IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA, INC.
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`Petitioners,
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`v.
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`AFFINITY LABS OF TEXAS, LLC,
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`Patent Owner.
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`IPR2014-01181, IPR2014-01182, IPR2014-011841
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`Patent 8,532,641 B2
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`PATENT OWNER’S NOTICE OF APPEAL
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`1 Cases IPR2014-01181, IPR2014-01182, and IPR2014-01184 were consolidated
`on March 24, 2015. See IPR2014-01181, Paper 15 at 2.
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`86566818.1
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`Patent 8,532,641 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA, INC.
`
`Petitioners,
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`v.
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`AFFINITY LABS OF TEXAS, LLC,
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`Patent Owner.
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`IPR2014-01181, IPR2014-01182, IPR2014-011841
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`Patent 8,532,641 B2
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`PATENT OWNER’S NOTICE OF APPEAL
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`1 Cases IPR2014-01181, IPR2014-01182, and IPR2014-01184 were consolidated
`on March 24, 2015. See IPR2014-01181, Paper 15 at 2.
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`86566818.1
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`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to 37 C.F.R. § 90.2(a), notice is hereby given that Patent Owner,
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`Affinity Labs of Texas, LLC, (“Patent Owner”) hereby appeals to the United States
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`Court of Appeals for the Federal Circuit from the Final Written Decision of the
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`Patent Trial and Appeals Board entered on January 28, 2016 in case IPR2014-
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`01181, Paper 36; IPR2014-01182, Paper 16; and IPR2014-01184, Paper 16, and
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`from all underlying findings, orders, decisions, rulings, and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
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`the issues on appeal include:
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`(1) whether the Board erred in finding claims 1-3, 5, 9, 10, and 14 of the
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`’641 patent unpatentable under 35 U.S.C. § 103 over the combination of
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`Abecassis, Herrod, and Chennakeshu, including the Board’s determination that
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`Petitioners met their burden to show unpatentability by a preponderance of
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`evidence and any finding or determination supporting or related to this issue;
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`(2) whether the Board erred in finding claims 6-7 of the ’641 patent
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`unpatentable under 35 U.S.C. § 103 over the combination of Abecassis, Herrod,
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`Chennakeshu, and Galensky, including the Board’s determination that Petitioners
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`Patent 8,532,641 B2
`met their burden to show unpatentability by a preponderance of evidence and any
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`finding or determination supporting or related to this issue;
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`(3) whether the Board erred in finding claims 8, 11, and 13 of the ’641
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`patent unpatentable under 35 U.S.C. § 103 over the combination of Abecassis and
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`Chennakeshu, including the Board’s determination that Petitioners met their
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`burden to show unpatentability by a preponderance of evidence and any finding or
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`determination supporting or related to this issue;
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`(4) whether the Board erred in finding claim 12 of the ’641 patent
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`unpatentable under 35 U.S.C. § 103 over the combination of Abecassis,
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`Chennakeshu, and Galensky, including the Board’s determination that Petitioners
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`met their burden to show unpatentability by a preponderance of evidence and any
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`finding or determination supporting or related to this issue;
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`(5) whether the Board erred in finding claims 8, 11, 13, and 14 of the ’641
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`patent unpatentable under 35 U.S.C. § 103 over the combination of Ito, Haartsen,
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`Nokia, and Rydbeck, including the Board’s determination that Petitioners met their
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`burden to show unpatentability by a preponderance of evidence and any finding or
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`determination supporting or related to this issue;
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`(6) whether the Board erred in finding claim 12 of the ’641 patent
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`unpatentable under 35 U.S.C. § 103 over the combination of Ito, Haartsen, Nokia,
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`Rydbeck, and Galensky, including the Board’s determination that Petitioners met
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`Patent 8,532,641 B2
`their burden to show unpatentability by a preponderance of evidence and any
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`finding or determination supporting or related to this issue;
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`(7) whether the Board erred in finding claims 8 and 11 of the ’641 patent
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`unpatentable under 35 U.S.C. § 103 over the combination of Ohmura and Ahn,
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`including the Board’s determination that Ohmura and Ahn qualify as prior art to
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`the ’641 patent, that Petitioners met their burden to show unpatentability by a
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`preponderance of evidence, and any finding or determination supporting or related
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`to this issue;
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`(8) whether the Board erred in finding claims 13-14 of the ’641 patent
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`unpatentable under 35 U.S.C. § 103 over the combination of Ohmura, Ahn, and
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`Nokia, including the Board’s determination that Ohmura, Ahn, and Nokia qualify
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`as prior art to the ’641 patent, that Petitioners met their burden to show
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`unpatentability by a preponderance of evidence, and any finding or determination
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`supporting or related to this issue;
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`(9) whether the Board erred in construing the claim term “streaming audio
