Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 11
`Entered: December 11, 2013
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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 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, MICHAEL J. FITZPATRICK,
`and DAVID C. McKONE, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`Tel: 571-272-7822
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`
`
`Paper 11
`Entered: December 11, 2013
`
`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 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, MICHAEL J. FITZPATRICK,
`and DAVID C. McKONE, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case IPR2013-00350
`Patent 8,401,682 B2
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`
`I. INTRODUCTION
`A. Background
`SDI Technologies, Inc. (“SDI” or “Petitioner”) filed a Petition (Paper 2)
`(“Pet.”) to institute an inter partes review of claims 1-21, 24, 27, 28, 30-48, 51, 54,
`62, 63, 67-70, 73, 74, and 76 (the “challenged claims”) of U.S. Patent 8,401,682
`B2 (Ex. 1001) (“the ’682 patent”). See 35 U.S.C. § 311. Bose Corporation
`(“Bose” or “Patent Owner”) timely filed a Preliminary Response (Paper 10)
`(“Prelim. Resp.”). Generally, Bose contends that the Petition should be denied as
`to all challenged claims. We conclude that, under 35 U.S.C. § 314(a), there is a
`reasonable likelihood that SDI will prevail with respect to at least one of the
`challenged claims.
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`B. Related Proceedings
`Bose has asserted the ’682 patent and U.S. Patent No. 8,364,295 (“the ’295
`patent”) against SDI in Bose Corp. v. SDI Technologies, Inc., Case No. 13-cv-
`10277-WGY (D. Mass.) (“the ’682/’295 patent litigation”), filed on February 13,
`2013, which SDI represents is still pending. See Pet. 1. The ’682 patent matured
`from a continuation of the application that gave rise to the ’295 patent.
`SDI also has filed a petition for an inter partes review of the ’295 patent,
`IPR2013-00465, on July 25, 2013.
`U.S. Patent No. 7,277,765 (“the ’765 patent”), the parent of the ’295 patent,
`was asserted by Bose against SDI in Bose Corp. v. SDI Technologies, Inc., Case
`No. 09-cv-11439 (D. Mass.) (“the ’765 patent litigation”). See Pet. 1. According
`to SDI, the case resulted in a grant of summary judgment of non-infringement,
`which is on appeal. See id. The ’765 patent is also the subject of Inter Partes
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`Reexamination No. 95/001,260.
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`C. References Relied Upon
`Petitioner relies upon the following prior art references:
`Sony Corporation, ZS-D7 Personal Audio System Operating Instructions,
`3-860-694-33(1) (1998) (Ex. 1002) (“SMS”);
`Creative Tech. Ltd., Creative NOMAD® Digital Audio Player User Guide,
`On-line Version, v. 1.0 (June 1999) (Ex. 1005) (“Nomad Manual”);
`Cameron Crotty, New MP3 Players: Music to Your Ears, PCWORLD, August
`19, 1999, downloaded at
`http://www.techhive.com/product/242/nomad.html (Ex. 1006)
`(“Nomad Review”);
`Becky Orfinger, What’s New, POPULAR SCIENCE, April 1999, at 17
`(Ex. 1007) (“Yepp Article”);
`Samsung Electronics Launches “yepp”, the World’s Smallest MP3 Player,
`SOCIAL RESPONSIBILITY NEWS (April 28, 1999), downloaded at
`www.samsung.com/us/news/317 (Ex. 1008) (“Samsung Yepp Press
`Release”);
`Bose Corp., The Bose® Wave® Radio/CD Owner’s Guide, Rev. 03 (1999)
`(Ex. 1003) (“BWCD”);
`Suzanne Kantra Kirschner, Music Boxes Go for a Spin, POPULAR SCIENCE,
`March 1999, at 76-79 (Ex. 1004) (“Popular Science Bose Wave
`Article”);
`Guy Hart-Davis & Rhonda Holmes, MP3!, I DIDN’T KNOW YOU COULD DO
`THAT …™ 65-83 (Sybex, Inc. 1999) (Ex. 1009) (“WinAmp”);
`Remote control Winamp and more, downloaded at
`web.archive.org/web/19990508121919/http://www.evation.com/irman
`/index.html (Ex. 1010) (“Irman Web Pages”);
`Altec Lansing Techs., Inc., ADA310W Altec Lansing Computer Speaker
`System User Guide (1998) (Ex. 1011) (“Altec Lansing Manual”);
`Altec Lansing Announces New Products Utilizing the Power of the PC for
`Better Quality Computer Audio, BUSINESS WIRE, Nov. 17, 1997,
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`downloaded at
`http://www.thefreelibrary.com/_/print/PrintArticle.aspx?id=20052343
`(Ex. 1012) (“Altec Lansing Press Release”);
`U.S. Patent No. 5,969,283, issued Oct. 19, 1999 (Ex. 1013) (“Looney”).
