Trials@uspto.gov Paper No. 35
`571-272-7822 Entered: November 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SDI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2013-00350
`Patent 8,401,682
`Case IPR2013-00465
`Patent 8,364,295
`____________
`
`Held: September 4, 2014
`____________
`
`
`
`Before: KARL D. EASTHOM, MICHAEL J. FITZPATRICK and
`DAVID C. McKONE, Administrative Patent Judges.
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`
`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`
`MATTHEW B. LOWRIE, ESQUIRE
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`
`AARON W. MOORE, ESQUIRE
`
`
`Foley & Lardner
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`111 Huntington Avenue, Suite 2600
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`
`571-272-7822 Entered: November 6, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SDI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2013-00350
`Patent 8,401,682
`Case IPR2013-00465
`Patent 8,364,295
`____________
`
`Held: September 4, 2014
`____________
`
`
`
`Before: KARL D. EASTHOM, MICHAEL J. FITZPATRICK and
`DAVID C. McKONE, Administrative Patent Judges.
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MATTHEW B. LOWRIE, ESQUIRE
`
`
`AARON W. MOORE, ESQUIRE
`
`
`Foley & Lardner
`
`
`111 Huntington Avenue, Suite 2600
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`
`
`
`
`Boston, Massachusetts 02199-7610
`
`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`
`
`ON BEHALF OF PATENT OWNER:
`
`
`MARK J. HERBERT, ESQUIRE
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`
`JOLYNN LUSSIER, ESQUIRE
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`DOROTHY P. WHELAN, ESQUIRE
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`
`Fish & Richardson
`
`
`One Marina Park Drive
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`Boston, Massachusetts 02210-1878
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`
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`The above-entitled matter came on for hearing on Thursday,
`September 4, 2014, commencing at 10:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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` P R O C E E D I N G S
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`JUDGE EASTHOM: Good morning, everyone. We're
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`here for IPR2013-00350 and 2013-00465. We have here remotely
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`Judge McKone and Judge Fitzpatrick, welcome. How about we'll
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`start with Petitioner, why don't you introduce yourselves for the
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`record, please.
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`MR. LOWRIE: Thank you, Your Honor, on behalf of
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`SDI, Matt Lowrie and Aaron Moore of Foley & Lardner.
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`JUDGE EASTHOM: Welcome. And then Patent
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`Owner?
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`MS. WHELAN: Your Honor, I'm Dorothy Whelan, I'm
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`lead counsel for Patent Owner, I am here with my colleagues, Mark
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`Hebert and Jolynn Lussier, and they will actually do the hearing.
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`JUDGE EASTHOM: Great, good morning.
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`MR. HEBERT: Good morning.
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`JUDGE EASTHOM: We do have a couple of initial
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`issues before us. Yesterday, or two days ago, we had a telephone
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`conference, and unfortunately, we weren't privy to your other email
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`about certain exhibits that the Petitioner has for the hearing. We just
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`want to initially, we looked at the objection and we looked at the
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`email, and we think that in this situation -- it looks like counsel wants
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`to say something. Why don't you go ahead.
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`MR. HEBERT: If I can address it, I might be able to
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`move it along a little bit.
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`JUDGE EASTHOM: Thank you.
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`MR. HEBERT: With respect to we made two objections.
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`The second objection was with regard to slide numbers 43 and 52, and
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`we're going to withdraw that.
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`JUDGE EASTHOM: Okay.
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`MR. HEBERT: So, that's off the table. With respect to
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`the first objection, we withdrew yesterday our objection as to two of
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`those slides, and we informed counsel, numbers 26 and 36 are no
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`longer objected to.
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`JUDGE EASTHOM: Okay.
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`MR. HEBERT: And if I can clarify the basis for the
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`objection, I think it will move things along. We've objected to, and
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`this still stands, slide number 16 through 24, 29, and 34 through 35.
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`And this relates to the issue we raised with the July 11th email, and
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`our understanding is that in the course of ruling on this matter, the
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`Board is going to decide whether or not to exclude SDI's arguments,
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`but we also understand that SDI is going to be permitted to make them
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`here.
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`So, what we wanted to do is to flag these particular
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`objections to make them of record, for one thing, and secondly, in the
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`event that the Board does exclude SDI's new arguments, it would
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`know which slides relate to the new arguments, and which slides to
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`exclude and the argument relating to those slides to exclude as well.
