UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR 2014-01181
`U.S. Patent No. 8,532,641
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`_____________________
`
`Case IPR2014-011811
`
`Patent No. 8,532,641 B2
`
`_____________________
`
`DECLARATION OF DR. MARILYN WOLF IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,532,641
`
`
`
`
`
`1 Cases IPR2014-01182 and IPR2014-01184 have been consolidated with the instant
`proceeding.
`
`
`
`1
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`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2005 – 1
`
`
`
`IPR 2014-01181
`U.S. Patent No. 8,532,641
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`_____________________
`
`Case IPR2014-011811
`
`Patent No. 8,532,641 B2
`
`_____________________
`
`DECLARATION OF DR. MARILYN WOLF IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,532,641
`
`
`
`
`
`1 Cases IPR2014-01182 and IPR2014-01184 have been consolidated with the instant
`proceeding.
`
`
`
`1
`
`SAMSUNG ELECTRONICS CO., LTD., v. AFFINITY LABS OF TEXAS, LLC
`IPR2014-01181 EXHIBIT 2005 – 1
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`
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`I, Dr. Marilyn Wolf, make the following Declaration pursuant to 28 U.S.C. §
`
`IPR 2014-01181
`U.S. Patent No. 8,532,641
`
`
`1746:
`
`I.
`
`INTRODUCTION
`
`1. I make all of the statements in this Declaration of my own personal
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`knowledge and in accord with 28 U.S.C. § 1746.
`
`2. Attached hereto as Appendix A is a true and correct copy of my current
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`curriculum vitae, which details my extensive work history in the electrical and
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`computer engineering fields, including my positions with AT&T Bell Laboratories,
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`MediaWorks Technology, and Verificon.
`
`3.
`
` I received my Bachelor’s, Master’s and Ph.D. degrees in Electronic
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`Engineering from Stanford University in 1980, 1981, and 1984 respectively. My
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`research interests include cyber-physical systems, embedded computing, embedded
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`multimedia and computer vision, and VLSI systems.
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`4. From 1984 to the present, I served in various positions in academia, as well
`
`as in corporate settings. From 1988 to 2007, I held various academic positions at
`
`Princeton University, such as visiting lecturer, assistant professor of electrical
`
`engineering, associate professor of electrical engineering, and professor of electrical
`
`engineering. As a professor of electrical engineering at Princeton University, I taught
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`courses on embedded computing, VLSI design, computer architecture, and
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`multimedia. In 2007, I accepted a position as a Professor, Farmer Distinguished
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`Chair, and GRA Eminent Scholar at the Georgia Institute of Technology’s School of
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`Electrical and Computer Engineering, a position that I currently hold. I teach classes
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`in embedded computing and electrical and computer engineering and I am also
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`responsible for conducting and supervising research in these areas.
`
`5. I have also held a number of positions with both major corporations and
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`start-ups. From 1984 to 1989, I was a member of the technical staff at AT&T Bell
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`Laboratories where I conducted research in computer aided design of digital systems,
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`and was also responsible for supervising the work of co-op and summer students.
`
`From 2001 to 2002, I held positions at MediaWorks Technology, including Chief
`
`Scientist, Principal SoC Architect and Chief Technical Officer. In these positions, I
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`was responsible for product definition, technology development, and chip design.
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`From 2003 to 2013, I was co-founded and was employed by Verificon Corporation,
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`which is a company that developed and licensed smart camera technology for
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`surveillance and industrial applications.
`
`6.
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` I am a co-inventor on nine U.S. Patents. These patents cover various
`
`technologies, including video browsing, video analysis, and object code compression.
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`7. I have authored or co-authored over 300 technical publications, including
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`four textbooks.
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`8. I have received the ASEE Terman Award and IEEE Circuits and Systems
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`Society Education Award, and I am also a Fellow of the IEEE and ACM and an
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`IEEE Computer Society Golden Core member.
`
`9. I have supervised the dissertations of 25 Ph.D. students.