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`D. The Asserted Grounds
`SDI contends that the challenged claims are unpatentable based on the
`following specific grounds (Pet. 11-59):
`Ground References
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`Basis
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`Claims
`challenged
`1-11, 18-21, 24,
`27, 28, 30-38, 45-
`48, 51, 54, 73, 74
`1-11, 18-21, 24,
`27, 28, 30-38, 45-
`48, 51, 54, 73, 74
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`1-11, 18-21, 24,
`27, 28, 30-38, 45-
`48, 51, 54, 73, 74
`12-17, 39-44, 62,
`63, 67-70, 76
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`12-17, 39-44, 62,
`63, 67-70, 76
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`SMS and Nomad Manual, Nomad
`Review, Yepp Article, or Samsung
`Yepp Press Release
`BWCD or Popular Science Bose
`Wave Article; and Nomad Manual,
`Nomad Review, Yepp Article, or
`Samsung Yepp Press Release
`WinAmp; Irman Web Pages; and
`Altec Lansing Manual or Altec
`Lansing Press Release
`SMS; Nomad Manual, Nomad
`Review, Yepp Article, or Samsung
`Yepp Press Release; and Looney
`BWCD or Popular Science Bose
`Wave Article; and Nomad Manual,
`Nomad Review, Yepp Article, or
`Samsung Yepp Press Release; and
`Looney
`WinAmp; Irman Web Pages; Altec
`Lansing Manual or Altec Lansing
`Press Release; and Looney
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`I
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`II
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`III
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`IV
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`V
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`VI
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`§ 103
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`12-17, 39-44, 62,
`63, 67-70, 76
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`For the reasons described below, we institute an inter partes review of all
`challenged claims (1-21, 24, 27, 28, 30-48, 51, 54, 62, 63, 67-70, 73, 74, and 76)
`based on the following grounds:
`(1) claims 1-11, 18-21, 24, 27, 28, 30-38, 45-48, 51, 54, 73, and 74 as
`obvious under 35 U.S.C. § 103(a) over SMS and Nomad Manual;
`(2) claims 12-17, 39-44, 62, 63, 67-70, and 76 as obvious under 35 U.S.C.
`§ 103(a) over SMS, Nomad Manual, and Looney;
`(3) claims 1-11, 18-21, 24, 27, 28, 30-38, 45-48, 51, 54, 73, and 74 as
`obvious under 35 U.S.C. § 103(a) over WinAmp, Irman Web Pages, and Altec
`Lansing Manual; and
`(4) claims 12-17, 39-44, 62, 63, 67-70, and 76 as obvious under 35 U.S.C.
`§ 103(a) over WinAmp, Irman Web Pages, Altec Lansing Manual, and Looney.
`
`E. The ’682 Patent
`The ’682 patent generally relates to audio systems for reproducing sound
`from computer files and computer network radio stations. Ex. 1001, col. 1, ll. 16-
`19. Figure 1 of the ’682 patent is reproduced below.
