Inter Partes Review
`United States Patent No. 8,532,641
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-655
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
`§
`Samsung Electronics America, Inc.;
`Priority Date: March 28, 2000
`§
`Samsung Telecommunications America,
`§
`LLC
`§
`§
`§
`§
`
`
`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
`
`
`
`
`For: SYSTEM AND METHOD FOR MANAGING MEDIA
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,532,641
`
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`Inter Partes Review
`United States Patent No. 8,532,641
`
`TABLE OF CONTENTS
`
`V. 
`
`LIST OF EXHIBITS ................................................................................................................ v
`I. 
`INTRODUCTION ....................................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ......................................... 4 
`III.  PETITIONERS HAVE STANDING ...................................................................... 5 
`IV. 
`SUMMARY OF THE ‘641 PATENT ....................................................................... 7 
`A.  Overview of the ‘641 Patent ............................................................................ 7 
`B. 
`‘641 Patent Prosecution History ...................................................................... 9 
`THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST
`ONE CLAIM OF THE ‘641 PATENT .................................................................. 10 
`A. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................. 10 
`B. 
`Level of Ordinary Skill in the Art & State of the Art ................................. 12 
`C.  Ground 1: Obvious over Ito in view of Haartsen (Claims 1, 2, 5, 6,
`8, 9, 11, 13, 14); Ground 2: Obvious over Ito in view of Haartsen
`& Nokia (Claims 1-3, 5, 8-11, 13, 14); Ground 3: Obvious over
`Ito in view of Haartsen & Rydbeck (Claims 1, 2, 5, 8, 9, 11, 13,
`14); Ground 4: Obvious over Ito in view of Haartsen, Nokia, &
`Rydbeck (Claims 1-3, 5, 8-11, 13, 14); Ground 5: Obvious over
`Ito in view of Haartsen & Galensky (Claims 7, 12); Ground 6:
`Obvious over Ito in view of Haartsen, Nokia, & Galensky (Claims
`6, 7, 12); Ground 7: Obvious over Ito in view of Haartsen,
`Rydbeck, & Galensky (Claims 7, 12); Ground 8: Obvious over Ito
`in view of Haartsen, Nokia Rydbeck, & Galensky (Claims 6, 7, 12) ....... 12 
`1. 
`Overview of U.S. Pat. No. 6,990,334 (“Ito”) ................................... 12 
`2. 
`Overview of Nokia 9000/9000i Owner’s Manual (“Nokia”) ....... 13 
`3. 
`Overview of U.S. Pat. No. 6,973,067 (“Haartsen”) ........................ 13 
`4. 
`Overview of U.S. Pat. No. 7,123,936 (“Rydbeck”) ......................... 14 
`5. 
`Overview of U.S. Pat. No. 6,845,398 (“Galensky”)........................ 14 
`6.  Motivation to Combine Ito with Haartsen, Nokia, Rydbeck,
`& Galensky ............................................................................................ 15 
`Claims 1-3 & 5-14 Are Obvious Over Grounds 1-8 ...................... 18 
`
`7. 
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`Inter Partes Review
`United States Patent No. 8,532,641
`D.  Ground 9: Obvious over Lee in view of Nokia, Lau, & Haartsen
`(Claims 1-3, 5, 9, 10, 13, 14); Ground 10: Obvious over Lee in
`view of Nokia, Lau, Haartsen, & Rydbeck (Claims 1-3, 5); Ground
`11: Obvious over Lee in view of Nokia, Lau, Haartsen &
`Galensky (Claims 6, 7, 12); Ground 12: Obvious over Lee in view
`of Nokia, Lau, Haartsen, Rydbeck, & Galensky (Claims 6, 7);
`Ground 13: Obvious over Lee in view of Lau & Haartsen (Claims
`8, 9, 11, 13, 14); Ground 14: Obvious over Lee in view of Lau,
`Haartsen, & Galensky (Claim 12); Ground 15: Obvious over Lee
`in view of Lau, Haartsen & Rydbeck (Claims 1, 2); Ground 16:
`Obvious over Lee in view of Lau, Haartsen, Rydbeck & Galensky
`(Claim 7) ............................................................................................................ 36 
`1. 
