UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SDI TECHNOLOGIES, INC.,
`
`Petitioner
`
`v.
`
`BOSE CORPORATION,
`
`Patent Owner
`
`Patent No. 8,401,682
`Filing Date: August 14, 2009
`Issue Date: March 19, 2013
`Title: Interactive Sound Reproducing
`_______________
`
`No. IPR2013-00350
`
`____________________________________________________________
`
`REPLY OF PETITIONER SDI TECHNOLOGIES, INC.
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SDI TECHNOLOGIES, INC.,
`
`Petitioner
`
`v.
`
`BOSE CORPORATION,
`
`Patent Owner
`
`Patent No. 8,401,682
`Filing Date: August 14, 2009
`Issue Date: March 19, 2013
`Title: Interactive Sound Reproducing
`_______________
`
`No. IPR2013-00350
`
`____________________________________________________________
`
`REPLY OF PETITIONER SDI TECHNOLOGIES, INC.
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`CLAIM CONSTRUCTION ............................................................................1
`
`A.
`
`B.
`
`The Board’s Construction of “Configured To . . .” Was Correct .........1
`
`There is No Need to Construe the Other Terms....................................3
`
`II.
`
`GROUND I IS NOT “DEFECTIVE”..............................................................3
`
`A.
`
`B.
`
`The Sony Music System Alone Invalidates the Claims........................3
`
`The Claims Also Would Be Obvious in Light of the Combination......5
`
`1.
`
`2.
`
`3.
`
`4.
`
`Other Reasons to Combine .........................................................6
`
`There is No “Teaching Away”....................................................7
`
`The Combination Does Have All Elements of Claim 1 .............9
`
`The Combination Has All Elements of Claim 28.....................10
`
`III. GROUND IV IS NOT “DEFECTIVE”.........................................................11
`
`A.
`
`B.
`
`The Combination Does Include All Claim Elements..........................11
`
`There Would Have Been a Reason to Combine .................................12
`
`IV. GROUND III IS NOT “DEFECTIVE”.........................................................12
`
`A.
`
`B.
`
`C.
`
`There is No “Teaching Away”............................................................12
`
`The Combination Would Meet the Elements of Claims 1 and 28 ......13
`
`The Dependent Claims Are Obvious As Well ....................................14
`
`V.
`
`GROUND VI IS NOT “DEFECTIVE”.........................................................15
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................6
`
`Fluor Tec, Corp. v. Kappos,
`499 Fed. Appx. 35 (Fed. Cir. 2012) ..............................................................13
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................8
`
`Kenall Mfg. Co. v. H.E. Williams, Inc.,
`2013 U.S. Dist. LEXIS 13724 (N.D. Ill. Feb. 1, 2013)...................................2
`
`MercExchange, LLC v. eBay, Inc.,
`401 F.3d 1323 (Fed. Cir. 2005) .......................................................................4
`
`Spectralytics, Inc. v. Cordis Corp.,
`649 F.3d 1336 (Fed. Cir. 2011) .....................................................................13
`
`SuperGuide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) .........................................................................1
`
`Zapmedia Servs., Inc. v. Apple, Inc.,
`2010 U.S. Dist. LEXIS 49387 (E.D. Tex. May 19, 2010) ..............................2
`
`iii
`
`
`
`EXHIBIT LIST
`
`Exhibit 1001 U.S. Patent No. 8,401,682
`
`Exhibit 1002 Operating Instructions for Sony Personal Audio
`System ZS-D7 (1998)
`
`Exhibit 1003 Owner’s Guide for Bose Wave Radio/CD (1999)
`
`Exhibit 1004 Music Boxes Go for a Spin, Popular Science, March 1999, pages
`76-79
`
`Exhibit 1005 User Guide for Creative Nomad Digital Audio Player (June 1999)
`
`Exhibit 1006 New MP3 Players: Music to Your Ears, PCWorld,
`August 19, 1999
`
`Exhibit 1007 What’s New, Popular Science, April 1999, pages 16-17
`
`Exhibit 1008
`
`Press Release, SAMSUNG Electronics Launches “yepp,” the
`World’s Smallest MP3 Player, April 28, 1999
`
`Exhibit 1009 Guy Hart-Davis and Rhonda Holmes, MP3! (Sybex 1999), pages
`65-83
`
`Exhibit 1010
`
`Internet web pages from http://www.evation.com, dated May 8,
`1999
`
`Exhibit 1011 User Guide for Altec Lansing Computer Speaker System (1998)
`
`Exhibit 1012 Altec Lansing Announces New Products Utilizing the Power of the
`PC for Better Quality Computer Audio, Business Wire, November
`17, 1997
`
`Exhibit 1013 U.S. Patent No. 5,969,283
`
`Exhibit 1014 Deposition Testimony of Paul Beckmann, January 6, 2012, pages
`228-232
`
`iv
`
`
`
`Exhibit 1015 Bose’s List Of Claim Terms For Construction And Proposed
`Constructions, Bose Corp. v. SDI Tech., Inc., et al., D. Mass. No.
