Inter Partes Review
`United States Patent No. 8,359,007
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,359,007
`§
`110797-0004-653
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/052,559 § Petitioners:
`Issue Date: January 22, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: March 21, 2011
`§
`Samsung Electronics America, Inc.;
`Priority Date: March 28, 2000
`§
`Samsung Telecommunications America,
`§
`LLC;
`§
`LG Electronics, Inc.;
`§
`LG Electronics U.S.A., Inc.;
`§
`LG Electronics Mobilecomm USA, Inc.;
`§ HTC Corp.;
`§ HTC America, Inc.
`
`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
`
`
`
`
`For: SYSTEM AND METHOD FOR COMMUNICATING MEDIA CENTER
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,359,007
`
`i
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`
`TABLE OF CONTENTS
`
`V.
`
`IV.
`
`LIST OF EXHIBITS ................................................................................................................ v
`I.
`INTRODUCTION ....................................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ......................................... 5
`III. PETITIONERS HAVE STANDING ...................................................................... 7
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 7
`B.
`Claims and Statutory Grounds Under 37 C.F.R. § 42.22 and
`§§ 42.104(b) ......................................................................................................... 8
`SUMMARY OF THE ‘007 PATENT ....................................................................... 8
`A. Overview of the ‘007 Patent ............................................................................ 8
`B.
`‘007 Patent Prosecution History .................................................................... 10
`C.
`‘390 Parent Patent Prosecution History ....................................................... 12
`THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST
`ONE CLAIM OF THE ‘007 PATENT .................................................................. 13
`A.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................. 14
`B.
`Level of Ordinary Skill in the Art and State of the Art .............................. 15
`C. Ground 1: Claims 1, 2, 5-8 and 10 Are Obvious Over Treyz in
`View of Fuller Under 35 U.S.C. § 103 .......................................................... 16
`D. Ground 2: Claims 1, 2, 5-8, and 10 Are Obvious Over Abecassis
`in View of Balabanovic Under 35 U.S.C. § 103 and
`Ground 3: Claims 1, 2, 5-8, and 10 Are Obvious Over Abecassis
`in View of Balabanovic and Galensky Under 35 U.S.C. § 103 ................. 32
`E. Ground 4: Claims 1, 2, 5-8 and 10 Are Obvious Over Treyz in
`View of Carmel Under 35 U.S.C. § 103
`Ground 5: Claims 1, 2, 5-8 and 10 Are Obvious Over Abecassis in
`View of Balabanovic and Carmel Under 35 U.S.C. § 103 ......................... 53
`VI. CONCLUSION........................................................................................................... 58
`
`
`
`ii
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd. et al.,
`1:12-cv-557 (E.D. Tex., filed Nov. 20, 2012) .................................................................. 5
`
`In re Affinity Labs of Texas, LLC,
`--- Fed.Appx. ----, 2014 WL 67930 (Fed. Cir. Jan. 9, 2014) .......................................... 1
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................................ 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................................... 15
`
`STATUTES
`
`35 U.S.C.
`§ 101 ..................................................................................................................................... 11
`§ 102(e) ........................................................................................................................ passim
`§ 103 ............................................................................................................................. passim
`§ 112 ............................................................................................................................. passim
`§ 311 ....................................................................................................................................... 1
`§ 312 ....................................................................................................................................... 1
`§ 313 ....................................................................................................................................... 1
`§ 314 ................................................................................................................................ 1, 13
`§ 315 ....................................................................................................................................... 1
`§ 316 ....................................................................................................................................... 1
`§ 317 ....................................................................................................................................... 1
`§ 318 ....................................................................................................................................... 1
`§ 319 ....................................................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R.