`Overview of U.S. Pat. No. 6,728,531 (“Lee”) ................................. 36 
`2. 
`Overview of U.S. Pat. No. 6,772,212 (“Lau”) ................................. 37 
`3. 
`Motivation to Combine Lee with Haartsen, Lau, Nokia,
`Rydbeck, & Galensky .......................................................................... 37 
`Claims 1-3 & 5-14 Are Obvious Over Grounds 9-16 .................... 40 
`4. 
`VI.  CONCLUSION........................................................................................................... 59 
`
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`Inter Partes Review
`United States Patent No. 8,532,641
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`In re Affinity Labs of Texas, LLC,
`550 Fed. Appx. 884 (Fed. Cir. Jan. 9, 2014) ................................................................. 2, 44
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................................ 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................................... 12
`
`STATUTES
`
`35 U.S.C.
`
`§ 102 ............................................................................................................................. passim
`
`§ 103 ............................................................................................................................. passim
`
`§ 112 ....................................................................................................................................... 1
`
`§§ 311-319 ............................................................................................................................. 1
`
`§ 314 ..................................................................................................................................... 10
`
`OTHER AUTHORITIES
`
`37 C.F.R
`
`§ 1.33 .................................................................................................................................... 59
`
`§ 42 ......................................................................................................................................... 1
`
`§ 42.8 ...................................................................................................................................... 4
`
`§ 42.15 ................................................................................................................................. 60
`
`§ 42.22 ................................................................................................................................... 5
`
`§ 42.100 .................................................................................................................. 10, 11, 59
`
`§ 42.104 .......................................................................................................................... 5, 10
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`Inter Partes Review
`United States Patent No. 8,532,641
`§ 42.105 ............................................................................................................................... 59
`
`§ 325 ....................................................................................................................................... 5
`
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`§ 2111 .................................................................................................................................. 11
`
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`Inter Partes Review
`United States Patent No. 8,532,641
`
`LIST OF EXHIBITS
`
`Ex. 1005B
`
`Description
`Exhibit
`U.S. Patent No. 8,532,641 (“the ‘641 patent”)
`Ex. 1001
`U.S. Patent No. 8,532,641 File History
`Ex. 1002
`U.S. Patent No. 6,990,334 (“Ito”)
`Ex. 1003
`Declaration of Harri Valio
`Ex. 1004
`Declaration of Jari Toivanen
`Ex. 1005
`Ex. 1005A Exhibit A to the Declaration of Jari Toivanen - User’s Manual for
`the Nokia 9000 Communicator, dated 1995, published by Nokia
`Mobile Phones.
`Exhibit B to the Declaration of Jari Toivanen - Owner’s Manual for
`the Nokia 9000i Communicator (“Nokia”),
`dated 1995-1997, published by Nokia Mobile Phones Ltd.
`U.S. Patent No. 6,973,067 (“Haartsen”)
`Ex. 1006
`Declaration of Todd Michael Fenton
`Ex. 1007
`Ex. 1007A Exhibit A to the Declaration of Todd Michael Fenton - “Bluetooth
`– the universal radio interface for ad hoc wireless connectivity”, J.
`Haartsen, Ericsson Review, The Telecommunications Technology
`Journal, No. 3, 1998 (“Haartsen Article”)
`U.S. Patent No. 7,123,936 (“Rydbeck”)
`U.S. Patent No. 6,845,398 (“Galensky”)
`U.S. Patent No. 6,728,531 (“Lee”)
`U.S. Provisional Application No. 60/155,500 (“Lee Provisional
`Application”)
`U.S. Patent No. 6,772,212 (“Lau”)
`Ex. 1012
`Declaration of Paul E. Berg
`Ex. 1013
`Ex. 1013A Exhibit A to the Declaration of Paul E. Berg - Universal Serial Bus
`Specification, Revision 1.1, September 23, 1998, Compaq Computer
`Corporation, Intel Corporation, Microsoft Corporation, and NEC
`Corporation.
