Encryption and decryption,” the Board goes on to
     say, “are not broad enough to read on scrambling
     and unscrambling.” Therefore, because [the prior
     art references] are directed to unscrambling of an-
     alog signals, none teach or suggest a method of con-
     trolling the decryption of digital information as is
     presented in the claims of this amendment.
 J.A. 2245–46 (quoting Ex parte Personalized Media
 Commc’ns, LLC, No. 2008-4228, 2008 WL 5373184, at *27
 (B.P.A.I. Dec. 19, 2008)).
     The examiner rejected the newly presented claims as
 anticipated by Mason. In response, the applicant reiter-
 ated its reliance on the Board’s prior decision distinguish-
 ing encryption and decryption from scrambling and
 unscrambling. The applicant then distinguished Mason on
 the following basis:
     Although Mason uses the terms “encrypting” and
     “scrambling” interchangeably, the invention’s
     scope is limited to an analog television system. Ma-
     son characterizes the invention as a Direct Broad-
     cast Satellite (“DBS”) system. DBS systems were
     originally designed only to accommodate analog
     transmissions. Mason does not contemplate digital
     transmissions, therefore it does not address en-
     cryption. Its scope is limited to scrambling and un-
     scrambling. Mason does not anticipate claims 45–
     50 and 52–56.
 J.A. 2291 (internal citations omitted).
     The examiner was not persuaded. Facing a final rejec-
 tion based on Mason, the applicant amended the claims to
 include the modifier “encrypted digital” such that they
Case: 18-1936      Document: 60    Page: 16    Filed: 03/13/2020




 16             PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 recited “an encrypted digital information transmission in-
 cluding encrypted information”—i.e., the claim term at is-
 sue on appeal. In its accompanying remarks, the applicant
 once again repeated its reliance on the Board’s prior deci-
 sion distinguishing encryption and decryption from scram-
 bling and unscrambling. The applicant further explained:
      Applicants’ [sic] had argued in their Amendment
      After Final Rejection that although Mason uses the
      terms “encrypting” and “scrambling” interchange-
      ably, it could not teach encryption because it only
      disclosed an analog signal transmission. . . . With-
      out abandoning their previous argument, Appli-
      cants acknowledge that it can be argued that
      Mason teaches encrypted elements as part of its
      analog information transmission. But it does not
      teach the encryption of an entire digital signal
      transmission. For the sake of advancing prosecu-
      tion, Applicants amend independent claims 45 and
      52 to clarify that the information transmission re-
      ceived is an encrypted digital information trans-
      mission. . . . This amendment in no way affects
      Applicants’ position that encryption requires a dig-
      ital signal. Applicants amend the claims to provide
      clarification as an earnest attempt to advance the
      prosecution of the application.
 J.A. 2312–13 (emphasis added).
     The Board rejected this evidence because, in its view,
 PMC’s statements during prosecution did not constitute a
 clear and unmistakable surrender sufficient to rise to the
 level of disclaimer. See Decision, 2017 WL 4175018,
 at *16–*17; Rehearing Decision, 2018 WL 1224738, at *5–
 *11. According to the Board, PMC’s arguments to the ex-
 aminer seeking to distinguish Mason did not “clearly disa-
 vow mixed analog and digital information transmissions.”
 Decision, 2017 WL 4175018, at *16. Instead, PMC “ambig-
 uously quotes statements from a reexamination Board
Case: 18-1936    Document: 60      Page: 17    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.             17



 decision for a related patent without adopting those state-
 ments as its own.” Rehearing Decision, 2018 WL 1224738,
 at *6. Because “the prosecution history presents a murky
 picture as opposed to a clear waiver,” the Board reasoned
 that it should be discounted for the purpose of claim con-
 struction. Id. at *11 (first citing Inverness, 309 F.3d
 at 1380–82; then citing Athletic Alts., 73 F.3d at 1580; and
 then citing Rambus, 318 F.3d at 1090).
     We disagree with the Board’s legal analysis and con-
 clusion. Even where “prosecution history statements do
 not rise to the level of unmistakable disavowal, they do in-
 form the claim construction.” Shire, 787 F.3d at 1366. An
 applicant’s repeated and consistent remarks during prose-
 cution can define a claim term—especially where, as here,
 there is “no plain or ordinary meaning to the claim term”
 and the specification provides no clear interpretation.
 Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s
 amendment accompanied by explanatory remarks can de-
 fine a claim term where, as here, the claim language and
 specification fail to provide meaningful guidance. Tempo
 Lighting, 742 F.3d at 977–78. Thus, the Board erred by
 effectively requiring the prosecution history evidence to
 rise to the level of a disclaimer in order to inform the mean-
 ing of the disputed claim term. Assuming without deciding
 that PMC’s statements and amendments were inadequate
 to give rise to a disclaimer, we still find that the prosecu-
 tion history provides persuasive evidence that informs the
 meaning of the disputed claim phrase and addresses an
 ambiguity otherwise left unresolved by the claims and
 specification.
     During prosecution, the applicant repeatedly and con-
 sistently voiced its position that encryption and decryption
 require a digital process in the context of the ’091 patent.
 The applicant never abandoned that position. Indeed, the
 applicant amended the claims—giving rise to the claim
 term at issue on appeal—only to clarify its position that
 “encryption requires a digital signal.” J.A. 2312. And to
Case: 18-1936      Document: 60     Page: 18   Filed: 03/13/2020




 18             PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.




 the extent that the applicant’s earlier prosecution state-
 ments were ambiguous regarding whether the entire signal
 must be digital, the applicant’s remarks accompanying the
 amendment made its position clear. The applicant as-
 serted that the amended claims should be allowed because
 the prior art “does not teach the encryption of an entire dig-
 ital signal transmission.” Id. (emphasis added). Accord-
 ingly, we conclude that the applicant’s repeated and
 consistent statements during prosecution, along with its
 amendment to the same effect, are decisive as to the mean-
 ing of the disputed claim term—even if those statements
 do not rise to the level of a disclaimer. See Shire, 787 F.3d
 at 1366; Tempo Lighting, 742 F.3d at 977–78; Sunovion,
 731 F.3d at 1276–77.
                                D
     The Board’s determination that claims 13–16, 18, 20,
 21, 23, and 24 of the ’091 patent are unpatentable was
 predicated on its determination that “an encrypted digital
 information transmission including encrypted infor-
 mation” includes mixed digital and analog signals. All the
 grounds of unpatentability for these claims rely on prior art
 that uses mixed analog and digital signals. Because we
 find that the disputed claim term is limited to all-digital
 signals, we reverse the Board’s unpatentability determina-
 tion for those claims.
     Claims 26, 27, and 30 do not include the disputed claim
 term and instead recite “an information transmission in-
 cluding encrypted information.” Because the prosecution
 history statements and amendments that we found deci-
 sive to the interpretation of “encrypted digital information
 transmission” do not apply to claims 26, 27, and 30, and
 because PMC conceded to the Board and this court that
 these claims include mixed digital and analog signals
 within their scope, we affirm the Board’s unpatentability
 determination for these claims.
Case: 18-1936    Document: 60    Page: 19    Filed: 03/13/2020




 PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.          19



                        CONCLUSION
      We have considered the parties’ other arguments, and
 we do not find them persuasive. For the foregoing reasons,
 we reverse the Board’s final written decision invalidating
 claims 13–16, 18, 20, 21, 23, and 24 of the ’091 patent. We
 affirm the Board’s decision invalidating claims 26, 27,
 and 30 of the ’091 patent.
      AFFIRMED-IN-PART, REVERSED-IN-PART
                           COSTS
     No costs.