`§ 1.312 ................................................................................................................................. 11
`§ 1.33(c) ............................................................................................................................... 58
`§ 42 ......................................................................................................................................... 1
`§ 42.8 ...................................................................................................................................... 5
`§ 42.15(a) ............................................................................................................................. 59
`§ 42.22 ................................................................................................................................... 8
`
`iii
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`§ 42.100 .................................................................................................................. 13, 14, 58
`§ 42.104 ...................................................................................................................... 7, 8, 14
`§ 42.105 ............................................................................................................................... 58
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`§ 2111 .................................................................................................................................. 14
`
`iv
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,359,007 (“the ‘007 patent”)
`U.S. Patent No. 8,359,007 File History
`U.S. Patent No. 7,953,390 File History
`U.S. Patent No. 6,678,215 (“Treyz”)
`U.S. Provisional Application No. 60173247 (“Treyz Provisional
`Application”)
`U.S. Patent No. 6,711,622 (“Fuller”)
`U.S. Patent No. 6,434,403 (“Ausems”)
`U.S. Patent No. 6,192,340 (“Abecassis”)
`U.S. Patent No. 6,976,229 (“Balabanovic”)
`U.S. Patent No. 6,845,398 (“Galensky”)
`U.S. Patent No. 6,389,473 (“Carmel”)
`Universal Serial Bus Specification, Revision 1.1, September 23,
`1998, Compaq Computer Corp., Intel Corp., Microsoft Corp., and
`NEC Corp.
`Archived webpage of http://usb.org/developers/download.html
`accessed through the October 13, 1999 archive of
`http://web.archive.org, specifically
`https://web.archive.org/web/19991013020337/http:/usb.org/
`developers/download.html, on December 2, 2013
`Archived web page of http://usb.org/developers/docs.html
`accessed through the October 13, 1999 archive of
`http://web.archive.org, specifically,
`https://web.archive.org/web/19991013012138/http:/usb.org/
`developers/docs.html, on December 2, 2013
`Affinity Labs of Texas, LLC’s Initial Disclosure of Asserted Claims
`and Infringement Contentions in Affinity Labs of Texas, LLC v.
`Samsung Electronics Co., Ltd. et al., No. 1:12-cv-00557-RC (E.D. Tex.),
`Ex. 1
`U.S. Patent No. 6,928,468 (“Leermakers”)
`Declaration of Dr. Schuyler Quackenbush
`Declaration of Carolyn Redding in Support of Petition for Inter
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`
`v
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`
`Exhibit
`
`Ex. 1019
`
`Ex. 1020
`
`Description
`Partes Review of United States Patent No. 8,359,007
`Gary Hoffman and Daniel Moore, “IEEE 1394: A Ubiquitous
`Bus,” pp. 334-335 (IEEE 1995) (“IEEE 1394 provides data
`transport and power—a great convenience for the users.”)
`Bruce Fries & Marty Fries, “The MP3 and Internet Audio
`Handbook,” TeamCom Books, Library of Congress Dec. 30, 1999
`
`
`vi
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioners respectfully
`
`request inter partes review of claims 1, 2, 5-8, and 10 of U.S. Pat. No. 8,359,007 (“the
`
`‘007 patent”), issued to Russell W. White et al. and currently assigned to Affinity Labs
`
`of Texas, LLC (“Affinity”).
`
`The ‘007 patent is one of thirteen patents that cite back to an application filed
`
`on March 28, 2000.1 These patents all share a common specification and generally
`
`relate to the delivery of Internet media content, such as “songs, on-line radio stations,
`
`on-line broadcasts, [or] streaming audio,” to a portable device. The portable device
`
`may be used to play the media content and may also be connected with another
`
`electronic device, such as a portable radio or vehicle audio system, so that the audio
`
`information may be communicated to the other electronic device. There is nothing
`
`new in the claims of the ‘007 patent. In fact, the Federal Circuit recently affirmed the
`
`USPTO’s finding that the claims of a related patent in the ‘007 family—U.S. Patent
`
`No. 7,486,926 (“the ‘926 patent”)—were invalid as obvious over the prior art. In re
`
`Affinity Labs of Texas, LLC, --- Fed.Appx. ----, 2014 WL 67930 (Fed. Cir. Jan. 9, 2014).
`
`As set forth in this petition, the supposed “invention” in each of claims 1, 2, 5-
`
`8, and 10 (the “Challenged Claims”) was well-known and, at a minimum, obvious
`
`
`1 Petitioners reserve the right to argue that the Challenged Claims of the ‘007 patent
`
`are not entitled to this priority date for failure to meet the requirements of § 112(1).