`U.S. Patent No. 7,953,390 File History
`Ex. 1014
`Ex. 1015 May 20, 2014 Decision on Institution of Inter Partes Review in
`IPR2014-00209 (Inter Partes Review of U.S. Patent No. 7,953,390)
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
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`Inter Partes Review
`United States Patent No. 8,532,641
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`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Description
`Exhibit
`Ex. 1016 May 20, 2014 Decision on Institution of Inter Partes Review in
`IPR2014-00212 (Inter Partes Review of U.S. Patent No. 7,953,390)
`June 12, 2014 Action Closing Prosecution in Reexamination Control
`Nos. 95/001,262 and 90/011,254 (Inter Partes and Ex Parte
`Reexaminations of U.S. Patent No. 7,187,947)
`June 30, 2014 Patent Trial and Appeal Board Decision, Appeal No.
`2014-002024 in Reexamination Control No. 95/001,281 (Inter Partes
`Reexamination of U.S. Patent No. 7,634,228)
`Specification of the Bluetooth System v1.0 B, Vols. 1 & 2, 1999,
`Telefonaktiebolaget LM Ericsson, International Business Machines
`Corporation, Intel Corporation, Nokia Corporation, Toshiba
`Corporation.
`December 6, 2011 Right of Appeal Notice in Reexamination
`Control No. 95/001,263 (Inter Partes Reexamination of U.S. Patent
`No. 7,486,926)
`U.S. Patent No. 7,187,947 File History
`IBM Dictionary of Computing, Edited by George McDaniel,
`McGraw-Hill, Inc., 1994
`Declaration of Dr. Schuyler Quackenbush
`Declaration of Hayan Yoon in Support of Petition for Inter Partes
`Review of United States Patent No. 8,532,641
`
`Ex. 1020
`
`Ex. 1021
`Ex. 1022
`
`Ex. 1023
`Ex. 1024
`
`
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`Inter Partes Review
`United States Patent No. 8,532,641
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioners respectfully
`
`request inter partes review (“IPR”) of claims 1-3 and 5-14 of U.S. Pat. No. 8,532,641
`
`(“the ‘641 patent”) currently assigned to Affinity Labs of Texas, LLC (“Affinity”).
`
`The ‘641 patent is one of 14 patents that cite back to an application filed on
`
`March 28, 2000.1 These patents all share a common specification and generally relate
`
`to the delivery of Internet media content, such as “songs, on-line radio stations, on-
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`line broadcasts, [or] streaming audio,” to a portable device. The portable device may
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`be used to play the media content and may also be connected with another electronic
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`device, such as a portable radio or vehicle audio system, so that the audio information
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`may be communicated to the other electronic device.
`
`There is nothing new in the claims of the ‘641 patent. In fact, in connection
`
`with other reexaminations involving patents that are related to the ‘641 patent, the
`
`PTO has repeatedly found that numerous elements in the ‘641 patent claims are well-
`
`
`1 Petitioners submit in another IPR concurrently filed that Affinity is not entitled to
`
`the claimed priority date of March 28, 2000. For purposes of this Petition, however,
`
`Petitioners submit that the Challenged Claims are invalid over prior art that pre-dates
`
`March 28, 2000. Petitioners reserve the right to raise in an appropriate forum
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`invalidity based on § 112, as well as the right to argue that the Challenged Claims are
`
`not entitled to the March 28, 2000 priority date based on other grounds.
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`Inter Partes Review
`United States Patent No. 8,532,641
`known and obvious. For example, the Federal Circuit recently affirmed the PTO’s
`
`finding that all of the claims of U.S. Pat. No. 7,486,926 (“the ‘926 patent”) are invalid
`
`as obvious. In re Affinity, 550 Fed. Appx. 884 (Fed. Cir. Jan. 9, 2014). Likewise, the
`
`PTAB recently determined that all of the claims of U.S. Pat. No. 7,634,228 (“the ‘228
`
`patent”) are unpatentable as obvious. Ex. 1018. The claims of both the ‘926 and ‘228
`
`patents contain many of the very same limitations found in the ‘641 patent.
