`571-272-7822
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`
`
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` Paper 36
` Entered: January 28, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD and
`SAMSUNG ELECTRONICS AMERICA, INC.,1
`
`Petitioner,
`
`v.
`
`
`
`
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-011812
`Patent 8,532,641 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`1 On January 1, 2015, Samsung Telecommunications America, LLC, an
`originally-named Petitioner in this case, was merged into Samsung
`Electronics America, Inc. See IPR2014-01181, Paper 9.
`2 On March 24, 2015, we consolidated IPR2014-01182 and IPR2014-01184
`with IPR2014-01181. IPR2014-01181, Paper 15, 2.
`
`
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`I. INTRODUCTION
`A. Background
`
`Samsung Electronics Co., Ltd and Samsung Electronics America, Inc.
`(collectively “Petitioner”) filed Petitions in IPR2014-01181 (Paper 4,
`“-01181 Pet.”), IPR2014-01182 (Paper 4, “-01182 Pet.”), and IPR2014-
`01184 (Paper 4, “-01184 Pet.”) requesting inter partes review of claims 1–3
`and 5–14 of U.S. Patent No. 8,352,641 B2 (Ex. 1001, “the ’641 patent”).
`Affinity Labs of Texas, LLC (“Patent Owner”) filed Preliminary Responses
`to the Petitions.
`Pursuant to 35 U.S.C. § 314(a), we instituted inter partes review in
`
`each of IPR2014-01181 (Paper 10, “-01181 Dec. on Inst.”), IPR2014-01182
`(Paper 10, “-01182 Dec. on Inst.”), and IPR2014-01184 (Paper 10, “-01184
`Dec. on Inst.”) and subsequently consolidated IPR2014-01182 and IPR2014-
`01184 with IPR2014-01181. IPR2014-01181, Paper 15, 2. Patent Owner
`filed a consolidated Patent Owner Response (Paper 20, “PO Resp.”) to the
`Petitions and Petitioner filed a Reply (Paper 23, “Reply”).3 Patent Owner
`also filed a paper identifying arguments and evidence in Petitioner’s Reply
`that it contends were improper (Paper 26), to which Petitioner filed a
`response (Paper 29).
`
`In support of their respective positions, Petitioner submitted four
`declarations from Dr. Schuyler Quackenbush, Exs. 1023, 1123, 1223, 1025,
`and Patent Owner filed a declaration from Dr. Marilyn Wolf, Ex. 2005.
`
`An oral hearing was held on October 28, 2015, and a transcript of the
`oral hearing is included in the record. Paper 35 (“Tr.”).
`
`
`3 All subsequent citations to papers or exhibits refer to those in IPR2014-
`01181, unless otherwise noted.
`
`
`
`2
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`We have jurisdiction under 35 U.S.C. § 6(c), and this Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`where we find claims 1–3 and 5–14 of the ’641 patent to be unpatentable.
`B. The ’641 Patent
`The ’641 patent is directed to a system and method for
`
`communicating selected information to an electronic device. Ex. 1001,
`1:21–23, 2:15–21. In the disclosed embodiments, a radio listener may create
`a personalized playlist and “listen to this playlist in a wireless atmosphere
`while enjoying CD quality sound.” Id. at 2:18–21. The audio information
`transmitted to a user may include “songs, on-line radio stations, on-line
`broadcasts, streaming audio, or other selectable information.” Id. at 3:67–
`4:1.
`Electronic devices contemplated for use in the disclosed system
`
`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 communicated” by a communications
`engine. Id. at 5:36–41. Wireless communication from the communications
`engine may be by various means, including cellular communications, AM or
`FM signals, or “high speed, low-power microwave wireless link[s],” such as
`a “Bluetooth link.” Id. at 2:33–43, 5:61–6:24.
`
`According to the ’641 patent, “conventional” wireless systems
`communicate across a channel in “an asynchronous manner.” Id. at 6:34–
`39. In addition to this conventional asynchronous method, the ’641 patent
`also “advantageously allows for signals to be transmitted to an electronic
`device in a less than asynchronous manner.” Id. at 6:40–42.
`
`
`
`3
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`In one embodiment, the electronic device is operable to communicate
`
`the received audio information to a different audio system, such as an audio
`radio receiver, using “a localized communications-signaling network.” Id. at
`9:44–56, 10:26–35, 12:29–35. The electronic device may utilize a physical
`interface having two conductive paths, the first path for communicating
`information and the second path for providing power to the device. Id. at
`18:40–53.