`
`
`
`1
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`prior to the earliest application filing date listed on the front of the ‘007 patent (i.e.,
`
`March 28, 2000). Specifically, the Challenged Claims require the following known
`
`features: a display, a non-volatile memory, a processing device, a web browser, and
`
`instructions to direct the portable device to request a list of network addresses for a
`
`plurality of portions of an available media, and to request delivery of (a) a first portion
`
`which is delivered at a first communication rate and (b) a second portion which is
`
`delivered at a second communication rate. ‘007 claims 5, 6, 8, and 10 additionally
`
`require one or more of the following commonplace features: an e-mail client, a
`
`physical interface to transmit power and data, the ability to access the browser and
`
`choose the media without a physical keyboard or a mouse, and an audio file player.
`
`The ‘007 patent itself concedes there is nothing novel about the claimed
`
`portable device. Indeed, there were a wide variety of portable electronic devices in
`
`the prior art by March of 2000, including cellular telephones, laptops, portable MP3
`
`players, portable PDAs, and portable Internet Radios, and the ‘007 patent indicates
`
`that any of these known portable devices may be used. Ex. 1001 at 4:33-37
`
`(“Electronic devices . . . may include a network radio, a modular device, an audio
`
`system, a personal digital assistant (PDA), a cellular phone, or other electronic devices
`
`operable to receive information wirelessly.”). Consistent with the ‘007 patent’s
`
`acknowledgement that such devices were already known, the two primary references
`
`cited in this petition—Treyz (describing, inter alia, a portable device with alarm clock
`
`radio functionality) and Abecassis (describing, on the other hand, a cellular
`
`2
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`telephone)—each disclose a portable electronic device that is capable of wirelessly
`
`receiving streaming media over the Internet.
`
`Other elements of the Challenged Claims—a display, a non-volatile memory, a
`
`processing device, a web browser, an e-mail client, a physical interface to transmit
`
`power and data, the ability to access the browser and choose the media without a
`
`physical keyboard or a mouse, and an audio file player—were also routinely included
`
`in portable devices prior to March 28, 2000. In view of this, it would have been
`
`obvious for a person of ordinary skill in the art (“POSITA”) to implement any of
`
`these elements on any portable device.
`
`Finally, it was also well-known in the art to request a list of network addresses
`
`for a plurality of portions of an available media, and to deliver a first portion of media
`
`at a first communication rate and to deliver a second portion of media at a second
`
`communication rate. Indeed, the requirement of delivering media at two different
`
`communication rates was a well-known and obvious feature of any system for
`
`streaming audio or video content. As explained in Abecassis:
`
`The user can begin playing audio in real-time while the audio and
`information in the playlist are being downloaded in real-time or non-real-time
`(burst downloading). Further, the downloading need not be accomplished
`in one session. Short burst downloading will provide a portion of the content. As
`that portion is utilized control software will re-link the Multimedia Player with the
`provider, request and receive a next portion, and disconnect the active linkage.
`
`3
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`During this operation, automatic and transparent to the user, a constant
`playing is maintained.
`
`Ex. 1008 at 26:19-28.2 Galensky also explains this advantageous ability to efficiently
`
`utilize bandwidth by transmitting data at two different rates:
`
`To allow the wireless network provider to serve more subscribers and
`allow more users to access the system . . . it is advantageous to conserve
`bandwidth within the wireless network 40. One way of accomplishing
`this is to preferably transmit data at the highest data rate possible over the wireless
`network 40 at the point in time when the data stream is initiated . . . to permit the
`microprocessor 82 of the device 80 to create approximately 5-10 seconds
`of buffer . . . [and then] decrease the data transmission rate to the minimum rate
`necessary for adequate transmission.
`Ex. 1010 at 5:66-6:15. And, although Treyz does not expressly discuss transmitting
`
`data at two communication rates, Treyz explicitly recognizes that “higher bandwidth
`
`paths . . . may provide higher quality signals or faster download times” (Ex. 1004 at
`
`2:49-51).
`
` Furthermore, Fuller (which
`
`is cited
`
`in combination with Treyz)
`
`demonstrates that the ability for a wireless client device to switch communication
`
`rates was a well-known solution for addressing constraints on bandwidth. See, e.g., Ex.