`09-11439
`
`Exhibit 1016
`
`Page from the database of the United States Copyright Office
`
`Exhibit 1017 Declaration of Andrew B. Lippman
`
`Exhibit 1018
`
`Excerpts of the June 6, 2014 Deposition Testimony of Dr. Robert
`L. Stevenson
`
`Exhibit 1019 Average Pop Song Length By Decade
`(http://thelister.blogspot.com/2011/07/average-pop-song-length-
`by-decade.html)
`
`Exhibit 2001
`
`Excerpt from the December 20, 2011, Rebuttal Expert Report of
`Dr. Paul E. Beckmann
`
`Exhibit 2002
`
`“Remote Control Winamp and More” Webpage, November 10,
`1999
`
`Exhibit 2003
`
`Exhibit 2004
`
`Exhibit 2005
`
`06-12-2013 Declaration of Andrew B. Lippman filed with SDI’s
`Petition for Inter Parties Review of US Patent No. 8,364,295
`(IPR2013-00465)
`
`06-12-2013 Declaration of Andrew B. Lippman filed with SDI’s
`Petition for Inter Parties Review of US Patent No. 8,401,682
`(IPR2013-00350)
`
`01-16-2012 Deposition Testimony of Andrew B. Lippman, Ph. D.
`in Bose Corp. v. SDI Technologies, Inc., Case No. 13-cv-10277-
`WGY (D. Mass.)
`
`Exhibit 2006
`
`Petitioner’s Exhibit List filed with SDI’s Petition for Inter Parties
`Review of US Patent No. 8,401,862 (IPR2013-00350)
`
`Exhibit 2007 Webpage showing the Altec Lansing ADA104 home theater
`speaker system.
`
`Exhibit 2008
`
`“Altec Lansing Announces New Home Theatre Audio Solutions”,
`BUSINESS WIRE, Oct. 16, 1998,
`
`v
`
`
`
`Exhibit 2009 Webpage showing images of Altec Lansing’s ADA310W.
`
`Exhibit 2010
`
`Screenshot of webpage showing images of Altec Lansing’s
`ADA310W
`
`Exhibit 2011 Webpage showing images of Altec Lansing’s ADA310W.
`
`Exhibit 2012
`
`Excerpts of the 01-06-2012 Deposition Testimony of Dr. Paul E.
`Beckmann in Bose Corp. v. SDI Technologies, Inc., Case No. 13-
`cv- 10277-WGY (D. Mass.)
`
`Exhibit 2013 Operating Instructions for Sony MiniDisc Recorder MZ-R30
`(1998)
`
`Exhibit 2014
`
`12-11-2013 Board Decision (IPR2013-00350)
`
`Exhibit 2015
`
`Excerpts of 03-10-2014 Deposition Testimony of Dr. Andrew B.
`Lippman
`
`Exhibit 2016
`
`01-15-2014 Hearing Transcript in Bose Corp. v. SDI
`Technologies, Inc., Case No. 13-cv-10277-WGY (D. Mass.) (Dkt.