`
`C. Illustrative Claims
`1. A music enabled communication system, comprising: a
`wireless telephone device, the device having (1) a display at
`least partially defining a front surface of the device, (2) a housing
`component at least partially defining a back surface of the device,
`(3) an enclosure located between the front surface and the back
`surface, (4) a wireless communication module located within the
`enclosure, (5) a rechargeable power supply located within the
`enclosure, (6) a physical interface having a first and a second
`conductive path, the physical interface operable to communicate
`data via the first conductive path and to receive a recharging
`power for the rechargeable power supply via the second
`conductive path, and (7) a memory system, located within the
`enclosure; and
`
` a
`
` collection of instructions stored in the memory system, the
`collection of
`instructions operable when executed
`to
`communicate a collection of information about media content
`available from the wireless telephone device to a recipient device
`such that the recipient device can use the collection of
`information to generate a graphical menu comprising a selectable
`menu item associated with the available media content, to utilize
`the wireless communication module
`to stream a signal
`representing at least a portion of a song to the recipient device
`using a given asynchronous wireless channel of a localized
`communications signaling network, to recognize receipt of an
`incoming telephone call, and to alter an outputting of the signal
`
`
`
`4
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`in connection with recognizing receipt of the incoming telephone
`call.
`Ex. 1001, 19:29–57.
`8. A system for wirelessly communicating musical content,
`comprising:
`a portable electronic device having a processor operable to play
`an audio file that represents a song;
`a memory communicatively coupled to the processor and
`configured to store a plurality of audio files; and
`a wireless communication module communicatively coupled to
`the processor and operable to communicate a streaming audio
`signal that represents a playing of the song to a recipient device
`via a localized communications signaling network in response to
`a selection of a selectable menu item presented on a recipient
`device display, wherein the wireless communication module is
`compliant with a Bluetooth standard, further wherein the
`wireless communication module is configured to communicate
`at least a portion of the streaming audio signal to the recipient
`device using an asynchronous channel.
`Id. at 20:28–45.
`11. The system of claim 8, wherein the wireless communication
`module is operable to communicate the streaming audio signal at
`a communication rate that provides for a CD quality listening
`experience.
`Id. at 20:64–67.
`
`
`
`D. The Evidence of Record
`Petitioner relies upon the following references:
`Exhibit(s)
`Reference
`Patent/Publication
`Date
`Ito
`US 6,990,334 B1
`Jan. 24, 2006 10034
`
`4 Exhibits with 10XX, 11XX, and 12XX prefixes were filed in IPR2014-
`01181, -01182, and -01184, respectively. Exhibits with 20XX, 21XX, and
`22XX prefixes were filed in IPR2014-01181, -01182, and -01184,
`respectively.
`
`
`
`5
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Patent/Publication
`Reference
`US 6,973,067 B1
`Haartsen
`US 7,123,936 B1
`Rydbeck
`US 6,845,398 B1
`Galensky
`US 6,192,340 B1
`Abecassis
`Chennakeshu US 6,542,758 B1
`Herrod
`US 6,405,049 B2
`
`Exhibit(s)
`Date
`1006
`Dec. 6, 2005
`Oct. 17, 2006 1008, 1112
`Jan. 18, 2005 1009, 1107, 1209
`Feb. 20, 2001 1103
`Apr. 1, 2003
`1105
`June. 11,
`1106
`2002
`Aug. 30,
`2005
`US 2004/0214525 A1 Oct. 28, 2004 1205
`
`US 6,937,732 B2
`
`1203
`
`Ohmura
`
`Ahn
`
`
`Owner’s Manual, Nokia 9000i Communicator, 1995–1997 Nokia Mobile
`Phones Ltd. (Ex. 1005B).
`E. The Asserted Grounds of Unpatentability
`The Board instituted inter partes review on the following asserted
`
`grounds of unpatentability (-01181 Dec. on Inst. 19; -01182 Dec. on Inst.