`
`1006 at 10:11-14. Indeed, during prosecution of the application leading to the ‘390
`
`patent (the parent to the ‘007 patent), the Examiner concluded that it would have
`
`
`2 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
`
`otherwise. All emphasis is added by Petitioner unless otherwise noted.
`
`4
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`been obvious to transmit data at two different communication rates to a wireless
`
`portable device “to improve the performance of the data streaming.” Ex. 1103 at 575
`
`(Sept. 17, 2010 Non-Final OA at 6).
`
`As demonstrated in this Petition, each and every element of the Challenged
`
`Claims has been disclosed in the prior art and the Challenged Claims are nothing
`
`more than a routine and predictable combination of these well-known elements.
`
`Thus, Petitioners respectfully request that the Board find that each of the Challenged
`
`Claims is invalid under 35 U.S.C. § 103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Notices Under 37 C.F.R. § 42.8(b)(1), (b)(3), & (b)(4): The Petitioners and
`
`real parties-in-interest are Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America, LLC, (collectively
`
`“Samsung”); LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`Mobilecomm USA, Inc., (collectively “LG”); and HTC Corp. and HTC America, Inc.
`
`(collectively “HTC”) (all “Petitioners”). Lead counsel, backup counsel, and service
`
`information for each petitioner are designated in the signature block of this petition.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2): Affinity is currently asserting
`
`claims 1, 2, 5-8, and 10 of the ‘007 patent against Petitioners in Affinity Labs of Texas,
`
`LLC v. Samsung Electronics Co., Ltd. et al., 1:12-cv-557 (E.D. Tex., filed Nov. 20, 2012),
`
`along with related U.S. Patent Nos. 7,187,947 (“the ‘947 patent”); 7,324,833 (“the ‘833
`
`patent”); 7,634,228 (“the ‘228 patent”); and 7,953,390 (“the ‘390 patent”). The case
`
`5
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`will be transferred to the Northern District of California (4:13-mc-80209) following
`
`claim construction of the ‘833 and ‘228 patents.
`
`The following matters concern one or more of the ‘007 patent and/or patents
`
`that are related to the ‘007 patent: IPR2014-00209 (inter partes review of the ‘390
`
`patent); IPR2014-00212 (inter partes review of the ‘390 patent); Control No.
`
`90/011,254 (ex parte reexamination of the ‘947 patent); Control No. 95/001,262 (inter
`
`partes reexamination of the
`
`‘947 patent); Control No. 90/010,333 (ex parte
`
`reexamination of the ‘833 patent); Control No. 95/001,223 (inter partes reexamination
`
`of the ‘833 patent); Control No. 95/001,264 (inter partes reexamination of the ‘833
`
`patent); Control No. 90/011,982 (ex parte reexamination of the ‘228 patent); Control
`
`No. 95/001,281 (inter partes reexamination of the ‘228 patent); Control No.
`
`95/001,263 (inter partes reexamination of U.S. Patent No. 7,486,926); Control No.
`
`95/001,266 (inter partes reexamination of U.S. Patent No. 7,440,772); Control No.
`
`95/001,782 (inter partes reexamination of U.S. Patent No. 7,778,595); Affinity v. Apple,
`
`Inc., 9:09-cv-47 (EDTX) & 4:09-cv-4436 (NDCA); Affinity v. Dice Elecs., LLC et al.,
`
`9:08-cv-163 (EDTX); Affinity v. BMW North Am., et al., 9:08-cv-164 (EDTX); Affinity
`
`v. Alpine et al., 9:08-cv-171 (EDTX); Affinity v. Nike, Inc. et al., 2:10-cv-54 (EDTX) &
`
`4:10-cv-5543 (NDCA); Affinity v. Volkswagen Group of Am., Inc. et al., 1:11-cv-36
`
`(EDTX); Affinity v. Apple, Inc., 1:11-cv-349 (EDTX); Affinity v. Clear Channel
`
`Broadcasting, Inc., 1:12-cv-205 (WDTX); Affinity v. Ford Motor Co., No. 1:12-cv-580
`
`(EDTX); Affinity v. General Motors Co. et al., No. 1:12-cv-582 (EDTX); Affinity v.