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`JUDGE EASTHOM: I appreciate that, Counsel. So, in
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`other words, you don't expect us to rule today whether -- I think we'll
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`just go forward, from what I understand, and we'll go forward with the
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`slides and we'll make our ruling whether or not those are proper as we
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`go forward and determine what we're going to do in the final decision.
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`MR. HEBERT: And I think a lot will have to do with the
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`extent to which they use or don't use those slides.
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`JUDGE EASTHOM: And we'll hear from Petitioner
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`briefly, and just so the record is clear, this will just be with respect to
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`slides 16 to 24, 29 and 34 to 35?
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`MR. HEBERT: That's correct.
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`JUDGE EASTHOM: Okay, thank you.
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`MR. LOWRIE: We're sitting here, honestly, Your
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`Honor, a little perplexed in that we didn't know that any objections
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`had been provided to the Board and certainly they weren't provided in
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`a time frame that the Board could hear them two days in advance,
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`which is what the rules require.
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`That said, I don't think it makes a difference, especially if
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`I'm not going to be interrupted in my presentation, and I understand
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`the Board will take up that issue at a future time, and I wouldn't think
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`that waiving an objection to a demonstrative would waive the
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`underlying argument anyway.
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`JUDGE EASTHOM: Okay. Well, I think we're all on
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`the same page, and thank you both for the clarification. I think I
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`understand. In other words, we're going to hear the demonstratives,
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`they're not entered as evidence, there is an underlying issue about
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`whether or not the scope of the reply is proper to the Patent Owner
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`response. Some of these slides may or may not shed light on that.
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`Patent Owner's position is his objections just merely
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`point out which part of your argument is outside the scope of the
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`Patent Owner response. In that sense, it's helpful even to have the
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`slides, because they're part and parcel of the argument about whether
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`it's proper scope. So, I think we're all on the same page.
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`MR. HEBERT: I just wanted to mention, they were,
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`indeed, served on SDI on Tuesday. The objections were.
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`JUDGE EASTHOM: I think there was some confusion
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`because we had an extension for how and when the slides were due,
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`so therefore the objections would have been due a little later. I don't
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`know when the actual email was, but be that as it may, the objection is
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`Case No. IPR2013-00465, Patent No. 8,364,295
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`really neither here nor there because they're coming in, we're going to
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`talk about them. So, and they're not evidence.
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`That said, Petitioner, you have the burden, you have 75
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`minutes. We're going to talk about both cases, I understand, together.
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`You can reserve rebuttal time.
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`MR. LOWRIE: Yes, Your Honor. In appeals I usually
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`seek two to one, so I would like to go 50 to 55 minutes on open and
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`reserve 25 minutes. I understand we each get 75 total.
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`JUDGE EASTHOM: Right. And it's 10:07 now, 10:08,
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`roughly, according to my computer. So, you want to reserve?
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`MR. LOWRIE: Twenty to 25 minutes.
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`JUDGE EASTHOM: Twenty to 25, okay.
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`JUDGE McKONE: And, Mr. Lowrie, before we begin,
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`can you hear me okay in Detroit?
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`MR. LOWRIE: Yes, Your Honor.
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`JUDGE McKONE: And when you refer to a slide in
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`your demonstrative, please delineate so I can follow along in Detroit.
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`MR. LOWRIE: I will do my best, Your Honor. I am not
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`as good as I would like to be in that, so please interrupt me if I'm
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`falling down.
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`JUDGE McKONE: Will do.
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`MR. LOWRIE: Thank you, Your Honors, thank you for
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`your time. In my other arguments before this Board, there has been a
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`request for status of other proceedings. There is a parent application,
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`a parent patent, a parent application and a parent patent that's been
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`subject to an inter partes re-examination proceeding, all of the claims
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`rejected, one of them on an alternative new ground, so it was
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`remanded to the examiner, we entered the objection, the Board
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`affirmed, there was a motion to reconsider. That's the status. The
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`motion to reconsider is pending.
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`There is also a continuation patent application, which has
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`been finally and fully rejected, and is on appeal to the Board. And
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`now we have these two inter partes reviews on these two patents, all
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`out of a common parent, and there are two other inter partes reviews
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`on these same patents that we just didn't have quite the time to get into
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`one proceeding, and so that will be a later proceeding.
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`So, to begin, if we could go to, I guess we might as well
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`go to slide 3. So, this is just Figure 1 from the patent, as can be seen,
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`and I thought it's worth just touching base on, on what's there. There's
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`a remote 17, there's a speaker which is shaded in yellow there, and
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`then there's a personal computer, might be desktop, laptop, whatever,
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`to the right, that's kind of like a lighter green and then you see the
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`monitor and whatnot.