`
`10. In addition to my academic and industrial credential, my involvement in the
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`field of wireless technology started at an early age. My father was an independent
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`inventor who involved me in his work while I was in elementary school. At the age of
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`twelve I began to build my own radios. I first built a shortwave receiver, followed by
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`the construction of an amateur radio transmitter/receiver and an automatic Morse
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`code keyer. I received a Novice class amateur radio license, which required me to pass
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`a written test on, among other things, radio circuit theory, as well as a 5 word-per-
`
`minute Morse code test.
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`11. While I was at AT&T Bell Laboratories, I conducted research into
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`computer-aided design methods for integrated circuits. This work was understandably
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`motivated by the design of VLSI chips for telecommunications equipment. As part of
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`my work, I collaborated closely with two major switching systems design
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`organizations: the No. 5 ESS organization at Naperville IL; and the System 75 and 85
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`organization at Westminster, Colorado. I also collaborated closely with the integrated
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`circuit design organizations in Allentown, Pennsylvania.
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`12. Telephony has long been a motivation for my research. My interest in
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`embedded computing systems was sparked by the design challenges posed by
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`telephones. After joining Princeton University, I taught a class in which we designed a
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`telephone switching system based on a PC. We designed, fabricated, and tested a line
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`card; we also designed call management and switching software that made use of the
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`line card.
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`13. Multimedia is another longstanding influence on my research. I designed
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`and built an early Web-based video library for Web-based browsing, search, and
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`playback. I have published extensively on both algorithms for video analysis and
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`computer systems architectures for multimedia processing.
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`14. As a part of my teaching at Princeton and Georgia Tech, I have taught
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`several classes in which students were required to complete large design projects. I
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`started to include discussions of Bluetooth in these classes soon after the introduction
`
`of Bluetooth. I have supervised many student design projects that made use of
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`Bluetooth.
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`15. While at MediaWorks Technology, I was in charge of the design of a
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`CD/MP3 player chip. This chip was designed to operate the mechanics of a CD drive
`
`(move the read head across the disc, etc.) and to decode and play MP3 music files
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`from a CD. This chip was not completed; my work concentrated on architectural
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`design and requirements for key modules in the design.
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`16. I was a co-founder of Verificon Corporation. As part of my work for
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`Verificon, I led the design of a real-time computer vision system for train station
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`safety and security. This system is now in use by Japan Rail East on their northern
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`shinkansen (bullet train) line.
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`17. I am active in several professional organizations, including the IEEE,
`
`ACM, SPIE, and ASEE. As noted above, I have been elected a Fellow of both the
`
`IEEE and ACM and I received the ASEE Terman Award. As part of my work with
`
`those organizations, I have helped to found several conferences and workshops,
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`including Embedded Systems Week, MPSoC, and ICDSC. I have served on the board
`
`of the IEEE Circuits and Systems Society. I was the founding Vice President for
`
`Finance for the IEEE Council on Electronic Design Automation.
`
`18. I am being compensated for my time spent in connection with this case at a
`
`rate of $500 per hour. I have no financial stake in the outcome of this proceeding.
`
`19. In preparing my opinions, I have considered the following materials:
`
` U.S. Patent No. 8,532,641 (“the ‘641 patent”) (Ex. 1001)
`
` File History of the ‘641 patent (Ex. 1002)
`
` U.S. Patent No. 6,990,334 (“Ito”) (Ex. 1003)
`
` User’s Manual for the Nokia 9000/9000i Communicator (Exs.