`
`6
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`Blackberry Limited et al, No. 6:13-cv-362 (WDTX); Affinity v. Ford Motor Co., No. 6:13-
`
`cv-363 (WDTX); Affinity v. Samsung Electronics Co. et al., 6:13-cv-364 (WDTX); Affinity v.
`
`Toyota Motor North Am., Inc. et al., 6:13-cv-365 (WDTX); Affinity v. Volvo Cars of North
`
`Am., LLC et al., 6:13-cv-366 (WDTX); Affinity v. Honda North Am., Inc. et al., 6:13-cv-
`
`367 (WDTX); Affinity v. Jaguar Land Rover North Am., LLC et al., 6:13-cv-368 (WDTX);
`
`Affinity v. Nissan North Am., Inc. et al., 6:13-cv-369 (WDTX); Affinity v. General Motors
`
`LLC, 6:13-cv-370 (WDTX). Finally, Petitioners have concurrently filed an inter partes
`
`review petition for the ‘007 patent based on two primary references (“Hitson” and
`
`“Goldszmidt”) that also demonstrate the obviousness of the Challenged Claims under
`
`35 U.S.C. §§ 102 and/or 103, but in the context of differently-configured portable
`
`devices. Petitioner notes that the Director, pursuant to Rule 325(c), may determine at
`
`the proper time that merger of these proceedings may be appropriate.
`
`III. PETITIONERS HAVE STANDING
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘007 patent is
`
`eligible for inter partes review and that Petitioners are not barred or estopped from
`
`requesting inter partes review of the ‘007 patent. Each of Petitioners were served with
`
`a complaint asserting infringement of the ‘007 patent on or after February 15, 2013,
`
`and no Petitioner, real party-in-interest, or privy of a Petitioner was served with such a
`
`complaint before that date. The Petitioners and real parties-in-interest have not
`
`initiated a civil action challenging validity of the ‘007 patent.
`
`7
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`Claims and Statutory Grounds Under
`37 C.F.R. § 42.22 and §§ 42.104(b)
`
`B.
`
`Petitioners request inter partes review of ‘007 claims 1, 2, 5-8, and 10 and assert
`
`that these claims are unpatentable based on one or more grounds under 35 U.S.C. §
`
`103 as set forth below.
`
` Ground 1: Treyz (Ex. 1004) in view of Fuller (Ex. 1006) renders obvious ‘007
`
`claims 1, 2, 5-8, and 10 under 35 U.S.C. § 103.
`
` Ground 2: Abecassis (Ex. 1008) in view of Balabanovic (Ex. 1009) renders
`
`obvious ‘007 claims 1, 2, 5-8, and 10 under 35 U.S.C. § 103.
`
` Ground 3: Abecassis (Ex. 1008) in view of Balabanovic (Ex. 1009) and Galensky
`
`(Ex. 1010) renders obvious ‘007 claims 1, 2, 5-8, and 10 under 35 U.S.C. § 103.
`
` Ground 4: Treyz (Ex. 1004) in view of Carmel (Ex. 1011) renders ‘007 claims 1, 2,
`
`5-8, and 10 obvious under 35 U.S.C. § 103.
`
` Ground 5: Abecassis (Ex. 1008) in view of Balabanovic (Ex. 1009) and Carmel
`
`(Ex. 1011) renders obvious ‘007 claims 1, 2, 5-8, and 10 under 35 U.S.C. § 103.
`
`Sections V.C-V.E below provides claim charts specifying how the cited prior art relied
`
`upon renders obvious each of the Challenged Claims, as confirmed by the knowledge
`
`and understanding of a POSITA at the time of the claimed invention as evidenced in
`
`Ex. 1017, the Declaration of Dr. Schuyler Quackenbush.