`D108)
`
`Exhibit 2017
`
`01-22-2014 Markman Order in Bose Corp. v. SDI Technologies,
`Inc., Case No. 13-cv-10277-WGY (D. Mass.) (Dkt. D110)
`
`Exhibit 2018
`
`01-24-2014 Order for Closure in Bose Corp. v. SDI Technologies,
`Inc., Case No. 13-cv-10277-WGY (D. Mass.) (Dkt. D111)
`
`Exhibit 2019 U.S. Patent. 8,364,295
`
`Exhibit 2020
`
`1998 Datasheet for TDA7375A Power Amplifier chip
`
`Exhibit 2021 Kyoya Tsutsui et al., “ATRAC: Adaptive Transform Acoustic
`Coding for MiniDisc,” presented at the 93rd AES Convention
`October 1-4, 1992, San Francisco, CA
`
`Exhibit 2022 O’Reilly Online Catalog, reproducing Chapter 6 of “MP3: The
`Definitive Guide,” Scot Hacker, 1st Ed. March 2000 (having
`production numbers SDI_0010825-SDI_0010868)
`
`vi
`
`
`
`Exhibit 2023 Operating Instructions for RM-AV2000 Integrated Remote
`Commander by Sony Corporation (1997)
`
`Exhibit 2024 U.S. Patent 5,644,303, titled “Specialized Shaped Universal
`Remote Commander”
`
`Exhibit 2025 U.S. Patent 5,872,562, titled “Universal Remote Control
`Transmitter With Simplified Device Identification”
`
`Exhibit 2026 Declaration of Dr. Robert L. Stevenson
`
`Exhibit 2027
`
`Excerpt from 09-27-2013 Defendant’s Preliminary Claim
`Construction Brief filed in Bose Corp. v. SDI Technologies, Inc.,
`Case No. 13-cv- 10277-WGY (D. Mass.)
`
`Exhibit 3001 McGraw-Hill Dictionary of Scientific Terms, p. 428
`
`Exhibit 3002
`
`The Elements of Style, pp. 40-41
`
`Exhibit 3003
`
`The American College Dictionary, 4th ed., p. 64
`
`vii
`
`
`
`I.
`
`CLAIM CONSTRUCTION
`
`A.
`
`The Board’s Construction of “Configured To . . .” Was Correct
`
`The pertinent part of exemplary claim 1 simply says, as the Board correctly
`
`concluded (with reference to the leading style guide), that the “audio information”
`
`may come from any one source. (See Paper 11, at 12-14.) If a person were to say
`
`“I think for lunch I will have any one of a pizza, a hamburger, and a taco,” they
`
`mean that they intend to eat one, not all, of those dishes. (See Ex. 3002.)
`
`Bose’s “controlling case law” argument is based principally on SuperGuide
`
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which Bose
`
`completely misreads. The court did not “consider[] a claim phrase having the
`
`exact same structure as here,” because the term in that case was “at least one,” not
`
`“any one of.” More importantly, the question in SuperGuide was whether “at least
`
`one” referred to the entire list, or whether it referred to each individual member of
`
`the list, because each of the members of the list included multiple things. It was
`
`a list of lists. Bose’s claims do not present a list of things that are themselves lists.
`
`SuperGuide was about whether the prepositional phrase applied to the whole list,
`
`or to each list member. The issue here is the meaning of the prepositional phrase.
`
`Bose’s other cases are also distinguishable because the claims in those cases
`
`required that one thing in the claim (the media player in Zapmedia or the endplate
`
`in Kenall) be configured to work with (either by being accessible by, or by being
`
`1
`
`
`
`physically adapted to work with) all of the things in the list (the different media
`
`assets in Zapmedia or the different bridges/endcaps in Kenall). See Zapmedia
`
`Servs., Inc. v. Apple, Inc., 2010 U.S. Dist. LEXIS 49387, *36-39 (E.D. Tex. May
`
`19, 2010); Kenall Mfg. Co. v. H.E. Williams, Inc., 2013 U.S. Dist. LEXIS 13724,
`
`*48-51 (N.D. Ill. Feb. 1, 2013). Bose’s claims are not structured in that way.
`
`In any event, this construction issue does not really matter, because there is
`
`nothing structural in the claim that differs depending on the music source. There
`
`is no teaching about the computer being “configured” differently depending on the
`
`source of the MP3s. (See Paper 11, at 21.) The scope of the claim—the structure
`
`it covers—does not change if Bose’s construction were to be adopted. And Bose
`
`has now conceded this point by silence, as it was made in the Decision, and neither
`
`Bose nor its expert has purported to disagree.