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`control electronicss circuitry 16 for conntrolling thhe tuner andd the signaal processinng
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`FFigure 1 shoows a sounnd reproduuction devicce 10 (suchh as a Bos
`e Wave®
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`essing circcuitry 14,
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`radio) thhat includees an AM/FFM tuner 112, audio ssignal proc
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`circuitryy, a remotee control device 17 foor controlliing the conntrol electrronics
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`circuitryy, and a sppeaker 18. Id. at col. 3, ll. 30-355; col. 4, lll. 49-52. TThe sound
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`reproduuction device 10 is coonnected too a computter 20 throuugh a contrrol connecctor
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`50, which connectts the contrrol electronnics circuittry 16 to thhe computeer’s bus 222,
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`and throough a connnector betwween the aaudio systeem’s analogg input termminal 49 aand
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`the commputer’s steereo jack 448. Id. at col. 3, ll. 544-58. The
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`stereo jackk 48 conneects
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`the commputer’s sound card 333 to the soound reprodduction deevice’s auddio signal
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`processing circuitrry 14. Id. at Fig. 1.
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`The compuuter includdes a hard ddisk drive
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`that can store digital music files. Id. at col. 3, ll. 41-44; col. 6, l. 52 – col. 7, l. 3.
`The computer is also connected to a network, such as the Internet. Id. at col. 3, ll.
`49-53. The computer can access web radio stations through the network. Id. at
`col. 6, ll. 40-48. Signals from remote control 17, received by sound reproduction
`device 10, can control functions of computer 20. Id. at col. 10, ll. 31-56.
`Claim 1, reproduced below, is illustrative of the claimed subject matter:
`1. An audio system configured to connect to a separate computer that is
`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, the audio system comprising:
`(a) a sound reproduction system comprising:
`a housing;
`control circuitry located within the housing for receiving control commands;
`audio signal processing circuitry located within the housing for processing
`audio signals for reproduction;
`one or more speakers for reproducing audio signals processed by the audio
`signal processing circuitry; and
`a connector configured to provide a physical and electrical connection
`exclusively between the sound reproduction system and the computer,
`wherein the connection includes one or more signal paths configured
`to
`(i) 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, and
`(ii) transmit to the computer signals for controlling the computer; and
`(b) a remote control device configured to transmit signals representing at
`least a first type of command from a user and a second type of
`command from a user to the control circuitry of the sound
`reproduction system, wherein the first type of command is a command
`to control a user function of the sound reproduction system and the
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`second type of command is a command to control a user function of
`the computer,
`wherein the control circuitry is configured to receive the signals from the
`remote control and, in response to receiving such signals:
`(i) control the user function of the sound reproduction system when
`the user issues a command of the first type, and
`(ii) transmit to the computer, via a signal path of the connector, a
`signal for controlling the user function of the computer when
`the user issues a command of the second type.
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`II. ANALYSIS
`A. Claim Construction
`As a step in our analysis for determining whether to institute a trial, we
`determine the meaning of the claims. The Board interprets claims using the
`broadest reasonable construction. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 100(b). Claim terms generally
`are given their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`SDI expressly proposes a construction only for the term “computer.” Pet.
`10-11. For the remaining claim language, SDI urges that claim terms be given
`“their ordinary and customary meaning.” Id. at 10. Bose submits proposed
`constructions for several claim terms. Prelim. Resp. 5-15. According to Bose, its
`proposed constructions respond to implicit constructions provided by SDI in SDI’s
`claim charts. Id. at 6-8.
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`1. “computer”
`Claim 1 recites “[a]n audio system configured to connect to a separate
`computer.” SDI proposes construing “computer” to mean “any machine capable of
`receiving input, processing, storing, and outputting data,” arguing that Bose
`proposed this construction in the ’765 patent litigation. Pet. 10-11. SDI asserts
`that this construction is broad enough to encompass each of the devices described
`in its Petition as supplying music. Id. These devices include a MiniDisc
`player/recorder described in SMS, a CD player described in BWCD, an MP3
`player described in Nomad Manual, Nomad Review, Yepp Article, and Samsung
`Yepp Press Release, and a computer described in WinAmp. Pet. 11, 25-26, 39.
`Bose argues that it is unnecessary to construe “computer” because the
`Petition is deficient regardless of how that term may be construed. Prelim. Resp.