`
`1005A/1005B)
`
` U.S. Patent No. 6,973,067 (“Haartsen”) (Ex. 1006)
`
`
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` U.S. Patent No. 7,123,936 (“Rydbeck”) (Ex. 1008)
`
`IPR 2014-01181
`U.S. Patent No. 8,532,641
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` U.S. Patent No. 6,845,398 (“Galensky”) (Ex. 1009)
`
` U.S. Patent No. 6,192,340 (“Abecassis”) (Ex. 1103)
`
` U.S. Patent No. 6,542,758 (“Chennakeshu”) (Ex. 1105)
`
` U.S. Patent No. 6,405,049 (“Herrod”) (Ex. 1106)
`
` U.S. Patent No. 6,937,732 (“Ohmura”) (Ex. 1203)
`
` U.S. Patent Publication No. 2004/0214525 (“Ahn”) (Ex. 1205)
`
` Corrected Petition for Inter Partes Review (IPR2014-01181, Paper
`4)
`
` Corrected Petition for Inter Partes Review (IPR2014-01182, Paper
`4)
`
` Corrected Petition for Inter Partes Review (IPR2014-01184, Paper
`4)
`
` Patent Owner’s Preliminary Response (IPR2014-01181, Paper 8)
`
` Patent Owner’s Preliminary Response (IPR2014-01182, Paper 8)
`
` Patent Owner’s Preliminary Response (IPR2014-01184, Paper 8)
`
` PTAB Order to Institute Inter Partes Review (IPR2014-01181,
`Paper 10)
`
` PTAB Order to Institute Inter Partes Review (IPR2014-01182,
`Paper 10)
`
` PTAB Order to Institute Inter Partes Review (IPR2014-01184,
`Paper 10)
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`
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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` Declaration of Dr. Schuyler Quackenbush from IPR2014-01181
`(Ex. 1023)
`
` Declaration of Dr. Schuyler Quackenbush from IPR2014-01182
`(Ex. 1123)
`
` Declaration of Dr. Schuyler Quackenbush from IPR2014-01184
`(Ex. 1223)
`
` Specification of the Bluetooth System v1.0 B, Vols. 1 & 2, 1999
`(Ex. 1019)
`
` Non-Fee Amendment in U.S. Application 09/537,812, dated Feb.
`18, 2003 (Ex. 2001)
`
` Claim Construction Order in Affinity Labs of Texas, LLC v. BMW
`North America, LLC, dated Dec. 18, 2009 (Ex. 2002)
`
` Declaration of Cindy D. Kucheska (Ex. 2004)
`
` Exhibit A to the Declaration of Cindy D. Kucheska - Comparison
`of U.S. Patent No. 7,187,947 and U.S. Patent No. 8,532,641 (Ex.
`2004A)
`
` Exhibit B to the Declaration of Cindy D. Kucheska - Comparison
`of U.S. Patent No.7,778,595 and U.S. Patent No. 8,532,641 (Ex.
`2004B)
`
` Pohlmann, Ken C. “Principles of Digital Audio” pp. 243-252 (4th
`ed. 2000) (Ex. 2006)
`
` Deposition of Schuyler Quackenbush, PhD, April 17, 2015 (Ex.
`2007)
`
` Merriam-Webster, “Webster’s Ninth New Collegiate Dictionary”
`(1987) (Ex. 2008)
`
` Hewlett Packard, “The Personal Handy Phone System in Japan’s
`Wireless Comunication Market” (1996) (Ex. 2009)
`
`
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`U.S. Patent No. 8,532,641
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`
` Newcomb, Doug, “From EightTrack to Bluetooth: InCar
`Entertainment's Bumpy Ride” Wired Magazine (July 19, 2012)
`(Ex. 2010)
`
` Freed, Les, “The First Bluetooth” at PCMag.com,
`http://www.pcmag.com/article2/0,2817,34229,00.asp (Jan. 2,
`2001) (Ex. 2011)
`
` U.S. Patent No. 8,521,140 (“the ’140 patent”) (Ex. 2012)
`
` U.S. Patent No. 7,953,390 (“the ’390 patent”) (Ex. 2013)
`
` U.S. Patent No. 7,778,595 (“the ’595 patent”) (Ex. 2014)
`
` U.S. Patent No. 7,324,833 (“the’833 patent”) (Ex. 2015)
`
` U.S. Patent No. 8,521,140 File History (Ex. 2016)
`
` October 5, 2012 Action Closing Prosecution in Reexamination
`Control Nos. 90/010,333, 95/001,223, 95/001,264 (Ex Parte and
`Inter Partes Reexamination of U.S. Patent No. 7,324,833) (Ex.
`2017)
`
` Jury Verdict Form, Affinity Labs of Texas, LLC v. Hyundai Motor
`Am. Inc., et al., DI 520, txed-9-08-cv-00164 (E.D. Tex. Oct. 28,
`2010) (Ex. 2018)
`
` U.S. Patent No. 7,486,926 (“the ’926 patent”) (Ex. 2019)
`
` February 15, 2013 Decision on Request for Rehearing in
`Reexamination Control No. 95/001,263 (Inter Partes
`Reexamination of U.S. Patent No. 7,486,926) )(Ex. 2020)
`
` U.S. Patent No. 7,634,228 (“the ’228 patent”) (Ex. 2021)
`
` February 14, 2013 Office Action in Reexamination Control No.