`
`The claims say that the audio system is “configured to connect to a separate
`
`computer” that is, in turn, “configured to provide audio information from any one
`
`of a plurality of sources, including digital music files stored on the computer and a
`
`network accessible by the computer.” This actually describes a computer that
`
`provides audio information from any source. Because there is nothing in the
`
`patent about how to configure the “audio system” to receive audio information
`
`from every source in the world, they must all be the same.
`
`Finally, in order for this language to provide a limitation, the computer
`
`2
`
`
`
`would need to be part of the claimed invention, while Bose insists that it is not.
`
`B.
`
`There is No Need to Construe the Other Terms
`
`Bose agrees that “audio signal processing circuitry” means “circuitry that
`
`modifies an audio signal.” (Paper 17, at 10.) That should be end of this issue,
`
`because Bose cannot reasonably dispute that an amplifier “modifies an audio
`
`signal,” by increasing its power.
`
`There is no “claim differentiation” issue because these two terms do have
`
`different meanings, as “audio signal processing circuitry” is broader than
`
`“amplifier.” An amplifier boosts the level of the entire signal, while “audio signal
`
`processing circuitry” would include circuitry that would boost the level of the
`
`entire signal, but also would include circuitry that would, for example, boost just a
`
`part of the signal, or filter it, or modify it in some other way. Bose’s argument that
`
`this term “refers to audio processing techniques used to modify an audio signal—
`
`e.g., circuitry that adjusts the bass and treble components of an audio signal” only
`
`shows the flaw in its position because “adjusting the bass and treble components,”
`
`means amplifying (or de-amplifying) the low or high ends of the signal.
`
`Petitioner does not believe there is any need to construe the “assemblage”
`
`terms as requested by Bose, given the claim language itself.
`
`II. GROUND I IS NOT “DEFECTIVE”
`
`A.
`
`The Sony Music System Alone Invalidates the Claims.
`
`The Board has now (correctly) construed the claims to not require that the
`
`3
`
`
`
`computer be configured to provide music from both local files and a network. That
`
`being the case, the Nomad is no longer required in order for this combination to
`
`meet all of the elements of these claims. These claims are invalid as obvious
`
`regardless of whether or not the art can be combined, as described below.
`
`Claim 1: Petitioner’s claim chart specifically noted that the MiniDisc,
`
`which was described in the Sony Music System manual, “meets Bose’s definition
`
`of ‘computer,’” that the preamble did not require multiple sources from the
`
`computer, that the “configured to . . .” language was not limiting in any event, and
`
`that the claim does not require that the “connection actually provide audio
`
`information corresponding to the digital music files and audio information from the
`
`network, only that it be ‘configured to receive’ such information were it to be
`
`provided.” (See Ex. 1001, 11-25.) Thus, the chart for claim 1 fully supports the
`
`position that claim 1 is invalid even without the Nomad. An obviousness argument
`
`in which a single reference need not be combined or modified is the same as
`
`anticipation. See, e.g., MercExchange, LLC v. eBay, Inc., 401 F.3d 1323, 1330
`
`(Fed. Cir. 2005) (“Because ‘anticipation is the epitome of obviousness,” the
`
`defendants’ obviousness arguments preserved their right to argue invalidity based
`
`on anticipation.”) (internal citations omitted)). The speaker system, with its
`
`connector that is capable of receiving audio signals, meets the limitation—period.
`
`Claims 28: This claim is similar to claim 1, except that it requires that the
`
`4
`
`
`
`computer have a “plurality of user functions” and that “a subset of the user
`
`functions relate to the control of audio information.” Aspects of the “computer”
`
`are not limiting, and, in any event, the MiniDisc had on/off functionality in
`
`addition to music related controls, just like the Nomad. (See Ex. 1002, at 000046
`
`(“Turn on the power”); see also Ex. 2013, at 25 (checking the battery).)
`
`Claims 2-11, 18-21, 24, 27, 30-38, 45-48, 51, 54, 73, and 74: These claims
`
`all depend from claims 1 or 28, and the charts do not reference the Nomad at all.