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`These are conventional things. So, for example,
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`according to the patent, that thing on the left could be a pre-existing
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`Bose wave radio or wave radio with CD, which came with a remote,
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`and then there was a personal computer that they had some software
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`for, and they would use the remote to control both the speaker system
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`and the personal computer.
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`Go to the next slide. So, this is just another way of
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`representing it that's a little bit simpler and laid out more easily on
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`slide 4. And that shows a remote on the left. It can do things like
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`control speaker volume and whatnot. It can cause the computer to
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`play and whatnot. So, it communicates with the speaker, like a Bose
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`wave radio, according to the patent.
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`And then on the right is the computer. At the time the
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`patent was applied for, there weren't iPads, and this is just -- but it is
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`being asserted in that context now, which is why we're here.
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`Slides 5 and 6, I won't spend a lot of time on, go ahead
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`and hit the highlighting. They're essentially identical, showing claims
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`1. The difference being that claim 1 in the '295 patent says an
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`amplifier and claim 1 in the '682 patent says audio signal processing
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`circuitry, of which we believe an amplifier is one type. I don't think
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`that there's any issue before the Board that identifies a difference
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`between these two claims.
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`So, now go to slide 7. Claim construction. I think that
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`the one claim construction -- although it may break into several by the
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`time we're done -- issue before the Board right now, the Board's
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`already ruled on there was an opening petition, there was a
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`preliminary response where claim construction was argued to the
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`Board. The Board made a ruling, and it concerns -- go to the next
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`slide -- this language in the preamble, "configured to provide audio
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`information from any one of a plurality of sources, including digital
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`music files stored on the computer and a network accessible by the
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`Case No. IPR2013-00350, Patent No. 8,401,682
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`computer," and there's two things and two issues that come in here.
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`The Board construed any one of a plurality to mean any one of them,
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`it doesn't have to be each of them.
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`And the second part, and I'll show it in a minute, the
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`Board said that configured -- that the claim, if it's directed to a
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`speaker, as Bose contends, it doesn't really matter, you know, you
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`receive using a wire, whether it's coming from digital music files, or
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`it's streamed. The speaker doesn't know.
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`So, if we go back to the slide showing the patent figure,
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`slide 4, slide 4, next one. So, if you're talking about music signals
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`coming from the computer, the speaker sitting there has no idea
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`whether it's being streamed off the Internet or if it's being supplied in
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`an analog signal out of an audio music file. It just sits there, it gets it,
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`it amplifies it and that's that. And, so, the Board also made a finding
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`on that.
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`So, if we go to the Board's holding, which we believe to
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`be correct, on slide 9, the Board looked at the ordinary meaning of
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`"any one." And they said, "any one means any single one." So, it
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`could be streamed, it could be out of a digital audio file.
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`If we go to the next slide, we can look at really the
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`primary case relied on by Bose, and that's Superguide, and the
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`language is not in Superguide "any one of," it is "at least one of." And
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`what the Court said in that one was, in the context of that patent,
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`among other things, if we look at that, it needs at least one of a start
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`time, might have more than one start time, it needs at least one of an
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`Case No. IPR2013-00350, Patent No. 8,401,682
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`end time, it might have more than one, and it was a list of categories.
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`That's very different than saying any one. At least one from each is
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`very different than saying any one of these plurality of things, and the
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`ordinary meaning of that is exactly what the Board found, any one of
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`them, not each of them.
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`I think the other point that's worth considering here is
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`that Superguide was a claim construction case in a litigation
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`proceeding. The broadest reasonable construction, even if there were
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`a debate about what "any one" means, broadest reasonable would
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`mean what the Board found, any one, not each.
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`If we go to slide 11. The second part of the issue on this
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`concerns the Board's second finding, which is that it says any one of a
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`digital audio file, or let's say streaming, the speaker can't tell the
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`difference. It's receiving, for example, an analog music signal, it
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`doesn't know what generated it. And that's what the Board found. If
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`we could show page 21 of the Board's decision.
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`We look at -- so, I'm about to show, it's not on the
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`demonstratives, but it's from the Board's decision, I hope, it says,
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`"This claim limitation does not require a connection that actually
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`receives audio information from a network, it requires a connection
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`that is configured to do so. On the record before us we are persuaded
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`that a connection that receives digital audio information is also
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`configured to receive it if it's coming from some other source. The
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`Board was right about that and on this record there's nothing contrary
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`to it.