`90/011,982 (Ex Parte Reexamination of U.S. Patent No.
`7,634,228) (Ex. 2022)
`
`
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` July 10, 2013 Advisory Action in Reexamination Control No.
`90/011,982 (Ex Parte Reexamination of U.S. Patent No.
`7,634,228) (Ex. 2023)
`
` October 14, 2013 Patent Owner’s Appeal Brief in Reexamination
`Control No. 90/011,982 (Ex Parte Reexamination of U.S. Patent
`No. 7,634,228) (Ex. 2024)
`
` February 6, 2014 Examiner's Answer to Appeal Brief in
`Reexamination Control No. 90/011,982 (Ex Parte Reexamination
`of U.S. Patent No. 7,634,228) (Ex. 2025)
`
` July 29, 2014 Request for Rehearing in Reexamination Control
`No. 90/001,281 (Inter Partes Reexamination of U.S. Patent No.
`7,634,228) (Ex. 2026)
`
` Battery Charging Specification, Revision 1.1, April 15, 2009, USB
`Implementers Forum, Inc. (Ex. 2027)
`
` Wolf, Marilyn, “Computers as Components” pp. 213-306, 3d ed.
`(2012) (Ex. 2028)
`
` “Bluetooth Basics: A Look at the Basics of Bluetooth
`Technology” at http://www.bluetooth.com/Pages/Basics.aspx
`(accessed April 20, 2015) (Ex. 2029)
`
` Specification of the Bluetooth System v1.0B (December 1, 1999)
`(Ex. 2030)
`
` Yoshida, Junko, “Interoperability Issues Dog Bluetooth’s Rise”
`EE Times at
`http://www.eetimes.com/document.asp?doc_id=1141774 (June
`16, 2000) (Ex. 2031)
`
` Holtby, Troy, “Bluetooth 1.1 Addresses Earlier Flaws” at
`http://edition.cnn.com/2001/TECH/ptech/08/14/bluetooth.1.i
`dg (Ex. 2032)
`
` “History of the Bluetooth Special Interest Group” at
`http://www.bluetooth.com/Pages/History-of-Bluetooth.aspx
`(accessed May 13, 2015) (Ex. 2033)
`10
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` Sherman, Len, “The Basics of USB Battery Charging: A Survival
`Guide” at http://www.maximintegrated.com/en/app-
`notes/index.mvp/id/4803 (accessed on May 13, 2015) (Ex. 2034)
`
` Lendino, James, “How USB Charging Works, or How to Avoid
`Blowing Up Your Smartphone” at
`http://www.extremetech.com/computing/115251-how-usb-
`charging-works-or-how-to-avoid-blowing-up-your-smartphone
`(March 25, 2015) (Ex. 2035)
`
` The DRAM Market, at
`(http://smithsonianchips.si.edu/ice/cd/MEMORY97/SEC02.P
`DF) (Ex. 2036)
`
`II.
`
`LEGAL STANDARD IN RELATION TO CLAIM CONSTRUCTION
`20. For the purposes of this Declaration, I have been informed about certain
`
`aspects of the law that are relevant to my analysis and opinions. I have applied these
`
`legal principles in rendering my opinions below.
`
`21. I understand that for purposes of inter partes review, “[a] claim in an
`
`unexpired patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” (37 C.F.R. § 42.100(b)).
`
`22. I understand that the ordinary and customary meaning of a claim term is
`
`the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the effective filing date of the patent application that matured
`
`into the patents-at-issue. In the absence of an express intent on the part of the
`
`inventor to give a special meaning to the claim terms, the words are presumed to take
`
`on the ordinary and customary meanings attributed to them by a person of ordinary
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`skill in the art.
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`23. I understand that it is the use of the words in the context of the written
`
`description, and as customarily used by those skilled in the relevant art, that accurately
`
`reflects both the ordinary and the customary meaning of the terms in the claims.