`
`The Claims Also Would Be Obvious in Light of the Combination
`B.
`Bose argues that, at a bit rate of 128 kbps, the Nomad would store about 60
`
`minutes of stereo music, that a Sony minidisc would store 74 minutes of stereo
`
`recordings, and that one would not want to make the substitution because the
`
`Nomad would provide less storage. The fatal flaw in this argument is the fact that
`
`MP3s can be recorded at different bit rates, so one could lower the bit rate and
`
`increase the capacity of the Nomad.1 Both experts agree on this. (See Ex. 2015, at
`
`225; Ex. 2026, at ¶¶ 33-38.) For example, one could record stereo MP3s at 64
`
`kbps, which would double the Nomad’s capacity to 120 minutes of stereo music.
`
`(Id.) The quality of the music would decline, but a user certainly might choose a
`
`lower quality recording as a fair trade-off for the additional music.
`
`Bose tries to address this by having its expert assert, without any support,
`
`1 Petitioner focuses on stereo recordings to compare apples to apples.
`
`5
`
`
`
`that one could similarly reduce the bit rate used in the MiniDisc. That is wrong.
`
`ATRAC used a fixed bit rate, like the CD format, that always provided for the
`
`same recording length. This is clear from the MiniDisc manual itself, as that
`
`device was a Sony MiniDisc recorder that provides no mechanism for varying the
`
`bit rate of the recordings, and the recording and playback time was “maximum 74
`
`minutes.” (See Ex. 2013, at 32; see Ex. 2021, at 2.) With no support for his
`
`assertion to the contrary, Dr. Stevenson’s testimony should be disregarded. See
`
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327-
`
`28 (Fed. Cir. 2012) (rejecting conclusory, unsupported expert testimony).
`
`Addionally, the question is whether one of skill in the art, with an
`
`understanding of the teachings of the prior, would have created a new system that
`
`used flash memory to store MP3s, instead of discs to store ATRACs. Dr.
`
`Stevenson acknowledged that the “long-term” trend in the industry was to increase
`
`memory. (See Ex. 1018, at 90-91.) Dr. Stevenson also agreed that adding memory
`
`would just have been a “trade-off” and a “marketing decision.” (Id. at 91-92; see
`
`Ex. 2022, at 7.) Thus, it would have been an obvious design (or marketing) choice
`
`to add more memory to increase the capacity of the MP3 player.
`
`Other Reasons to Combine
`1.
`Bose does not actually argue that there are no reasons to combine and, in
`
`fact, there are many others, including the following:
`
`6
`
`
`
`Format: The MiniDisc used Sony’s ATRAC format, rather than the
`
`popular MP3 format, and MP3 were widely available as downloads from the
`
`Internet. (See Ex. 1005 at 000007, 0000012, & 000022; Ex. 1018 at 58, 86-87; Ex.
`
`2013 at 32; Ex. 2021, at 2.) It would have been desirable to use the device that
`
`supported the most common music format.
`
`Tags and Display: The MP3 format used “ID3” metadata, which was data
`
`stored in the music file with information such as the artist name and the track title.
`
`(See Ex. 2022, at 13, 15, 20, 23; Ex. 1018, at 148-9.) The Nomad would use the
`
`data to display name of the artist and track. (See Ex. 1005 at 00018.) The
`
`MiniDisc, on the hand, showed only the track number and time. (See Ex. 2013 at
`
`16-17.) It would have been desirable to use a format/device capable of providing
`
`the user information about the music, especially when browsing through the music.
`
`Solid State: The Nomad used solid state compact flash memory instead of a
`
`spinning disc, eliminating the possibility of skipping should the device be shaken.
`
`(See Ex. 1005 at 000007.) The compact flash format would also not be subject to
`
`scratching, a problem that has always plagued optical discs.
`
`2.
`
`There is No “Teaching Away”
`
`Bose asserts that “if a person skilled in the art desired to use Nomad with
`
`SMS . . . that person would have simply connected the appropriate cable between
`
`the headphone jack of Nomad.” (Paper 17, at 19.) As the Board has already
`
`7
`
`
`
`observed, however, a person doing that would not have the ability to use the
`
`remote to control both the Sony Music System (e.g., volume) and the attached
`
`music device (e.g., music transport). (See Paper 11, at 20.)