`
`IV. SUMMARY OF THE ‘007 PATENT
`A. Overview of the ‘007 Patent
`
`8
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`The ‘007 specification generally describes a “System and Method for
`
`Communicating Media Center” as applied to various electronic devices such as a PC,
`
`portable device, or vehicle audio system. The supposed invention of the ‘007 patent
`
`is described as allowing users to select multimedia content that is available on the
`
`Internet, such as “songs, on-line radio stations, on-line broadcasts, [or] streaming
`
`audio” and deliver that content to a PC or portable audio player. See Ex. 1001 at 2:53-
`
`64. According to the ‘007 patent, available audio content may be accessed via links in
`
`a Web browser. See, e.g., id. at 7:17-20, 9:65-10:9. Audio content may be transmitted
`
`to an electronic device via high-speed communication until enough information has
`
`been communicated and buffered into a memory. Upon communication of a certain
`
`percentage of the selected audio information, slower communication speeds may then
`
`be used to communicate additional selected audio information. Id. at 6:3-13.
`
`The Challenged Claims are directed to a system for delivering media content to
`
`a portable device over a wireless network. One aspect of the Challenged Claims is a
`
`collection of instructions that are operable to direct a device to “request a list of
`
`network addresses for a plurality of portions of an available media, to request delivery
`
`of a first portion of the available media such that the first portion is delivered at a first
`
`communication rate, and to request delivery of a second portion of the available
`
`media such that the second portion is delivered at a second communication rate that
`
`is different than the first communication rate.” Id. at claims 1, 7.
`
`As set forth in this Petition, this feature and the remaining aspects of the
`
`9
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`Challenged Claims were all already well known in the art long before the earliest
`
`claimed priority date listed on the face of the ‘007 patent (March 28, 2000). Indeed,
`
`the specification itself makes clear that the applicants for the ‘007 patent did not
`
`purport
`
`to
`
`invent,
`
`inter
`
`alia,
`
`the
`
`following
`
`claim
`
`elements:
`
`Cellular telephone. See, e.g., Ex. 1001 at 4:33-38, 11:30-35. Display. See, e.g., id. at
`
`9:61-10:2, 11:22-24, 11:30-35. Non-volatile memory. See, e.g., id. at 7:61-65.
`
`Processing Device. See, e.g., id. at 7:57-65. Browser. See, e.g., id. at 9:61-10:9. HTTP
`
`browser. See, e.g., id. at 4:6-14, Figure 4. Email client. See, e.g., id. at 9:35-40. Media
`
`file attachment. See, e.g., id. at 12:55-64. Non-circular physical interface. See, e.g., id. at
`
`17:19-31, 17:48-51, Fig. 9. Audio file player. See, e.g., id. at 8:8-14, 15:20-26, 16:6-11.
`
`Computing device. See, e.g., id. at 4:33-38. Wireless receiver. See, e.g., id. at 4:39-5:3.
`
`Furthermore, a large number of prior art references were identified through
`
`submission of Information Disclosure Statements during prosecution of the ‘007
`
`patent. These prior art references disclose all of the above features or concepts as
`
`already well known in the art. See generally Ex. 1002. As detailed herein, the applicants
`
`did not invent anything beyond what was already well understood in the art at the
`
`time of their earliest claimed priority date.
`
`‘007 Patent Prosecution History
`
`B.
`The application leading to the ‘007 patent was filed on March 21, 2011 as a
`
`continuation of the application leading to the ‘390 patent (filed June 30, 2009), which
`
`is a continuation of the application leading to the ‘595 patent (filed January 16, 2008),
`
`10
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`which is a continuation of the application leading to the ‘833 patent (filed September
`
`3, 2004), and in turn a continuation of the application leading to the ‘947 patent (filed
`
`March 28, 2000). On June 27, 2012, the Examiner issued a non-final Office Action,
`
`rejecting original prosecution claims 11 and 18 under 35 U.S.C. § 101 and original
`
`prosecution claims 1-13, 18, and 20 for double patenting. See Ex. 1002 at 356 (June
`
`27, 2012 Non-Final OA at 3). Claims 14-17 and 19 were objected to as being
`
`dependent upon a rejected base claim, but were deemed allowable if rewritten in
`
`independent form. Id. at 357 (June 27, 2012 Non-Final OA at 4). The rejections of
`
`what would become the Challenged Claims—claims 1, 2, 5-8, and 10—were based on
`
`obviousness-type double patenting over claims of the ‘390 patent. The Examiner
`
`stated that prosecution claims 1-11, 18, and 20 were anticipated by claim 1 of the ‘390
`
`patent because both the prosecution claims and ‘390 claim 1 “teach accessing content
`
`from a website and delivering the content at first and second data rates.” Id. at 356-57
`
`(June 27, 2012 Non-Final OA at 3-4).