`
`24. I understand that the basis for a term’s ordinary and customary meaning
`
`may be derived from a variety of sources, including the words of the claims
`
`themselves, the remainder of the specification, the prosecution history, and extrinsic
`
`evidence concerning relevant scientific principles, the meaning of technical terms, and
`
`the state of the art at the time of the invention.
`
`25. I have been instructed that dictionary definitions or definitions from
`
`technical references can be used to inform or confirm the ordinary and customary
`
`meaning of words found in a claim, but that in construing claim terms, the general
`
`meanings gleaned from reference sources, such as dictionaries, must always be
`
`compared against the use of the terms in context of the claim itself, and the intrinsic
`
`record must always be consulted to identify which of the different possible dictionary
`
`meanings is most consistent with the use of the words by the inventor.
`
`26. I understand that a patent applicant is entitled to be his or her own
`
`lexicographer—providing his or her own meaning to a word or phrase—and may
`
`rebut the presumption that claim terms are to be given their plain and ordinary
`
`meaning. To do so, the applicant must clearly set forth a definition of the term that is
`
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`different from its ordinary and customary meaning.
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`27. Where the applicant provides an explicit definition for a term, that
`
`definition will control interpretation of the term as it is used in the claim in which it
`
`appears. I understand that the specification can also be relied on for more than just
`
`explicit lexicography to determine the meaning of a claim term. For example, I
`
`understand that the meaning of a particular claim term may also be determined by
`
`implication, that is, according to the usage of the term in context of the specification.
`
`III.
`
`LEGAL STANDARD IN RELATION TO WRITTEN DESCRIPTION
`REQUIREMENT UNDER 35 U.S.C. § 112 ¶ 1
`28. I understand that a patent claim must have a sufficient written description
`
`under 35 U.S.C. § 112 ¶ 1.
`
`29. I understand that the written description must convey clearly to those
`
`skilled in the art, as of the priority date sought, that the inventor was in possession of
`
`the invention claimed.
`
`30. I understand that, in conducting a written description analysis:
`
`(1) Analysis of the sufficiency of a written description is based on an
`
`objective inquiry into the four corners of the specification.
`
`(2) This inquiry is performed from the perspective of one of ordinary
`
`skill in the art.
`
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`(3) A particular form of disclosure is not required, and instead written
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`description support may be based on a combination of disclosures
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`and figures throughout the specification.
`
`(4) The specification does not need to recite the claimed invention
`
`using the exact same words, phrases, or style as the claim language.
`
`(5) A description that renders the invention obvious does not satisfy
`
`the written description requirement.
`
`(6) The level of detail required in the written description is based on
`
`(i) the nature and scope of the claims, and
`
`(ii) the complexity and predictability of the relevant field of
`
`technology.
`
`(7) Other factors to be considered include the existing knowledge in
`
`the relevant field, the extent and content of the prior art, the maturity
`
`of the science or technology, and the predictability of the claimed
`
`inventions at issue.
`
`IV.
`
`LEGAL STANDARD IN RELATION TO DETERMINATION OF
`PRIORITY DATE
`31. I understand that the “priority date” of a patent is generally the date that
`
`the corresponding patent application was filed. I further understand that a patent may
`
`be entitled to an earlier priority date corresponding to the filing date of an earlier-filed
`
`patent or application. A patent is entitled to such an earlier priority date if two criteria
`
`
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`are met: 1) the patent expressly claims priority to the earlier-filed patent or application,
`
`and 2) there is sufficient written support in the earlier filed patent or application under
`
`35 U.S.C. § 112 for the patent claims at issue.
`
`32. I understand that a patent may claim priority to an earlier-filed patent or
`
`application through a chain of intermediate patents and/or applications meeting the
`
`same two requirements as described above.
`
`33. I understand that the priority date of each individual claim is determined
`
`independently, and thus, a different priority date may be determined for another claim
`
`in the same patent.
`
`V.