`
`The point of the combination is that a person of skill in the art aware of the
`
`Sony Music System’s ability to allow a user to use the remote to control both the
`
`volume of the Sony Music System and the MiniDisc playback would want that
`
`same functionality available, but with an MP3 player rather than a MiniDisc
`
`player, for the numerous reasons described above. Bose’s proposed alternative
`
`combination would lose desirable functionality.
`
`Bose’s argument also fails because it is not based on the perspective of one
`
`of skill in the art. The line-in jack was provided in the system and described in the
`
`manual to allow an end user to easily connect a different device to the system.
`
`The point of the combination is that a person of skill in the art—one who is a
`
`designer of such systems—would be interested in retaining all of the features of
`
`the Sony Music System while taking advantage of the benefits of the MP3 format.
`
`Bose tries to distinguish In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012), by
`
`arguing that “SMS provides a single teaching for connecting optional audio
`
`components to the boombox.” (Paper 17, at 19.) That is factually incorrect. Both
`
`the MiniDisc and other devices that might connect to the line-in jack were
`
`optional. There are two ways to connect a source, (1) like the MiniDisc, which has
`
`8
`
`
`
`robust remote functionality, and (2) the line-in jack, which does not.
`
`The fact that the MD connecting cord is “proprietary” is beside the point,
`
`because the combination does not require that the Nomad be physically connected
`
`to the Sony system, but rather that it would have been obvious to one of skill in the
`
`art designing a different system to implement that same functionality. Nor is the
`
`possibility of interference a reason to not make the combination; certainly it was
`
`not big enough issue to prevent Sony from making and selling these products.
`
`In the end, it is hard to imagine a more straightforward or intuitive
`
`combination than substituting an MP3 player for the MiniDisc.
`
`3.
`
`The Combination Does Have All Elements of Claim 1
`
`Because the properly construed claims do not require network accessibility,
`
`as already determined by the Board and explained above, Bose’s argument about
`
`needing a network is unavailing. Moreover, even if the Board were to change its
`
`construction of “any one of” as requested by Bose, the result would not change.
`
`In the preamble, the claim simply requires that the audio system be
`
`“configured to connect to a separate computer” where the “separate computer”
`
`provides audio information from one source (or, under Bose’s interpretation, more
`
`than one source). The computer is not part of the claimed structure, and an audio
`
`system “configured to connect to a separate computer” that provides audio
`
`information from one source will also, necessarily, have the structure required to
`
`9
`
`
`
`connect to another. Nowhere does the patent explain how to “configure” the audio
`
`source to receive audio information from one source as opposed to any other.
`
`The same is true with respect to the language in the body of the claim: “a
`
`connector . . . between the sound reproduction system and the computer, wherein
`
`the connection is configured to . . . receive audio information from the computer
`
`corresponding to the digital music files stored on the computer and audio
`
`information from the network via the computer.” A “connector” with a
`
`“connection configured to . . . receive audio information” from one source is
`
`necessarily configured to receive audio information from any other source, and the
`
`patent certainly does not teach otherwise, meaning that any connector/connection
`
`that can receive audio information will meet the claim language.
`
`Additionally, the Nomad was a “separate computer” capable of supplying
`
`music from files that existed in the internal memory, as well as files that would be
`
`downloaded from an attached personal computer, which would be music files from
`
`“a network [the Nomad and the Personal computer] accessible by the [Nomad].”
`
`As it was well-known in 2000 to have networks of personal computers, the Nomad
`
`also could provide audio from files stored on a PC that was on a local network.
`
`4.
`
`The Combination Has All Elements of Claim 28
`
`Bose argues that “on” and “off” are “function[s] related to the control of
`
`audio information.” That is not true. A user could turn the device on, and then
`
`10
`
`
`
`turn the device off, without ever controlling audio information, or doing anything
`
`even related to controlling audio information. For example, a user desiring to
`
`know the state of the battery could turn the device on, check the battery indicator
`
`on the display, and then turn the unit off, without ever doing anything that is
`
`related to controlling audio.