`5-6. Bose argues that, although it proposed to a district court the construction now
`advanced by SDI, the district court rejected that construction and accorded
`“computer” its “ordinary and customary meaning.” Id. at 6, n.2 (quoting Bose
`Corp. v. SDI Techs., Inc., 828 F. Supp. 2d 415, 424 (D. Mass. 2011)).1 Bose,
`however, does not contest that “computer” is broad enough to encompass each of
`the devices identified in the Petition as supplying music. This is consistent with
`the ordinary meaning of “computer.” See, e.g., MCGRAW HILL DICTIONARY OF
`SCIENTIFIC AND TECH. TERMS 428 (5th ed. 1994) (Ex. 3001) (defining computer as
`“[a] device that receives, processes, and presents data; the two types are analog and
`digital. Also known as computing machine.”). Accordingly, we adopt SDI’s
`proposed construction of “computer,” namely “any machine capable of receiving
`
`
`1 More precisely, the district court stated that Bose agreed that “computer” did not
`need construction. Bose, 828 F. Supp. 2d at 424.
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`input, processing, storing, and outputting data,” which Bose does not contest, and
`which corresponds to the ordinary meaning.
`
`
`2. “network”
`Claim 1 recites a computer “configured to provide audio information from
`any one of a plurality of sources, including . . . a network accessible by the
`computer.” (emphasis added). Bose asserts that “network” should be construed to
`mean “an interactive computer network, such as the internet.” Prelim. Resp. 7.
`Bose argues that the ’682 patent specification supports Bose’s construction by
`consistently describing a network as a computer network and distinguishing it from
`terrestrial FM radio. Prelim. Resp. 9-10. Although SDI does not provide an
`explicit construction for “network,” SDI does assert that “[t]he claim broadly
`recites that the computer provides information from a ‘network,’ not a ‘computer
`network,’” and that “music from the terrestrial FM radio network” would satisfy
`the claim language “audio information from the network.” Pet. 11, 13-14, 27.
`Thus, SDI implicitly proposes construing “network” broadly enough to encompass
`networks other than computer networks, such as terrestrial FM radio.
`Although we give claim terms their broadest reasonable construction, the
`Federal Circuit has “instructed that any such construction be ‘consistent with the
`specification, . . . and that claim language should be read in light of the
`specification as it would be interpreted by one of ordinary skill in the art.’” In re
`Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (quoting In re Bond,
`910 F.2d 831, 833 (Fed. Cir. 1990)). In other words, “[t]he broadest-construction
`rubric coupled with the term ‘comprising’ does not give the PTO an unfettered
`license to interpret claims to embrace anything remotely related to the claimed
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`invention. Rather, claims should always be read in light of the specification and
`teachings in the underlying patent.” Suitco, 603 F.3d at 1260.
`Here, the claim language and the specification suggest that it would be
`unreasonable to construe “network” to include terrestrial FM radio. Claim 1 is
`directed to an “audio system configured to connect to a separate computer,” and
`recites “a network accessible by the computer.” Thus, the claim language places
`the “network” in the context of computer communications.
`This is echoed by the specification, which repeatedly refers to the “network”
`as a “computer network.” See, e.g., Ex. 1001, Abstract (“The computer provides
`audio signals from a plurality of sources, the sources including . . . a computer
`network connected to the computer.”); col. 1, ll. 33-36 (“The sound reproduction
`device includes control buttons for controlling at least one of . . . the computer
`network.”); col. 3, ll. 49-51 (“A fourth external connector 46 connects network
`interface card 32 to a local or wide area network . . . .”). The specification also
`consistently describes network accessible audio information as provided by a
`computer network, giving the example of web radio. See, e.g., Ex. 1001, col. 6, ll.
`40-42 (“Information about radio stations that are accessible over the local or wide
`area network (hereinafter web radio stations) is also acquired and stored.”); col. 7,
`ll. 56-58 (“The fields of record representing computer network accessible radio
`stations may include . . . identifiers, network addresses, locations, and station
`formats.”).
`In contrast, SDI has pointed to no instances in the specification where
`terrestrial radio is described as a “network.” Indeed, the specification distinguishes
`between “network radio stations” and “broadcast radio stations” in stating that the
`invention relates to reproducing sound from both. Ex. 1001, col. 1, ll. 16-19
`(“network radio stations, broadcast radio stations”); col. 7, ll. 47-49 (“broadcast
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`radio stations, computer network accessible radio stations”); col. 9, ll. 2-8 (“If the
`AM broadcast or FM broadcast graphical figure have [sic] been activated,
`broadcast frequencies in the AM and FM broadcast bands, respectively, can be
`assigned to the preset buttons. . . . If the web radio audio source has been activated,
`a URL of a web radio website are [sic] assigned to the preset buttons.”); col. 10, ll.