`
`OPINION REGARDING A PERSON OF ORDINARY SKILL IN
`THE ART AT THE TIME OF INVENTION OF THE ’641 PATENT
`34. A person of ordinary skill in the art relating to the technology of the ‘641
`
`patent at the time at which the earliest patent application to which the ‘641 patent
`
`claims priority was filed would have had a Bachelor’s degree in Electrical Engineering
`
`or Computer Science, or an equivalent field, and approximately 1-2 years of
`
`experience in working with mobile and embedded systems, client/server architectures,
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`Internet transmission protocols, Internet browser programming and streaming media
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`transmission.
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`35. In 2000, I would have met or exceeded the level of skill required by the
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`above definition, and I am competent to opine as to the knowledge of a person of
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`ordinary skill in the art as of that date.
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`VI.
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`LEGAL STANDARD IN RELATION TO NONOBVIOUSNESS
`36. I understand that under 35 U.S.C. § 103, “[a] patent for a claimed invention
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`may not be obtained, notwithstanding that the claimed invention is not identically
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`disclosed as set forth in S 102, if the differences between the claimed invention and
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`the prior art are such that the claimed invention as a whole would have been obvious
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`before the effective filing date of the claimed invention to a person having ordinary
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`skill in the art to which the claimed invention pertains.” When considering the issues
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`of obviousness, I understand that I am to do the following:
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` Determine the scope and content of the prior art;
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` Ascertain the differences between the prior art and the claims at issue;
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` Resolve the level of ordinary skill in the pertinent art; and
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` Consider evidence of secondary indicia of non-obviousness (if available).
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`37. Obviousness is a determination of law based on underlying determinations
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`of fact. These factual determinations include the scope and content of the prior art,
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`the level of ordinary skill in the art, the differences between the claimed invention and
`
`the prior art, and secondary considerations of non-obviousness.
`
`38. I understand that a reference may be combined with other references to
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`disclose each element of the invention under § 103. I understand that a reference may
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`
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`also be combined with the knowledge of a person of ordinary skill in the art, and that
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`U.S. Patent No. 8,532,641
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`this knowledge may be used to combine multiple references. I further understand
`
`that a person of ordinary skill in the art is presumed to know the relevant prior art. I
`
`understand that the obviousness analysis may take into account the inferences and
`
`creative steps that a person of ordinary skill in the art would employ.
`
`39. In determining whether a prior art reference could have been combined
`
`with other prior art or other information known to a person having ordinary skill in
`
`the art, I understand that the following principles may be considered:
`
` A combination of familiar elements according to known methods is
`
`likely to be obvious if it yields predictable results;
`
` The substitution of one known element for another is likely to be
`
`obvious if it yields predictable results;
`
` The use of a known technique to improve similar items or methods in
`
`the same way is likely to be obvious if it yields predictable results;
`
` The application of a known technique to a prior art reference that is
`
`ready for improvement, to yield predictable results;
`
` Any need or problem known in the field and addressed by the reference
`
`can provide a reason for combining the elements in the manner claimed;
`
` A person of ordinary skill often will be able to fit the teachings of
`
`multiple references together like a puzzle; and
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`17
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` The proper analysis of obviousness requires a determination of whether
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`a person of ordinary skill in the art would have a “reasonable expectation
`
`of success” – not “absolute predictability” of success – in achieving the
`
`claimed invention by combining prior art references.
`
`40. I am informed that whether a prior art reference invalidates a patent claim
`
`as obvious is determined from the perspective of a person of ordinary skill in the art.
`
`While there is no requirement that the prior art contain an express suggestion to
`
`combine known elements to achieve the claimed invention, a suggestion to combine
`
`known elements to achieve the claimed invention may come from the prior art as a
`
`whole or individually, as filtered through the knowledge of one skilled in the art.
`
`41. When a work is available in one field, design alternatives and other market
`
`forces can prompt variations of it, either in the same field or in another. If a person
`
`of ordinary skill in the art can implement a predictable variation and would see the
`
`benefit of doing so, that variation is likely to be obvious. In many fields, there may be
`
`little discussion of obvious combinations, and in these fields market demand – not
`
`scientific literature – may drive design trends. When there is a design need or market
`
`pressure and there are a finite number of predictable solutions, a person of ordinary
`
`skill in the art has good reason to pursue those known options.