`
`III. GROUND IV IS NOT “DEFECTIVE”
`
`A.
`
`The Combination Does Include All Claim Elements
`
`Bose’s argument about metadata in the files misses the mark because the
`
`claims do not say that the assemblages are based on metadata in the files. Instead,
`
`the claims say that the assemblages are based on “type[s] of metadata included in
`
`the music files.” The types of metadata included in the files would be, for
`
`example, artist, album, track name, or genre. There was (and is) a convention for
`
`the set of types of metadata included in the files, implemented in the 1990s as the
`
`ID3 standard. (See Ex. 2022, at 13, 15, 20, 23; Ex. 1018, at 148-9.) In fact, this is
`
`acknowledged in the patent. (See Ex. 1001, 7:20-23.)
`
`The claims, therefore, mean that the assemblages are based on types of
`
`metadata (for example, artist, album, genre, etc.), not the metadata (“The Beatles,”
`
`“Abby Road,” “Here Comes the Sun,” “Rock”) itself. (See, e.g., Ex. 1013, Fig. 7,
`
`2:27-29, 10:22-34, 11:1-22; Ex. 1017, ¶¶ 46-50.) Looney’s categories are the same
`
`as the claimed “type[s] of metadata included in the music files.” Moreover, these
`
`11
`
`
`
`claims also would be obvious if they did require using metadata “located in the
`
`music” file, as Bose argues. This is because the metadata in a file necessarily
`
`describes the music in that file. The sorting would use the artist who recorded the
`
`track, lest a user seeking Rachmaninov get songs by Hootie and the Blowfish.
`
`B.
`
`There Would Have Been a Reason to Combine
`
`Bose’s calculation uses the lower sixty-minute capacity for high quality
`
`recordings, and then simply assumes that “the average song length is four
`
`minutes.” In fact, one analysis found that the average length of songs was 2:41 in
`
`the 1940s, 2:36 in the 1950s, 2:59 in the 1960’s, 3:55 in the 1970s, 4:08 in the
`
`1990s, and 4:14 in the 1990’s, an overall average of about 3:25. (See Ex. 1019.)
`
`So, a Nomad would hold about 45 songs from the 1940s or 1950’s, and more than
`
`35 songs at the average length from the 1940s to the 1980s. Looney’s method
`
`would allow one to narrow a search by selecting a genre and then artist, rather than
`
`scrolling though 35 or 45 songs one-by-one.
`
`Bose’s argument also assumes that the MP3 storage in the device that the
`
`person of skill in the art was designing would include no more memory that was in
`
`the Nomad. There is no reason why the hypothetical attached device could not
`
`have more memory, as it certainly would have been desirable, as explained above.
`
`IV. GROUND III IS NOT “DEFECTIVE”
`
`A.
`
`There is No “Teaching Away”
`
`Bose does not argue that the combination described by Dr. Lippman is not
`
`12
`
`
`
`reasonable, or that it would not work. Instead, Bose simply offers two alternate
`
`ways of accomplishing the same thing, which (conveniently for Bose) omit
`
`elements of Bose’s claims. (Paper 17, at 34-36.) But even with three “identified,
`
`predictable solutions,” instead of two, the choice of one is still just routine
`
`engineering. Neither of the cases cited by Bose are analogous. See Spectralytics,
`
`Inc. v. Cordis Corp., 649 F.3d 1336, 1343 (Fed. Cir. 2011) (advantages of
`
`dampening vibrations would teach away from using those vibrations); Fluor Tec,
`
`Corp. v. Kappos, 499 Fed. Appx. 35, 41-42 (Fed. Cir. 2012) (teaching to not use an
`
`expander in a low-pressure system would teach away from doing that).
`
`The Lippman testimony cited by Bose does not show “hindsight,” but only
`
`that while Dr. Lippman may have considered Bose’s alternative combination, he
`
`did not describe it in his report, because it did not meet all of the limitations.
`
`B.