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`Case No. IPR2013-00350, Patent No. 8,401,682
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`So, like a number of issues, the Board made specific
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`findings and conclusions when it granted the petition, and in this case,
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`there's nothing to rebut it.
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`So, when you look at any one of A and B, you have to do
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`that in this case in the context of the fact that it's the same thing,
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`whether it's A or B.
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`If we go to slide 12 --
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`JUDGE EASTHOM: Just off the top, is there something
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`different if you're receiving digital information and you're receiving
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`analog, are those two different streams coming in?
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`MR. LOWRIE: Those would be different streams, but
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`the claims would cover analog music coming out of the PC, and so it
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`wouldn't make a difference in that context. So, unless the computer is
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`a part of the claim, the configured to receive is going to be the same.
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`JUDGE EASTHOM: I see, so what's coming out of the
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`computer has already been changed so that it always comes out the
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`same way, and it could be, according to this claim. Is that your
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`position?
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`MR. LOWRIE: Well, that's correct, and in the context of
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`this case, Your Honor, they talk about a digital to analog converter,
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`and in the earlier case, there was a litigation and we said the claims,
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`because of the way they were written, required a digital analog
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`converter in an interface unit, and 143 of 144 accused products were
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`found not to have that and there was no infringement for the vast
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`majority of everything.
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`Case No. IPR2013-00350, Patent No. 8,401,682
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`So, Bose went about fixing that, because in an iPod, it's
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`actually analog coming out of the iPod, and so that's what they're
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`asserting. So, it would meet that limitation for the analog, and there
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`has been no argument in the record or anywhere, no suggestion from
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`any expert that there would be any difference between the type of
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`connector for one rather than the other.
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`JUDGE EASTHOM: So, in other words, the claim
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`construction issue doesn't -- under one theory, it doesn't matter,
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`because either way, you're going to get the same information from a
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`plurality of both types of sources?
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`MR. LOWRIE: That's right, the connector looks the
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`same either way.
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`JUDGE EASTHOM: Okay.
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`MR. LOWRIE: So, if we go to slide 12, once again, and
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`this is to the same theory, the Board made this finding, I just showed
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`you it on page 21, and there has been nothing to contest that finding in
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`Bose's opposition.
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`So, now if we go to the next -- we're on ground 1, which
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`is going to raise some of the new issue stuff, I suppose, it's the Sony
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`Music system, and then I suppose we could say in parenthesis, plus
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`Nomad, it becomes alternative grounds for unpatentability, whether
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`combined with or even if you don't combine.
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`So, go to slide 14. This shows -- this is from the prior art
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`reference. I will make a comment here, both sides to some degree
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`have, although we haven't done it, have shown like PDFs of briefs in
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`their slides, and when I first looked at slides, I was like, wow, that's in
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`the evidence, and the answer is no, it's not, it's a PDF of an attorney
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`argument. Nobody is intending to mislead anybody on that, I just
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`want to be clear.
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`But this is from the reference, this is not a drawing we
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`did. This is the Sony Music system in the prior art, and you can see
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`that there's basically a speaker system on the left, and on the right, it
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`shows the Sony Music disc, and it's got a specialized cable so that
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`when you're using your remote with the -- we could call it a boombox,
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`I suppose, it gets passed through so that you can control the minidisc
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`as well. So, you have a remote on the boombox, you can issue
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`commands to control the minidisc. Okay?
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`And that is a piece of prior art, turns out it meets all the
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`limitations of claim 1, we put that in our original petition, I'll show
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`that in a minute. But when we get to the Nomad, the Nomad is a prior
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`art portable MP3 music player, kind of like a predecessor to the iPod,
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`and the issue that will come up is, is it obvious to connect a Nomad
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`the way the minidisc is connected, and if it is, then the combination is
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`proper.
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`So, if we go to slide 15, that shows basically the system
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`of the patents and how it aligns with the Sony Music system, or SMS
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`it's referred to in the briefing. They both have a remote, they both
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`control the speaker volume, so the speaker, they both control the -- in
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`this case a portable device, such as causing it to play. They both have
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`a speaker, the boombox, for Sony. And they both have a type of
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`computer for these purposes, a minidisc player. And I don't think that
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`there's a suggestion that it's not.
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`So, if we go to the next slide, slide 16, when we look at
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`this, actually if we could go back to the preceding slide for just a
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`second -- no, one more. There's nothing about that connector from the
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`minidisc, which is just sending a music signal, that's going to tell you
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`anything about whether it was from a CD, whether it's from an MP3,
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`whether it's streamed off of the Internet, or anything else. When it's
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`going to the boombox, it's being read out of the portable thing.