`20–21; -01184 Dec. on Inst. 15):
`IPR2014-01181
`Statutory Ground References
`§ 103
`Ito, Haartsen, Nokia, and
`Rydbeck
`Ito, Haartsen, Nokia,
`Rydbeck, and Galensky
`IPR2014-01182
`Statutory Ground References
`§ 103
`Abecassis, Chennakeshu,
`and Herrod
`Abecassis, Chennakeshu,
`Herrod, and Galensky
`
`Challenged Claim(s)
`8, 11, 13, and 14
`
`12
`
`Challenged Claim(s)
`1–3, 5, 9, 10, and 14
`
`6 and 7
`
`§ 103
`
`§ 103
`
`
`
`6
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Statutory Ground References
`Challenged Claim(s)
`§ 103
`Abecassis and Chennakeshu 8, 11, and 13
`§ 103
`Abecassis, Chennakeshu,
`12
`and Galensky
`
`
`IPR2014-01184
`Statutory Ground References
`§ 103
`Ohmura and Ahn
`§ 103
`Ohmura, Ahn, and Nokia
`
`
`
`Challenged Claim(s)
`8 and 11
`13 and 14
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, we give each claim term its
`
`broadest reasonable interpretation, as understood by one of ordinary skill in
`the art in light of the specification of the involved patent. 37 C.F.R.
`§ 42.100(b). Absent any special definitions in the specification, under the
`broadest reasonable construction standard we give claim terms their ordinary
`and customary meaning, as would be understood by one of ordinary skill in
`the art at the time of the invention. See In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms
`must be set forth with reasonable clarity, deliberateness, and precision. See
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`1. streaming audio signal
`In the Decision to Institute, we preliminarily construed the term
`
`“streaming audio signal” to mean “an audio signal that is transferred in a
`continuous stream.” -01181 Dec. on Inst. 8. This construction was based, in
`part, on a dictionary definition of the term “streaming,” which is “relating to
`
`
`
`7
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`IPR2014-01181
`Patent 8,532,641 B2
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`or being the transfer of data (as audio or video material) in a continuous
`stream especially for immediate processing or playback.”5
`
`Patent Owner contends our preliminary construction is too broad.
`According to Patent Owner, a person of ordinary skill in the art6 would
`understand the term “streaming” in the ’641 patent to mean a “signal/audio
`signal that is played as it arrives at a recipient device, not requiring that an
`entire file be transferred to and stored at a recipient device prior to initiating
`playback.” PO Resp. 7; Ex. 2005 ¶¶ 114–115. Patent Owner contends this
`narrower construction—requiring a “streaming audio signal” be played as it
`arrives—is supported by the “clear” delineation between “download and
`play files” and “streaming files” set forth in the ’641 patent. PO Resp. 7.
`
`In support of this argument, Patent Owner points to the following
`disclosures of the ’641 patent regarding the transfer of content to an
`electronic device:
`For example, a user may want to listen to an internet broadcast
`of an
`Internet
`radio
`station.
` Therefore, high-speed
`communication may be required to wirelessly communicate or
`stream the selected audio information to an electronic device.
`Ex. 1001, 7:3–7.
`
`
`5 Streaming definition, MERRIAM-WEBSTER.COM, http://www.merriam-
`webster.com/dictionary/streaming.
`6 Petitioner contends that a person of ordinary skill in the art would have a
`Bachelor’s degree in Electrical Engineering or Computer Science and
`approximately 1–2 years of experience in working with client/server
`architectures, Internet transmission protocols, wireless transmission
`protocols, Internet browser programming, and streaming media
`transmission. -01181 Pet. 12. Although Dr. Wolf’s identification of a
`person of ordinary skill in the art varies slightly from Petitioner’s, Patent
`Owner does not assert that this difference is material to the outcome of this
`case. See Ex. 2005 ¶ 34.
`
`
`
`8
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`IPR2014-01181
`Patent 8,532,641 B2
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`In another embodiment, portable radio 500 may include memory
`operably located within for storing downloaded information. For
`example, portable radio 500 may include 32 MB of RAM
`allowing electronic device 502 to receive selective information
`and download the selective information to memory located
`within the portable radio 500.
`Id. at 13:4–9. According to Patent Owner, the first paragraph
`identifies “streaming audio” that is played as it arrives and the second
`paragraph identifies “download and play files” that are stored in
`memory. PO Resp. 7.
`
`Patent Owner also argues that the patentee’s statements during
`prosecution reinforce the difference between “streaming” and
`“download and play files”:
`[S]treaming audio includes playing audio or video immediately
`as it is downloaded from the Internet, rather than storing it in a
`file on the receiving computer first.” A second reference defines
`streaming audio as “. . . streaming sound is played as it arrives.