`
`As set forth in this Petition, the supposed “invention” in each of claims 1-3 and
`
`5-14 (the “Challenged Claims”) was well-known and obvious prior to the claimed
`
`priority date of March 28, 2000. For example, the ‘641 patent claims require the
`
`following conventional features of a wireless phone that were well-known in the art
`
`long before March 28, 2000: a display, a housing, an enclosure, a rechargeable power
`
`supply, a physical interface for communicating data and receiving a recharging power,
`
`a memory, and the ability to alter an output of an audio signal when recognizing
`
`receipt of a phone call. Several of the references cited herein – including Ito, Nokia,
`
`and Rydbeck – confirm that these conventional features of a wireless phone were
`
`well-known. In fact, these features were all found to be inherent in a wireless phone
`
`during prosecution of the ‘641 patent. Certain dependent claims also require such
`
`commonplace features as an email client, a voice-mail client, an Internet browser, a
`
`hands-free mode, and wirelessly receiving an upgrade for a software application, all of
`
`which were expressly disclosed, by, e.g., the cited Nokia reference.
`
`The Challenged Claims also require the wireless phone to send information
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`2
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`Inter Partes Review
`United States Patent No. 8,532,641
`about available media content from the phone to a recipient device to generate a
`
`graphical menu comprising a selectable menu item. This feature was well-known in
`
`the art and is disclosed by at least the Ito, Lee, and Lau references, cited in this
`
`Petition. Indeed, the Federal Circuit affirmed the PTO’s decision that Lau, or
`
`alternatively, Lau in view of Lee disclosed a similar claim element of the ‘926 patent.
`
`See Ex. 1020 at 21-23 (12/6/2011 RAN at 18-20).
`
`Dependent claims 6, 7, and 12 require that the wireless telephone is capable of
`
`receiving data at two communication rates based at least partially upon an amount of
`
`data located in the buffer memory. This too was well-known in the art, as
`
`demonstrated by the Galensky reference cited herein. See, e.g., Ex. 1009 at 5:66-6:15,
`
`Ex. 1015. Indeed, during prosecution of the ‘390 patent (the grandparent to the ‘641
`
`patent), the Examiner concluded that it would have been obvious to transmit data at
`
`two communication rates. Ex. 1014 at 500 (9/17/2010 OA at 6); see also Ex. 1016.
`
`Finally, claims 2, 3, 5, and 8-14 require that the wireless communication module
`
`is compliant with a Bluetooth standard. The use of Bluetooth in the context of the
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`‘641 patent family has likewise been found by the PTO to have been obvious. See, e.g.,
`
`Ex. 1017. In fact, companies including Ericsson, IBM, Intel, Nokia, and Toshiba had
`
`been working to develop Bluetooth technology long before March 2000. Ex. 1019.
`
`Each and every element of the Challenged Claims has been disclosed in the
`
`prior art and the Challenged Claims are nothing more than a routine and predictable
`
`combination of these well-known elements. Thus, Petitioners respectfully request that
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`Inter Partes Review
`United States Patent No. 8,532,641
`the Board find that each of the Challenged Claims is invalid under 35 U.S.C. § 103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Notices Under 37 C.F.R. § 42.8(b)(1), (b)(3), & (b)(4): The Petitioners and
`
`real parties-in-interest are Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America, LLC, (collectively
`
`“Samsung” or “Petitioners”). Lead counsel, backup counsel, and service information
`
`for each Petitioner are designated in the signature block of this Petition.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2): Affinity is currently asserting
`
`claims 1-3 and 5-14 of the ‘641 patent against Petitioners in Affinity v. Samsung, 3:14-
`
`cv-3030 (NDCA) and in Affinity v. Blackberry, 5:14-cv-3031 (NDCA). The following
`
`matters concern one or more of the ‘641 patent and/or patents that are related to the
`
`‘641 patent: IPR2014-00209; IPR2014-00212; IPR2014-00407; IPR2014-00408;
`
`90/011,254; 95/001,262; 90/010,333; 95/001,223; 95/001,264; 90/011,982;
`
`95/001,281; 95/001,263; 95/001,266; 95/001,782; Affinity v. Apple, 9:09-cv-47
`
`(EDTX), 1:11-cv-349 (EDTX), & 4:09-cv-4436 (NDCA); Affinity v. Dice Elecs., 9:08-
`
`cv-163 (EDTX); Affinity v. BMW, 9:08-cv-164 (EDTX); Affinity v. Alpine, 9:08-cv-171
`
`(EDTX); Affinity v. Nike, 2:10-cv-54 (EDTX) & 4:10-cv-5543 (NDCA); Affinity v.