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`And, so, that connector itself, and there's no suggestion
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`that -- there's plenty of suggestion that it's a connector that receives
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`everything, as the Board found when granting the petition, and there is
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`not an iota, really, of credible record evidence to say that you couldn't
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`use it for other types of devices. The Board expressed --
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`JUDGE McKONE: Mr. Lowrie, is the cable between the
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`minidisc player and the boombox, is that carrying digital music files?
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`MR. LOWRIE: No, I believe that like the iPod to the
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`wave radio that's accused of infringement in the underlying litigation,
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`it's an analog signal coming out.
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`JUDGE McKONE: How is that configured to provide
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`audio information from any one of a plurality of sources, including
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`digital music files?
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`MR. LOWRIE: So, assuming the preamble is limiting, it
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`is taking digital music files on the CD and converting them to analog
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`music, and then you can play it in your earphones or you can play it
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` 14
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`on the boombox. And it's identical in this regard to the accused
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`infringement of the iPods. I mean, they're saying -- and that's the
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`whole point here, as the Board found on page 21 of the decision, if
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`you're taking the signal here, you can't tell where it's coming from. If
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`it's in analog, and their claims purport to cover speakers that receive
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`the signal in analog form.
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`JUDGE McKONE: So, it's your position that when the
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`claim recites configured to provide audio information from any one of
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`a plurality of sources, it can convert from digital to analog in the
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`computer and then send analog information to the speaker system. Is
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`that correct?
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`MR. LOWRIE: Not quite, Your Honor. The view that
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`we have on this, is the one on page 21 of the decision granting the
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`petition, which is if you have a computer -- if you have a computer
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`that needs to get information that's digital, if that's a part of the claim
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`limitation, then the computer is a part of the claim. Bose -- I would
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`beg that you ask Bose, but Bose keeps saying the computer is not part
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`of the claim. So, if you can't look at the computer, you can't tell
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`what's generating the analog signal.
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`If you do look at the computer, and this is the reason the
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`petition was filed the way we were, we were afraid it would be found
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`the computer is limiting. If you do look at the computer, the minidisc
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`does have digital audio files, and it does convert them and send them.
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`So, it would meet the computer limitations in the preamble. So, if
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`they're limiting, if the computer is a part of the claim, it would meet
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`that, and --
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`JUDGE McKONE: Well, look at some claim language
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`that is -- that we probably can agree is limiting, the connector had to
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`be configured to receive audio information from the computer
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`corresponding to the digital music files stored on the computer.
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`MR. LOWRIE: Yes.
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`JUDGE McKONE: It's your position that the connector
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`does not have to be configured to receive digital information, it just
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`has to be configured to receive information that at one time has been
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`converted from digital information?
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`MR. LOWRIE: That is exactly correct, because the
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`conversion is happening in the claim in the preamble and it's
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`happening at the computer. So, it doesn't need to receive digital audio
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`music files.
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`JUDGE McKONE: I'm sorry, where in the preamble is
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`the conversion taking place?
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`MR. LOWRIE: It's the computer configured to provide
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`audio information, that's the analog signal, from any one of a plurality
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`of sources, including digital music files in a network accessible.
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`JUDGE McKONE: And what's your support for audio
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`information being analog?
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`MR. LOWRIE: That comes from the spec, and it's also
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`the preliminary conclusion of the Board on page 21. We don't see that
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`there's a difference, and there's been not an iota of suggestion in the
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` 16
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`record anywhere in response to the Board's conclusion that there is a
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`difference.
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`JUDGE McKONE: Okay.
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`MR. LOWRIE: Thank you, Your Honor.
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`So, now if we go to --
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`JUDGE EASTHOM: Can I ask you a quick question?
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`MR. LOWRIE: Of course.
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`JUDGE EASTHOM: You mentioned that the same
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`output from the minidisc, that that goes for earphones, is that the same
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`as --
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`MR. LOWRIE: No. So, for earphones here, that would
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`be the aux line, and it wouldn't have the ability, for example, to pass
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`commands to the minidisc. That's why they have the different
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`interface. They're like, well, we could do that, just use the aux line,
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`except we want to pass the remote commands.
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`And just to be -- actually, I conferred with counsel, and I
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`focused on the analog because that's actually what's in the iPod.
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`There is actually also there's two modes of output from the minidisc,
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`digital output and analog. So, you can actually pick which one.
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`JUDGE EASTHOM: Is that in the record somewhere
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`that we can cite?