`The alternative is a sound recording that doesn’t start playing
`until the entire file has arrived.”
`Id. at 8 (quoting Ex. 2101, 2). Thus, Patent Owner contends the intrinsic
`evidence as a whole supports a construction that requires the immediate
`playback of “streaming audio.”
`
`Petitioner asserts the Board’s preliminary construction is consistent
`with the meaning one of ordinary skill in the art would give the term
`“streaming audio signal.” Reply 3. According to Petitioner, the ’641 patent
`does not disclose or require that “streaming audio” be played as it arrives
`and, contrary to Patent Owner’s proposed construction, the ’641 patent
`discusses “downloading” “audio information such as MP3s, streaming
`audio, [and] streaming Internet Broadcasts . . . .” Id. at 4 (quoting Ex. 1001,
`8:31–35).
`
`
`
`9
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`IPR2014-01181
`Patent 8,532,641 B2
`
`With respect to Patent Owner’s statements during prosecution,
`
`Petitioner contends the Examiner specifically rejected Patent Owner’s
`proposed distinction between “streaming” and download and play files as
`unsupported by the Specification of the ’641 patent:
`The Applicant goes to great lengths to describe the differences
`between an ‘audio file’ and ‘streaming audio’ in his remarks.
`However, the examiner maintains that ‘streaming audio’ is
`transferred as an ‘audio file’ and can be stored on the receiving
`device as such. The invention as claimed provides no teachings
`of any other definition or significant difference between
`‘streaming audio’ and the transfer of an ‘audio file’.
`Ex. 1218, 394; Reply 4.
`
`We agree with Patent Owner that the term “streaming” is often used in
`the context of the immediate processing and playback of audio information.
`-01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does
`not require the immediate playback of streaming audio information, and the
`portions of the ’641 patent identified by Patent Owner do not demonstrate
`with reasonable clarity, deliberateness, and precision that a narrower claim
`definition should apply. For example, although the discussion in the ’641
`patent of using high-speed communications for streaming an Internet radio
`station supports Patent Owner’s argument that “streaming audio” may be
`played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also
`discloses “downloading” “streaming audio” and “streaming Internet
`Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the
`disclosures of the ’641 patent are consistent with the dictionary definition of
`the term “streaming,” which contemplates the transfer of “streaming audio”
`as a constant stream of data for either immediate or delayed playback.
`
`
`
`10
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`IPR2014-01181
`Patent 8,532,641 B2
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`Accordingly, we construe the term “streaming audio signal” as “an
`
`audio signal that is transferred in a continuous stream.”
`2. communication rate that provides for
`a CD quality listening experience
`The term “communication rate that provides for a CD quality listening
`
`experience” is recited in dependent claim 11. This term is not explicitly
`defined in the Specification of the ’641 patent and we did not provide a
`preliminary construction for the term in the Decision to Institute. PO Resp.
`10.
`Patent Owner contends this term “has a specific and well-understood
`
`meaning” and should be construed as a “data transfer rate sufficient to obtain
`1.4 megabits per second.” Id. Patent Owner reasons that the Compact Disc
`Digital Audio Standard, commonly referred to as the “Red Book,”
`establishes “that CD audio should consist of a 44.1 kHz sampling frequency
`at a 16-bit signal quantization across 2 channels” and one of ordinary skill in
`the art would look to this standard in interpreting the meaning of the term
`“communication rate that provides for a CD quality listening experience.”
`Id. at 10–11 (citing Ex. 2006, 4–9; Ex. 2005 ¶ 133); see also id. at 11 (citing
`Ex. 2007, 40:2–17) (contending that Dr. Quackenbush admitted during his
`deposition that one of ordinary skill in the art would understand that the Red
`Book specifications are “related to CD audio”).
`
`Petitioner contends the broadest reasonable construction of the term
`“communication rate that provides for a CD quality listening experience” is
`a “speed at which data is transmitted that provides for a listening experience
`that is similar to that of a CD.” Reply 6; -01182 Pet. 11–12. In support of
`this argument, Petitioner provides a dictionary definition of “CD-quality”
`that defines the term as “of equal or comparable quality to sound stored on a
`
`
`
`11
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`IPR2014-01181
`Patent 8,532,641 B2
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`compact disc.” Reply 9 (citing Ex. 1033 (Oxford English Dictionary)).