`61-63 (“if the user has selected broadcast FM, broadcast AM, or network
`accessible radio as the source category”).
`Taken together, the evidence from the claim language and the specification
`shows that SDI’s proposed construction of “network,” which includes terrestrial
`FM radio, is unreasonably broad. Accordingly, we adopt Bose’s construction,
`namely “an interactive computer network, such as the internet.”
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`3. “computer that is 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”
`Bose proposes construing this term to mean a “computer that is configured
`to provide audio information from each of at least two sources, including digital
`music files stored on the computer and a ‘network’ accessible by the computer.”
`Prelim. Resp. 7. Although SDI does not provide an express construction of this
`term, SDI asserts that “the preamble does not require that the computer provide
`audio information from multiple sources, only that it be configured to provide
`audio information from any one source, including digital music files stored on the
`computer.” Pet. 12, 26, 39-40.
`Bose contends that its construction is consistent with the ’682 patent
`specification, which, Bose asserts, repeatedly describes a computer that provides
`audio signals from a plurality of sources, including stored files and a network.
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`Prelim. Resp. 11 (citing Ex. 1001, Abstract; col. 1, ll. 29-33; col. 2, ll. 23-30;
`col. 5, ll. 51-61). Bose also argues that courts have construed similar language
`restrictively, as it proposes here. Prelim. Resp. 11-12 (citing Kenall Mfg. Co. v.
`H.E. Williams, Inc., 2013 WL 427119, at *17 (N.D. Ill. Feb. 1, 2013); Zapmedia
`Servs., Inc. v. Apple, Inc., 2010 WL 2036406, at *13 (E.D. Tex. May 19, 2010)).
`We are not persuaded that this claim term should be limited to require a
`computer configured to provide audio information from each of at least two
`sources. As Bose asserts, some courts have construed the language “any one of”
`and the like more narrowly to mean “each of.” Although that may have been
`appropriate in the contexts of the claim language in those cases, Bose has not
`explained persuasively why it is appropriate in this case. According to Strunk &
`White, “[a]ny one means ‘any single person’ or ‘any single thing.’” WILLIAM
`STRUNK JR. & E.B. WHITE, THE ELEMENTS OF STYLE 41 (4th ed. 2000) (Ex. 3002).
`Similarly, the usage notes to the American Heritage Dictionary explain that “[t]he
`two-word form any one is used to mean ‘whatever one (person or thing) of a
`group.’ . . . Any one may join means that admission is open to one person only.”
`THE AMERICAN HERITAGE COLLEGE DICTIONARY 64 (4th ed. 2004) (Ex. 3003).
`Thus, the ordinary meaning of a computer “configured to provide audio
`information from any one of a plurality of sources” is a computer configured to
`provide audio information from only one source, although it could be any of the
`sources in the plurality. Bose’s proposed construction, which requires a computer
`configured to provide audio information from at least two sources, is inconsistent
`with this ordinary meaning.
`To be sure, the specification describes embodiments including computers
`configured to supply audio information from multiple sources, such as computer
`files and computer networks. See, e.g., ’682 patent, col. 1, ll. 42-46. Thus, the
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`specification does provide written descriptive support for the narrow claim scope
`that Bose proposes. However, Bose has not explained persuasively why the
`claims, which recite “any one of a plurality of sources,” should be narrowed by an
`embodiment in the ’682 patent. In the absence of such evidence, “limitations are
`not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993). Accordingly, on the current record, consistent with
`the specification and the claim language, “computer that is 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,” only
`requires a computer configured to provide audio information from either one or
`more of digital music files stored on a computer, or one or more of different
`networks accessible by a computer, but, it does not preclude providing the
`information from both types of sources.
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`4. “audio information from the network via the computer”
`Bose construes this term to mean “audio information accessed from the
`‘network’ by the computer,” invoking its previous construction of “network.”
`Prelim. Resp. 8. As explained above, SDI implicitly construes “network” to be
`broad enough to encompass non-computer networks. That construction is
`unreasonably broad for the reasons given above.