`
`Volkswagen, 1:11-cv-36 (EDTX); Affinity v. Clear Channel Broadcasting, 1:12-cv-205
`
`(WDTX); Affinity v. Samsung, 4:13-mc-80209, 4:14-cv-2717, 4:14-cv-02966 (NDCA);
`
`Affinity v. Ford, 1:12-cv-580 (EDTX) & 6:13-cv-363 (WDTX); Affinity v. General Motors,
`
`1:12-cv-582 (EDTX), 6:13-cv-370 (WDTX); Affinity v. Toyota, 6:13-cv-365 (WDTX);
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`Inter Partes Review
`United States Patent No. 8,532,641
`Affinity v. Volvo, 6:13-cv-366 (WDTX); Affinity v. Honda, 6:13-cv-367 (WDTX); Affinity
`
`v. Jaguar, 6:13-cv-368 (WDTX); Affinity v. Nissan, 6:13-cv-369 (WDTX). Finally,
`
`Petitioners have concurrently filed two other IPR petitions for the ‘641 patent based
`
`on different primary references (“Abecassis,” “Treyz,” and “Ohmura”) that also
`
`demonstrate the obviousness of the Challenged Claims under 35 U.S.C. §§ 103.
`
`Petitioner notes that the Director, pursuant to Rule 325(c), may determine at the
`
`proper time that merger of these proceedings may be appropriate.2
`
`III. PETITIONERS HAVE STANDING
`Grounds for Standing Under 37 C.F.R. § 42.104(a): Petitioners certify that
`
`the ‘641 patent is eligible for IPR and that Petitioners are not barred or estopped from
`
`requesting IPR of the ‘641 patent. Each of Petitioners were served with a complaint
`
`asserting infringement of the ‘641 patent on or after Nov. 26, 2013, and no Petitioner,
`
`real party-in-interest, or privy of a Petitioner was served with such a complaint before
`
`that date. The Petitioners and real parties-in-interest have not initiated a civil action
`
`challenging validity of the ‘641 patent.
`
`Claims & Statutory Grounds Under 37 C.F.R. §§ 42.22 & 42.104(b):
`
`Petitioners request IPR of ‘641 claims 1-3 and 5-14 and assert that these claims are
`
`unpatentable based on one or more grounds under 35 U.S.C. § 103: Ground 1:
`
`
`2 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
`
`otherwise. All emphasis is added by Petitioners unless otherwise noted.