`Petitioner also argues that a transfer rate of 1.4 megabits per second is not
`required to provide for a “CD quality listening experience” as audio
`compression standards such as MPEG-1 and Precision Adaptive Subband
`Coding (PASC) could be used to compress data samples from a CD by “up
`to an order of magnitude” and still provide “CD-Quality audio.” Id. at 7–9
`(citing Ex. 1034, 2).
`
`We find that Petitioner demonstrates persuasively that known
`compression standards would allow for “CD-quality audio” at transfer rates
`less than 1.4 megabits per second. Reply 7–9, 27 (citing Ex. 1032, 328; Ex.
`1034, 2; Ex. 1025 ¶ 87; Ex. 1049A; Ex. 1050, 1:8–10, 3:4–11). Moreover,
`the ’641 patent does not support Patent Owner’s proposed construction. For
`example, in the discussion of the various communications standards
`operable in the disclosed embodiments of the ’641 patent to provide CD
`quality sound, it is noted that a Bluetooth link may be used. Ex. 1001, 2:18–
`21, 2:39–43. Yet, both parties agree that Bluetooth cannot transfer data at a
`rate of 1.4 megabits per second. Tr. 12:20–23, 80:10–14. Thus, we are not
`persuaded that one of ordinary skill in the art would understand a “CD
`quality listening experience” to require a data transfer rate of 1.4 megabits
`per second.
`
`Based on the dictionary definition provided by Petitioner and the
`disclosures of the ’641 patent, we construe the term “communication rate
`that provides for a CD quality listening experience” to mean “a data transfer
`rate that provides audio of equal or comparable quality to sound stored on a
`compact disc.” See Ex. 1033, 3.
`
`
`
`12
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`IPR2014-01181
`Patent 8,532,641 B2
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`3. remaining claim terms
`Patent Owner also proposes constructions for the terms wireless
`
`telephone device, a signal representing at least a portion of a song, while,
`and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review
`of Petitioner’s and Patent Owner’s arguments, we determine that
`construction of these additional claim terms is not required for purposes of
`this decision.
`
`B. Abecassis-Based Grounds—Obviousness of Claims 1–3 and 5–14
`Petitioner asserts that claims 1–3, 5, 9, 10, and 14 of the ’641 patent
`
`would have been obvious over Abecassis, Chennakeshu, and Herrod; claims
`6 and 7 would have been obvious over Abecassis, Chennakeshu, Herrod, and
`Galensky; claims 8, 11, and 13 would have been obvious over Abecassis and
`Chennakeshu; and claim 12 would have been obvious over Abecassis,
`Chennakeshu, and Galensky. -01182 Dec. on Inst. 20–21; Pet. 12–38.7
`
`1. Abecassis
`Abecassis is directed to “[s]ystems for, and methods of, integrating a
`
`playing of music that is responsive to a user’s music preferences applied to
`the user’s audio library with a playing of real-time information that is
`responsive to the user’s information preferences.” Ex. 1103, 1:8–12. To
`implement this method, Abecassis discloses a portable Multimedia Player
`that is “intended to function as a stand alone cellular phone, as a part of
`multiple-phone configuration, a radio, a remote control, as a digital audio
`player, and/or as a radio-on-demand player.” Id. at 9:26–31. In one
`embodiment, the Multimedia Player can be used in conjunction with the
`
`7 Citations to the Petition in Section II.B are to the Petition filed in IPR2014-
`01182.
`
`
`
`13
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`IPR2014-01181
`Patent 8,532,641 B2
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`speaker system of a vehicle and may transfer information by “means of a
`cable or by direct insertion into a built-in docking bay.” Id. at 14:12–17.
`
`Abecassis discloses that a “virtual audio item may be retrieved at the
`time of its playing, i.e, retrieved and played in a real-time manner; or
`retrieved in advance of the time it is to be played, temporarily stored in any
`of a Multimedia Player’[s] storage means, and erased from memory after
`being utilized for a single playing or for a plurality of scheduled or projected
`playings.” Id. at 14:60–65.
`
`The Multimedia Player may be controlled by a remote control device
`having various function keys useful for “program selection, music and
`information preference selection, and source selection.” Id. at 9:47–55. The
`remote control may communicate directly with the Multimedia Player, using
`wired or wireless means, and may “directly receive from the Multimedia
`Player a transmission and render it audible for the user through its built-in
`speaker or by means of headphones connected to the remote control . . . .”