`SDI also asserts that “audio information from the network via the computer”
`includes files downloaded from a computer network and stored on the computer.
`Pet. 13-14, 27. Bose argues that such a construction is unreasonably broad.
`Prelim. Resp. 14. Specifically, Bose argues that “audio information from the
`network via the computer” does not include audio files received from a device such
`as an MP3 player that have previously been downloaded to a personal computer
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`from a network and then transferred from the personal computer to the MP3
`player. Id. We agree with Bose.
`Claim 1 recites “one or more signal paths configured to (i) 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.”
`Construing “audio information from the network via the computer” to include
`digital files downloaded from a network and stored on the computer would render
`the language “audio information from the network” redundant to “digital music
`files stored on the computer.” Such a construction is disfavored, as “[a] claim
`construction that gives meaning to all the terms of the claim is preferred over one
`that does not do so.” Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
`1372 (Fed. Cir. 2005).
`Moreover, as Bose points out (Prelim. Resp. 14), the specification
`consistently distinguishes between digital music files stored on the computer and
`audio information streamed from a network through the computer, such as web
`radio. See Ex. 1001, col. 5, ll. 51-56 (“sound reproduction device 10 reproduces
`sound from . . . digital audio signals stored in RAM 26, hard disk 30, or external
`mass storage device 45; audio signals received from sources connected to the local
`or wide area network connected to network interface 32”); col. 10, ll. 37-46 (“If
`the source is music files, the names of the music files may appear in the available
`selections region 90 (FIG. 6) of the interface screen . . . . If the source is web radio
`stations, the available web radio stations m[a]y appear in the available selections
`region 90”); col. 10, ll. 57-61 (separately listing “music files, broadcast radio
`stations, computer network accessible radio stations, music files, and CD”).
`Accordingly, in light of the claim language and the description in the
`specification, we agree with Bose that “audio information from the network via the
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`computer” does not include digital music files downloaded from a network, stored
`on a computer, transferred to a second computer, and later supplied to the audio
`system by the second computer. Rather, on the current record, “audio information
`from the network via the computer” is audio information received from the
`computer that the computer has downloaded from the network.
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`B. Asserted Grounds of Unpatentability
`1. Obviousness over SMS and Nomad Manual
`SDI asserts that claims 1-11, 18-21, 24, 27, 28, 30-38, 45-48, 51, 54, 73, and
`74 of the ’682 patent would be obvious over SMS and Nomad Manual. Pet. 11-25.
`SMS is a set of operating instructions for a Sony® “Personal Audio
`System.” It describes the system as including a CD player, AM/FM tuner, cassette
`tape player/recorder, and speakers in a single housing. Ex. 1002, at 000004-11.
`Many of the functions of the system are controlled by a remote control. Id. at
`000013-18. SMS also describes connecting an external portable MiniDisc
`player/recorder (“MD”) to the personal audio system using a set of cables for
`supplying power to the MD and transmitting audio and control information
`between the MD and the personal audio system. Id. at 000041-44. According to
`SMS, a user operates the external MD using the personal audio system’s remote.
`Id. at 000042.
`Nomad Manual is a user guide for the Creative NOMAD® digital audio
`player (“NOMAD”). Nomad Manual describes a portable music player that
`includes flash memory in which music files, such as MP3 files, are stored.
`Ex. 1005, at 000007, 000012. A user listens to music on the NOMAD through
`headphones. Id. at 000009. The NOMAD is connected to a computer through a
`docking station in which the NOMAD is placed. Id. at 000015. The docking
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`station is connected to the computer using a parallel cable. Id. The computer is
`used to “rip” music from audio CDs and convert it into MP3 files, which are stored
`on the NOMAD through the docking station connection. Id. at 000012, 000024-
`26. Nomad Manual also states that MP3 files could be purchased through the
`World Wide Web or other online services. Id. at 000007, 000022. According to
`Nomad Manual, the NOMAD includes an FM tuner for listening to terrestrial FM
`radio. Id. at 000007, 000021-22.