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`signal” as “an audio signal that is transferred in a continuous stream,” including
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`any finding or determination supporting or related to this issue;
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`(10) whether the Board erred in construing the claim term “communication
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`rate that provides for a CD quality listening experience” as “a data transfer rate that
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`provides audio of equal or comparable quality to sound stored on a compact disc,”
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`including any finding or determination supporting or related to this issue;
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`(11) whether the Board erred in deciding issues of priority outside the scope
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`of the Board’s statutory authority to decide issues of unpatentability “only on a
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`ground that could be raised under section 102 or 103”;
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`(12) whether the Board erred in finding that claims 8, 11, and 13-14 of the
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`’641 patent are not entitled to a priority date earlier than November 9, 2012,
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`including any finding or determination supporting or related to this issue;
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`(13) whether the Board erred in considering improper new arguments and
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`evidence introduced for the first time in the Petitioners’ Reply;
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`(14) whether the Board deprived the Patent Owner of its constitutional right
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`to a jury trial under the Seventh Amendment of the United States Constitution by
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`denying Patent Owner of its patent rights without a jury trial or that the inter partes
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`review process is a violation of the separation of powers provided in the United
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`States Constitution, and any finding or determination supporting or related to these
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`issues; and
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`(15) any other issues decided adversely to Patent Owner in any orders,
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`decisions, rulings, or opinions issued in these proceedings.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the Patent Trial and Appeal Board. In addition, this Notice of Appeal
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`and the required fee are being filed with the Clerk’s Office for the United States
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`Respectfully submitted,
`
`
`/s/Ryan M. Schultz
`Ryan M. Schultz
`
`Registration No. 65,134
`
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`Phone: (612)349-8500
`Email: RSchultz@RobinsKaplan.com
`Attorney for Patent Owner
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`Court of Appeals for the Federal Circuit.
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`Dated: March 30, 2016
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 30, 2016, a true and correct copy of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically
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`through the Patent Trial and Appeal Board’s Patent Review Processing System and
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`was filed with the Director of the United States Patent and Trademark office c/o
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`the Office of General Counsel via Priority Mail Express sent to the following
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`address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I hereby also certify that on March 30, 2016, a true and correct copy of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically
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`with the Clerk’s Office of the United States Court of Appeals for the Federal
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`Circuit via CM/ECF.
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`
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`I hereby further certify that on March 30, 2016, a true and correct copy of
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`the foregoing PATENT OWNER’S NOTICE OF APPEAL has been served in its
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`entirety on the Petitioners by electronic mail, as agreed upon by the parties:
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`Steven.Baughman@ropesgray.com
`Gabrielle.Higgins@ropesgray.com
`Kathryn.Hong@ropesgray.com
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`SamsungIPRService@ropesgray.com
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`Dated: March 30, 2016
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`/s/Ryan M. Schultz
`Registration No. 65,134
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`Trials@uspto.gov
`571-272-7822
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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.
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`IPR2014-01181
`Patent 8,532,641 B2
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`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
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`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.
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`2
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`IPR2014-01181
`Patent 8,532,641 B2
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`We have jurisdiction under 35 U.S.C. § 6(c), and this Final Written
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`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.
`
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`Patent 8,532,641 B2
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`In one embodiment, the electronic device is operable to communicate
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`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
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`IPR2014-01181
`Patent 8,532,641 B2
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`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.
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`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
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`1203
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`Ohmura
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`Ahn
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`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
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`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
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`6
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`IPR2014-01181
`Patent 8,532,641 B2
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`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
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`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.
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`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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`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
`
`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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`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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`IPR2014-01181
`Patent 8,532,641 B
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