`Id. at 10:41–45, 12:28–39.
`
`2. Chennakeshu
`Chennakeshu is directed to a mobile radio telephone for use in a
`
`vehicle. Ex. 1105, 1:9–12. The mobile telephone of Chennakeshu may
`communicate using a Bluetooth interface over an asynchronous data
`channel. Id. at 4:60–5:15. In at least one embodiment, the system of
`Chennakeshu is configured to allow for “hands-free operation once a call is
`established.” Id. at 1:22–24.
`
`3. Herrod
`Herrod is directed to a portable data device, or terminal, for use with a
`
`terminal docking device, or cradle. Ex. 1106, 1:5–7. The portable data
`
`
`
`14
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`device of Herrod “compris[es] cellular telephone means for conventional
`telephone communication.” Id. at 3:32–36, 16:8–11. The portable data
`device of Herrod also contains both a rechargeable battery and a physical
`interface that allows for connection of the terminal with a terminal docking
`device. Id. at 6:56–59, 18:66–19:14. This terminal docking device is
`connected via a cable to both a power source and a network. Id. at 6:30–38,
`6:56–64, 18:66–19:14; Ex. 1123 ¶¶ 45–52.
`
`4. Galensky
`Galensky is directed to “[a] wireless device, system and method for
`
`receiving and playing multimedia files streamed from a multimedia server
`over a wireless telecommunications network.” Ex. 1107, Abstract.
`Galensky discloses that “to conserve bandwidth within the wireless
`network,” it is preferable to transmit data “at the highest data rate possible”
`to create a 5–10 second buffer and, once the desired buffer is created, to
`decrease the data transmission rate to the minimum rate necessary for
`adequate transmission of “streamed data.” Id. at 6:1–18.
`
`5. Combination of Abecassis, Chennakeshu, and Herrod
`Petitioner asserts that the combination of Abecassis, Chennakeshu,
`
`and Herrod discloses, or renders obvious, every limitation of claims 1–3, 5,
`9, 10, and 14 of the ’641 patent. Pet. 12–38. In particular, Petitioner asserts
`that Abecassis discloses: (1) a wireless telephone device having a display,
`housing, wireless communication module, and memory; (2) a collection of
`instructions operable to provide information about media content available
`from the wireless telephone device to a recipient device (in the form of a
`remote control) such that the recipient device can use the information to
`generate a selectable menu item associated with available media content;
`
`
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`15
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`and (3) streaming at least a portion of a song to the recipient device. Id. at
`18–23 (citing Ex. 1103, 14:60–65 (“A virtual audio item may be retrieved at
`the time of its playing, i.e., retrieved and played in a real-time
`manner . . . .”)). Petitioner further asserts that Chennakeshu discloses hands-
`free operation of a wireless telephone and the use of a Bluetooth
`communication module to transmit information over an asynchronous
`channel. Id. at 21–22, 26–28. Petitioner also asserts that Herrod discloses a
`display that makes up more than half of the front surface of the device, a
`rechargeable power supply, and a physical interface operable to
`communicate data over a first path and receive power over a second path.
`Id. at 18–19. Petitioner further asserts that USB interfaces were “well-
`known prior to March 28, 2000 and provided a non-circular interface to
`communicate data via a first conductive path and receive a recharging power
`via a second conductive path.” Id. at 24 (citing Ex. 1123 ¶ 46; Ex. 1113A;
`Ex. 1118, 13–14, 19–20).
`
`With respect to the reason to combine the references, Petitioner
`asserts it would have been obvious to incorporate Chennakeshu’s Bluetooth
`communication module in the Abecassis device because “Bluetooth was
`being widely adopted by many companies in the industry” and provided an
`“economically feasible” method for connecting various devices. Id. at 15
`(citing Ex. 1108A, 110; Ex. 1123 ¶¶ 74, 84). Petitioner further asserts that
`one of ordinary skill in the art would have understood that an asynchronous
`channel provides “a simple, flexible, and cost-effective way to transmit
`data,” Pet. 15 (citing Ex. 1123 ¶ 73), and implementing the larger display,
`rechargeable power supply, and physical interface of Herrod in the wireless
`telephone of Abecassis would allow for easier navigation of displayed menu
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`items, “eliminate the need to replace batteries of the phone,” and permit
`recharging and data communication using a single physical interface. Id. at
`15–16 (citing 1123 ¶¶ 44, 52, 90, 99, 118, 119, 138) (noting that larger
`screen sizes, rechargeable batteries, and physical interfaces with access to
`both power and data communications were well known in the art).