`
`Applicants responded on September 25, 2012, with amendments to claims
`
`other than those challenged here, and submitted a Terminal Disclaimer to overcome
`
`the double patenting rejection of the Challenged Claims. Id. at 558-568 (Sept. 25,
`
`2012 Amend.; Terminal Disclaimer). On November 9, 2012, the Examiner issued a
`
`Notice of Allowance. Id. at 586. On November 19, 2012, Applicants filed an
`
`Amendment after Notice of Allowance under 37 C.F.R. § 1.312 to amend prosecution
`
`claim 4. Id. at 604-623 (Nov. 19, 2012 Amend.). On November 27, 2012, the
`
`11
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`Examiner entered the Amendment. Id. at 624-628 (Nov. 27, 2012 Response to
`
`Amendment under Rule 312). The patent issued on January 22, 2013.
`
`‘390 Parent Patent Prosecution History
`
`C.
`As explained above, the Challenged Claims—claims 1, 2, 5-8, and 10—were
`
`rejected during prosecution of the ‘007 patent based on obviousness-type double
`
`patenting over claim 1 of the ‘390 patent (the parent of the ‘007 patent). During
`
`prosecution of the parent ‘390 patent, Applicants stated that prosecution claims 19, 30
`
`and 37 (which issued as ‘390 claims 1, 11 and 16) “include[s] a limitation directed at
`
`switching between different communication rates during the process of receiving a
`
`piece of content (e.g., a song or a video) that is being delivered as streaming media
`
`(i.e., the delivery method is streaming media as opposed to download and play).” Ex.
`
`1003 at 562 (Aug. 4, 2010, Prelim. Amend. at 7). As support for this new limitation,
`
`Applicants cited two portions of the specification, which state:
`
`In one embodiment, the selected information may be formatted and
`transmitted to achieve a desirable transmission rate. For example,
`conventional systems may transmit information at a speed of 10 kilobits
`per second.
`
`* * *
`
`For example, the selected audio information may first be transmitted to
`the electronic device via high-speed communication until enough
`information has been wirelessly communicated and buffered into a
`memory device operably associated with the electronic device. Upon
`communication of a certain percentage of
`the selected audio
`
`12
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`information, slower communication speeds may then be used to
`communicate additional selected audio information.
`
`See id.; Ex. 1001, at 5:21-24, 6:6-13. With respect to prosecution claims 30 and 37, the
`
`examiner found that U.S. Patent No. 6,405,256 (“Lin”) taught the switching of
`
`communication rates and further concluded that “[a]t the time of the invention, it
`
`would have been obvious to one of ordinary skill in the art to modify [the prior art] to
`
`include Lin. The motivation for this modification, as suggested by Lin, would have
`
`been to improve the performance of the data streaming [col. 3: lines 24-28].” Ex.
`
`1003 at 572, 573, 575 (Sept. 17, 2010 OA, pp. 3-4, 6). The examiner thus concluded
`
`that the switching of communication rates was known in the art and would have been
`
`obvious to combine with other prior art.3
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO
`AT LEAST ONE CLAIM OF THE ‘007 PATENT
`
`Petitioners submit there is at least “a reasonable likelihood that the petitioners
`
`would prevail with respect to at least 1 of the claims challenged in the petition.”
`
`35 U.S.C. § 314(a). Indeed, all of the Challenged Claims of the ‘007 patent are
`
`unpatentable as invalid under the requirements of 35 U.S.C. § 103 because they are
`
`obvious in light of the prior art, as explained below in Sections V.C to V.E.
`
`Specifically, this Petition relies on two primary references, Treyz and Abecassis.
`
`3 Petitioners are also challenging the validity of certain claims of the ‘390 parent patent
`
`in inter partes review proceedings IPR2014-00209 and IPR2014-00212.
`
`13
`
`

`

`Inter Partes Review
`United States Patent No. 8,359,007
`Although Treyz and Abecassis were cited (am