`Of course, “there must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006). In that regard, SDI contends that it would be
`obvious to replace the MD of SMS with a portable NOMAD. Pet. 13. According
`to SDI, a skilled artisan would make this change to “have access to more music
`that the greater storage capacity [of the NOMAD] would provide.” Id. SDI
`supports this argument with declaration testimony of Dr. Andrew Lippman that the
`modifications necessary to substitute the NOMAD for the MD would have been
`within the level of ordinary skill. Pet. 13 (citing Ex. 1017, at 000010-11).
`Focusing on claim 1, Bose responds that SDI has not provided a reasoned basis for
`substituting the NOMAD for the MD described in SMS. Prelim. Resp. 17.
`However, we are satisfied with SDI’s articulated reasoning, which is supported by
`rational underpinning.
`Bose argues that SDI’s proposed combination ignores that the MD described
`in SMS is a component of the personal audio system described in SMS, and is,
`instead, a separate device designed to integrate with the personal audio system.
`Prelim. Resp. 18-19. However, the Petition, at page 11, explicitly states that
`SMS’s audio system was configured to connect to a “separate device (i.e., a
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`MiniDisc player) that provided audio information.” Thus, SDI’s combination does
`recognize that the MD is not a component of SMS’s personal audio system.
`Bose next argues that the cable connecting the personal audio system and
`MD of SMS is proprietary and designed uniquely for that purpose. Prelim.
`Resp. 19. According to Bose, the Petition does not state a reasoned basis as to why
`a skilled artisan would substitute a NOMAD for the MD that was designed for use
`through a proprietary cable. Id. Bose argues that the modifications proposed by
`SDI’s expert would be substantial, rather than trivial. Prelim. Resp. 20-21. Bose
`points to an expert report (Ex. 2001) by Dr. Paul Beckmann (also a named inventor
`on the ’682 patent). Id. This report was served in the ’765 patent litigation, not the
`’682/’295 patent litigation, and contains opinions related to a combination of
`SMS’s personal audio system with a different MP3 player, the HanGo Personal
`Jukebox. Ex. 2001, at 1, 42.2 According to Dr. Beckmann, it would take
`significant modifications for the HanGo device’s hardware and firmware to work
`with Sony’s proprietary interface, and an additional interface would be necessary
`for the HanGo device to receive and act on control commands from the personal
`audio system. Ex. 2001, at 42.
`Aside from the fact that Dr. Beckmann does not opine on the ’682 patent or
`the prior art combination proposed in the Petition, we are not persuaded that the
`modifications necessary to interface an MP3 player, such as the NOMAD, with
`SMS’s personal audio system would have been beyond the level of ordinary skill.
`“A person of ordinary skill is also a person of ordinary creativity, not an
`automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Indeed,
`“[i]t is well-established that a determination of obviousness based on teachings
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`2 Page 42 of the exhibit, which corresponds to page 62 of the report.
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`from multiple references does not require an actual, physical substitution of
`elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); accord In re
`Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
`the features of a secondary reference may be bodily incorporated into the structure
`of the primary reference . . . .”). We agree with Dr. Lippman (Ex. 1017, at
`000010-11) that such modifications would have been engineering modifications
`well understood to a skilled artisan.
`Bose further contends that Dr. Lippman is not a person of ordinary skill in
`the art and, thus, has no basis for opining as to whether a person of ordinary skill in
`the art would have combined SMS and Nomad Manual. Prelim. Resp. 19-20. In
`essence, Bose argues that Dr. Lippman is a television and digital video processing
`engineer rather than an audio engineer. Id. This argument is unpersuasive.
`Dr. Lippman has a Ph.D. in electrical engineering and is currently a Research
`Scientist at the Massachusetts Institute of Technology. Ex. 1017, at 000002-03.
`He was a member of the committee that defined the MP3 standards. Id. at 000005.
`At this preliminary stage, we cannot say that Dr. Lippman’s scientific, technical,
`and other specialized knowledge will not help us to understand the evidence. See
`FED. R. EVID. 702(a); cf. Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty.
`Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (“Defendants attack Dr. Silva on the
`grounds that he is not ‘a person of ordinary skill in the art,’ and that he at one point
`in the proceedings acknowledged that much. Of course that objection is meritless.
`The ‘person of ordinary skill in the art’ is a theoretical construct
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