`
`42. It is my understanding that there is no rigid rule that a reference or
`
`combination of references must contain a “teaching, suggestion, or motivation” to
`
`
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`
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`combine references. But, I understand that the “teaching, suggestion, or motivation”
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`test can be a useful guide in establishing a rationale for combining elements of the
`
`prior art. This test poses the question as to whether there is an express or implied
`
`teaching, suggestion, or motivation to combine prior art elements in a way that
`
`realizes the claimed invention and it seeks to counter impermissible hindsight analysis.
`
`43. I understand that if a proposed modification would render the prior art
`
`invention being modified unsatisfactory for its intended purpose, then there is no
`
`suggestion or motivation to make the proposed modification. If the proposed
`
`modification or combination of the prior art would change the principle of operation
`
`of the prior art invention being modified, then the teachings of the references are not
`
`sufficient to render the claims prima facie obvious. Obviousness does not require
`
`absolute predictability, however, at least some degree of predictability is required.
`
`Evidence showing there was no reasonable expectation of success may support a
`
`conclusion of nonobviousness.
`
`VII.
`
`THE ‘641 PATENT
`A. Overview of the ‘641 Patent
`44. The ‘641 patent is entitled, “System And Method For Managing Media”
`
`and represents a substantial improvement over portable media player systems that
`
`existed at the time of invention. The ‘641 patent claims priority to U.S. Patent
`
`Application 09/537,812, which was filed on March 28, 2000. See, Ex. 1001 at 1:3-17.
`
`
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`19
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`45. The ‘641 patent claims a system and method relating to a portable wireless
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`and/or cellular device capable of playing media content such as music. See, Ex. 1001
`
`at 5:19-24.
`
`46. One element of the claimed ‘641 patent invention is the novel approach for
`
`communicating media content from a network resource to a portable music device
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`such as a cellular phone. For example, the ‘641 patent disclosed novel techniques for
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`how selected content could be formatted and transmitted to a portable device. See, id.
`
`at 6:25-27.
`
`47. Specifically, the claimed invention of the ‘641 patent identifies several ways
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`in which content can be segmented, formatted, and delivered to facilitate
`
`transmissions to a portable media device, including by segmenting, compressing,
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`modifying, and/or storing content data in various different compressed and
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`uncompressed multimedia formats. See, id. at 4:24-30, 4:53-63.
`
`48. The various portions of a selected media can be stored at respective
`
`network locations with network addresses for the locations included in a playlist. And,
`
`the portable device can make requests for the sequential portions. See, id. at 4:46-64.
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`49. The claimed invention also offered a novel approach to facilitate a portable
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`media device’s ability to choose various portions of selected content by requesting
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`individual segmented portions of that content that are formatted for different data
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`rates. See, id. at 6:54-7:18.
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`
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`50. The ‘641 patent also discloses and claims functionality for the portable
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`music device to wirelessly stream media content to a separate, second device (such as
`
`a car or home stereo) over an asynchronous communications channel. See, id. at 2:22-
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`32, 4:7:53, 9:31-56.
`
`51. In addition to wirelessly communicating audio information to the separate
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`device, the novel claimed portable music device is capable of sending data related to
`
`the media (such as song titles) so that the separate device can generate a graphical
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`menu and operate to select specific media from the portable music device to play. See
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`id. at 4:4-63, 10:66-11:14. As a result, music stored or downloaded by the portable
`
`music device can be played and controlled by the separate device. See, id. at 9:31-43.
`
`52. Finally, the portable media device is not limited to playing and streaming
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`media. As the ‘641 patent discloses and claims, the device is also capable of making
`
`and receiving calls, connecting to the Internet, managing voice mails, and receiving
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`email communications. See, id. at 10:36-65.
`
`B. Claims under Review
`53. Based upon my review of the Board’s Institution Decisions, I understand
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`that claims 1-3 and 5-14 of the ‘641 patent are currently under review. See, Institution
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`Decision IPR2014-01181, Paper 10 at 19; Institution Decision IPR2014-01182, Paper
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`10 at 20-21; Institution Decision IPR2014-01182, Paper 10 at 15. The challenged
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`claims read as follows:
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`
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`IPR2014-01181 EXHIBIT 2005 – 21
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`Claim 1:
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`IPR 2014-01181
`U.S. Patent No. 8,532,641
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`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
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