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`Inter Partes Review
`United States Patent No. 8,532,641
`Obvious over Ito in view of Haartsen (Claims 1, 2, 5, 6, 8, 9, 11, 13, 14); Ground 2:
`
`Obvious over Ito in view of Haartsen and Nokia (Claims 1-3, 5, 8-11, 13, 14); Ground
`
`3: Obvious over Ito in view of Haartsen and Rydbeck (Claims 1, 2, 5, 8, 9, 11, 13, 14);
`
`Ground 4: Obvious over Ito in view of Haartsen, Nokia, and Rydbeck (Claims 1-3, 5,
`
`8-11, 13, 14); Ground 5: Obvious over Ito in view of Haartsen and Galensky (Claims
`
`7, 12); Ground 6: Obvious over Ito in view of Haartsen, Nokia, and Galensky (Claims
`
`6, 7, 12); Ground 7: Obvious over Ito in view of Haartsen, Rydbeck, and Galensky
`
`(Claims 7, 12); Ground 8: Obvious over Ito in view of Haartsen, Nokia Rydbeck, and
`
`Galensky (Claims 6, 7, 12); Ground 9: Obvious over Lee in view of Nokia, Lau, and
`
`Haartsen (Claims 1-3, 5, 9, 10, 13, 14); Ground 10: Obvious over Lee in view of
`
`Nokia, Lau, Haartsen, and Rydbeck (Claims 1-3, 5); Ground 11: Obvious over Lee in
`
`view of Nokia, Lau, Haartsen and Galensky (Claims 6, 7, 12); Ground 12: Obvious
`
`over Lee in view of Nokia, Lau, Haartsen, Rydbeck, and Galensky (Claims 6, 7);
`
`Ground 13: Obvious over Lee in view of Lau and Haartsen (Claims 8, 9, 11, 13, 14);
`
`Ground 14: Obvious over Lee in view of Lau, Haartsen, and Galensky (Claim 12);
`
`Ground 15: Obvious over Lee in view of Lau, Haartsen and Rydbeck (Claims 1, 2);
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`Ground 16: Obvious over Lee in view of Lau, Haartsen, Rydbeck and Galensky
`
`(Claim 7). Sections V.C-V.D provide claim charts specifying how the cited prior art
`
`renders obvious each of the Challenged Claims, as confirmed by the knowledge and
`
`understanding of a person of ordinary skill in the art (“POSITA”) as of March 28,
`
`2000 as evidenced in Ex. 1023, the Declaration of Dr. Schuyler Quackenbush.
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`Inter Partes Review
`United States Patent No. 8,532,641
`
`IV. SUMMARY OF THE ‘641 PATENT
`A. Overview of the ‘641 Patent
`The ‘641 specification generally describes a “System and Method for Managing
`
`Media” as applied to various electronic devices such as a PC, portable device, or
`
`vehicle audio system. The Challenged Claims are directed to a system for delivering
`
`media content to a wireless telephone over a wireless network, communicating
`
`information about media content from the telephone to a recipient device to generate
`
`a graphical menu comprising selectable menu items on the display of the recipient
`
`device, and streaming an audio signal from the telephone to the recipient device using
`
`an asynchronous wireless channel of a local network in response to a selection of a
`
`menu item on the recipient device. The Challenged Claims further claim a Bluetooth
`
`communication module in the telephone and that media content is delivered to a
`
`wireless telephone at a hybrid of communication rates.
`
`The elements of the Challenged Claims are an amalgam of features described in
`
`various embodiments in the ‘641 patent. For example, in one portion of the
`
`specification, the ‘641 patent discloses that “Electronic devices are described in more
`
`detail below and may include a network radio, a modular device, an audio system, a
`
`personal digital assistant (PDA), a cellular phone.” Ex. 1001 at 5:36-39. Many of the
`
`other features of claim 1, however, such as a rechargeable battery, display, housing,
`
`and physical interface, are never specifically described in the specification with respect
`
`to a cellular phone. Similarly, although the ‘641 patent describes the ability to
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`Inter Partes Review
`United States Patent No. 8,532,641
`communicate audio information from a portable device to a second device over a
`
`localized wireless connection (id. at 9:31-43), such disclosure is not connected to the
`
`‘641 patent’s only description of an asynchronous wireless channel (see id. at 6:31-47).
`
`As set forth in this Petition, all of the elements of the Challenged Claims were
`
`well-known in the art long before the earliest claimed priority date of March 28, 2000.