`
`The Combination Would Meet the Elements of Claims 1 and 28
`
`To the extent Bose’s argument is based on its disagreement with the Board’s
`
`construction of “audio signal processing circuitry,” it fails for the reasons
`
`explained above. And, even if the amplifier were not “audio signal processing
`
`circuitry,” the Altec Lansing manual describes Dolby Digital, Dolby Pro Logic and
`
`3D Gaming modes, would have been implemented by “audio signal processing
`
`circuitry.” (See Ex. 1011, at 6.) The argument that the signal processing circuitry
`
`is not in the same housing as the “control circuitry” fails for a number of reasons.
`
`13
`
`
`
`First, Bose appears to be of the view that the amplifier is in the subwoofer
`
`and that the “control circuitry” is in one of the satellites. The “control circuitry,”
`
`however, extends from the satellite though the cable that connects to the
`
`subwoofer, and into the subwoofer, which is the only way that the remote control
`
`signals received by the IR receiver can get to the amplifier that Bose says is in the
`
`subwoofer. Second, there is no reason why “the claimed housing” cannot include
`
`each of the speaker enclosures, which together are the housing for the speaker
`
`system. Finally, this is an obviousness argument. The decision about which box
`
`should include the control circuitry and which box should include audio signal
`
`processing circuitry is simply a matter of design choice, particularly given the lack
`
`of any teaching about advantages or disadvantages.
`
`Bose’s argument about page 7 of the reference being from a different
`
`manual is irrelevant, because Petitioner need not rely on that page. Pages 4 and 5
`
`of the manual show the overall ADA310W system, and page 6 confirms that it
`
`included the various music modes, and was remote controllable.
`
`C.
`
`The Dependent Claims Are Obvious As Well
`
`The AM/FM radio limitation is nothing more than a combination of known
`
`elements to achieve an expected result. The reason to include a radio is the same
`
`reason that radios have been included in everything from cars to clocks—people
`
`like to listen to radio broadcasts. The person of ordinary skill in the art designing
`
`14
`
`
`
`the next system would have known that “us[ing] or adapt[ing] one of the inputs on
`
`the subwoofer” would require that the end user purchase a radio tuner, where the
`
`desire would be to provide a radio, not just a way to connect a radio. Bose’s
`
`concerns about “interconnections,” are overwrought, as wires already connected
`
`the units, and such connections would have been well within the abilities of the
`
`skilled artisan, and the suggested problem of “interference” is hypothetical at best
`
`and, at worst, could be addressed by appropriate shielding, a common issue that
`
`would have been known to those designing speaker systems.
`
`With respect claims 21 and 48, Dr. Lippman explained that, given that the
`
`remote of the combination already controlled both sources, it would have been
`
`obvious to have buttons on the speaker provide the same, which is an arrangement
`
`that is found in the both the Sony Music System and the prior art Bose Wave
`
`Radio. This would be especially useful, for example, if the batteries of the remote
`
`were to fail, or if the remote were to be misplaced. While one could also control
`
`the music with the software, that would mean changing applications, which might
`
`not be desirable if, for example, all one wanted to do was skip a track.
`
`V.
`
`GROUND VI IS NOT “DEFECTIVE”
`
`This combination would have been obvious as explained in Ground IV.
`
`That MusicMatch already had a system for organizing music does not mean that it
`
`would not have been obvious to the substitute the better system of Looney.
`
`15
`
`
`
`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`..
`/Matthew B. Lowrie/
`Matthew B. Lowrie, Reg. No. 38,228
`
`Date: June 18, 2014
`111 Huntington Avenue, Suite 2600
`Boston, MA 02199-7610
`Tel: (617) 342-4000
`
`16
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing Reply and Exhibits 1018
`and 1019 were served electronically on counsel for patent owner Bose
`Corporation, on June 18, 2014, in their entirety:
`
`Dorothy P. Whelan, Reg. No. 33,814
`Whelan@fr.com
`
`W. Karl Renner, Reg. No. 41,265
`axf@fr.com
`
`Mark J. Hebert, Reg. No. 31,766
`Hebert@fr.com
`
`IPR2556-0006IP2@fr.com
`IPR25556-0007IP2@fr.com
`
`FOLEY & LARDNER LLP
`
`..
`/Aaron W. Moore/
`Aaron W. Moore, Reg. No. 52,043
`
`17
`
`
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