`a. Claim 1
`Rechargeable Battery
`Patent Owner asserts that Abecassis does not disclose explicitly or
`
`inherently a rechargeable battery, as recited in claim 1. PO Resp. 54–55.
`Patent Owner further asserts that one of ordinary skill in the art would not
`have been motivated to incorporate the rechargeable battery of Herrod in the
`Abecassis device because the two references relate to different fields of art
`and there is no reported difficulty or problem that would suggest modifying
`the power supply of Abecassis. Id. at 56–57.
`
`Petitioner responds that rechargeable batteries were “common and
`well-known” in the art, as confirmed by Herrod, and a person of ordinary
`skill in the art would have sought to use the rechargeable battery of Herrod
`in the Abecassis device “to eliminate the need to periodically replace
`ordinary (i.e., non-rechargeable) batteries.” Reply 10–11 (citing Ex. 1106,
`14:18–24). Petitioner further responds that Herrod and Abecassis are in the
`same field of art, as both references disclose the use of cellular telephones
`that support multimedia applications. Id. (citing Ex. 1123 ¶ 44; Ex. 1025
`¶ 90); Pet. 16.
`
`We agree with Petitioner that the addition of well-known rechargeable
`battery technology (as disclosed in Herrod) in the device of Abecassis would
`have been obvious, at a minimum, to eliminate the need to periodically
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`replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
`according to known methods is likely to be obvious when it does no more
`than yield predictable results.”). Moreover, we are not persuaded by Patent
`Owner’s argument that Abecassis and Herrod are in different fields of
`endeavor, as both references relate to the communication of data using a
`cellular phone.8
`
`Physical Interface
`Patent Owner asserts that Abecassis does not disclose a physical
`
`interface having first and second conductive paths for the transfer of data
`and power, respectively, as recited in claim 1. PO Resp. 58. Patent Owner
`further asserts that one of ordinary skill in the art would not have sought to
`implement the physical interface of Herrod in the Abecassis device because
`Abecassis does not disclose a rechargeable battery. Id. at 59–60. And, to
`the extent that Petitioner relies upon a USB interface for this claim
`limitation, Patent Owner contends there is no evidence that “USB could
`have been successfully used to provide the power needed to recharge a
`battery.” Id. at 59.
`
`Herrod discloses a cradle with an interface operable to provide both
`recharging power and data communications. Ex. 1103, 6:56–64, 14:12–17,
`18:66–19:4. Dr. Quackenbush persuasively testifies that one of ordinary
`skill in the art would have sought to use this multipurpose interface (as well
`
`
`8 Given that both Herrod and Abecassis relate to the communication of
`information over a network using a cellular telephone, we are also persuaded
`that Herrod would have come to the attention of one of ordinary skill in the
`art considering how to improve the portability and usability of the cellular
`phone of Abecassis.
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`as a rechargeable battery) in the device of Abecassis to “advantageously
`provide[] a convenient way to both recharge the device and send or receive
`files or other data to or from the device.” Ex. 1123 ¶ 52. In addition,
`Petitioner presents persuasive evidence that the USB interface was well
`known in the art prior to 2000 and could be used to communicate data via a
`first conductive path and provide recharging power for a cellular phone via a
`second conductive path.9 Pet. 23–24 (citing Ex. 1123 ¶ 46; Ex. 1113A; Ex.
`1118, 13–14, 19–20); Reply 11–12 (citing Ex. 1025 ¶¶ 95–98).
`
`Although Patent Owner and Dr. Wolf assert that Petitioner does not
`explain specifically how the physical interface of Herrod would work in the
`Abecassis device, they do not provide any persuasive evidence tending to
`refute Dr. Quackenbush’s testimony that Herrod’s interface could be
`implemented in the Abecassis device and would work for its intended
`purpose. See PO Resp. 60; Ex. 2005 ¶¶ 241–242; Ex. 1023 ¶ 52. Thus, we
`are persuaded that one of ordinary skill in the art would have found it
`obvious to implement either a USB interface or the physical interface of
`Herrod in the Abecassis device and would have had a reasonable expectation
`of success in adding these features to the device.
`Collection of Instruction