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`MR. LOWRIE: Yeah, can you? Again, there wasn't an
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`argument based on this, so we didn't highlight it, but we'll find it now.
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`JUDGE EASTHOM: Well, we can move on. You can
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`give that to us later, if you want. I don't want to hold you up.
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` 17
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
`
`
`MR. LOWRIE: So, while he's looking for that, if we can
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`just jump forward, Mr. Moore.
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`JUDGE EASTHOM: You wanted to stop at about 20
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`minutes, so you have two minutes left for 20.
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`MR. LOWRIE: No, I'm sorry, I wanted to stop at about
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`50 minutes for the opening and reserve 20 to 25.
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`JUDGE EASTHOM: Fifty, I'm sorry.
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`MR. LOWRIE: I think Your Honor might not have let
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`me reserve most of my time for rebuttal.
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`JUDGE EASTHOM: You can do it, it's your time, so --
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`that might not be an important point, I was curious because I heard
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`you say that something about the earphones and I thought you were
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`trying to make a connection between that and the --
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`MR. LOWRIE: No, really just to relate it to what's
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`happening. So, I'm looking at the SMS personal audio system, which
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`is Exhibit 1002, on production page 41, which is where that image we
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`were showing is coming from, below it there's an image that shows
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`the MD connecting cord, which is supplied, and then a digital
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`connecting cable for digital audio in and out.
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`So, in this case, and to address both your question, Judge
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`Easthom, and Judge McKone's, it actually has both in the minidisc.
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`JUDGE McKONE: Which exhibit and which page? I'm
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`sorry, which exhibit and which page?
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`MR. LOWRIE: This is Exhibit 1002, production page
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`41. And again, it's the same page that we were showing, it's down
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` 18
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`below, and here it is shown on the screen, Your Honor, it shows the
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`MD connecting cord supplied, and then it shows a digital connecting
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`cable.
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`cord?"
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`JUDGE EASTHOM: So, the analog is which one?
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`MR. LOWRIE: The analog would be the top.
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`JUDGE EASTHOM: Where it says "MD connecting
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`MR. LOWRIE: Exactly.
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`JUDGE FITZPATRICK: Excuse me, which slide are we
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`looking at right now?
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`MR. LOWRIE: This is not a slide, this is --
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`JUDGE FITZPATRICK: Okay, I have the exhibit.
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`MR. LOWRIE: Yeah, and again, it's referred to on the
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`slide because the figure at the top of the page is what we showed, this
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`is just below it.
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`JUDGE FITZPATRICK: Okay. Yep.
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`MR. LOWRIE: So, if we go back to slide 17.
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`JUDGE EASTHOM: Is your basic contention that you
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`always argued anticipation, or is it that you did -- you left it open and
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`that now you're responding to claim construction? I'm not sure,
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`because you didn't ever put forth a 102 rejection position.
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`MR. LOWRIE: That's correct, Your Honor, it's more of
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`the latter. We left it open, we presented a 103, because of this not
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`knowing where the claim construction would go, but it's preserved.
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364,295
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`That's a typo on the slide, it should be page 12, petition at page 12, but
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`it's reserved. So, why don't we show petition at page 12.
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`JUDGE EASTHOM: Why didn't you alternatively say in
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`your petition that this could be anticipation, depending upon the claim
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`construction?
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`MR. LOWRIE: We essentially did, but the problem is
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`one runs into page limits, so you can't have separately set out
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`arguments. For this we just didn't have room, but what we did do is if
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`you look at our claim charts, every box in the claim chart says Sony
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`Music system, here it's met. Sony Music system, here it's met.
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`So, why don't we just scroll down, you can see a few of
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`them, and I won't bother to read them all, but here is claim 1, go
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`down --
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`JUDGE EASTHOM: How many pages did it say to --
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`for example, 102 or 103, that's about four different type spaces and a
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`heading or something even.
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`MR. LOWRIE: I don't know that -- I don't know, but
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`there are cases that say even if it's a 103, it can be entered as a 102
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`anyway, we cite that in our briefing. Even on appeal, a 103 can be
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`affirmed as a 102.
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`JUDGE EASTHOM: No, I understand that argument,
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`but there are cases the other way, too, right? It's a different -- it's a
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`different argument, it's a shift. And we're stuck trying to figure out if
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`this is totally a shift or --
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`MR. LOWRIE: Right.
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`Case No. IPR2013-00350, Patent No. 8,401,682
`Case No. IPR2013-00465, Patent No. 8,364
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