`
`Indeed, the specification itself makes clear that the applicants did not purport to
`
`invent, inter alia, the following claim elements: cellular telephone (Ex. 1001 at 5:36-41);
`
`display (11:1-3, 12:35-40); housing and enclosure. (Fig. 9); wireless communication
`
`module (2:33-43, 5:42-6:6, 9:57-67); rechargeable power supply (13:26-32); non-
`
`circular physical interface for communicating data and recharging power (18:33-55,
`
`Fig. 9); memory (8:48-52, 8:66-9:3); streaming media (8:31-37); asynchronous channel
`
`(6:34-39); Bluetooth (2:41-43, 9:47-49); email client (10:40-45); voicemail client (id.);
`
`Internet browser (9:17-22, 10:66-11:14); hands-free mode (10:45-46); buffer memory
`
`(8:48-52); audio player (9:13-19, 11:35-39, 16:29-34). In the same way that these
`
`elements have been combined in the ‘641 patent claims, it would have been obvious
`
`and straightforward to a POSITA to have combined them in the prior art.
`
`Furthermore, many prior art references were identified through submission of
`
`IDSs during prosecution of the ‘641 patent. These prior art references disclose all of
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`the above features or concepts as already well-known in the art. See generally Ex. 1002.
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`As detailed herein, the applicants did not invent anything beyond what was already
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`well understood in the art at the time of their earliest claimed priority date.
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`Inter Partes Review
`United States Patent No. 8,532,641
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`‘641 Patent Prosecution History
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`B.
`The application leading to the ‘641 patent was filed on November 9, 2012 as a
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`continuation of the ‘140 patent (filed May 27, 2011), which is a continuation of the
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`‘390 patent (filed June 30, 2009), which is a continuation of the ‘595 patent (filed
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`January 16, 2008), which is a continuation of the ‘833 patent (filed on September 23,
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`2004) and which in turn is a continuation of the ‘947 patent (filed March 28, 2000).
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`On March 13, 2013, the Examiner issued an Office Action, rejecting
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`prosecution claims 8-11 and 13-20 under 35 U.S.C. § 102, prosecution claims 1-7 and
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`12 under 35 U.S.C. § 103 and prosecution claims 1-20 for double patenting. Ex. 1002
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`at 411-421 (3/13/2013 OA at 2-12). The Examiner also noted that many of the claim
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`elements were inherent in the art (e.g., a display, housing, enclosure, wireless
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`communication module, rechargeable power supply, physical interface, memory,
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`receiving a wireless upgrade for a software application, email, voice-mail, Internet
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`browser). Id. at 413-18 (3/13/2013 OA at 4-9). On May 1, 2013, Applicants amended
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`the specification and claims: prosecution claim 1 (issued as claim 1) was amended to
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`add “to communicate a collection of information about media content available from
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`the wireless telephone device to a recipient device such that the recipient device can
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`use the collection of information to generate a graphical menu comprising a selectable
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`menu item associated with the available media content”; and prosecution claim 8
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`(issued as claim 8) was amended to add “in response to a selection of a selectable
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`menu item presented on a recipient device display.” Id. at 245-258 (5/1/2013 Reply at
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`Inter Partes Review
`United States Patent No. 8,532,641
`1-14). The Examiner then issued a Notice of Allowance on June 3, 2013, and the ‘641
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`patent issued on September 10, 2013.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO
`AT LEAST ONE CLAIM OF THE ‘641 PATENT
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`Petitioners submit there is at least “a reasonable likelihood that the petitioners
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`would prevail with respect to at least 1 of the claims challenged in the petition.”
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`35 U.S.C. § 314(a). Indeed, all of the Challenged Claims of the ‘641 patent are
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`unpatentable as invalid under the requirements of 35 U.S.C. § 103 because they are
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`obvious in light of the prior art, as explained below in Sections V.C to V.D.
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`Specifically, this Petition relies on two primary references, Ito (describing, inter alia, a
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`wireless phone which can connect to a second device, such as one in a vehicle, and
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`play, receive, and transfer music) and Lee (alternatively describing, inter alia, an
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`Internet radio in a vehicle which can connect to a wireless phone). Although Ito and
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`Lee were cited (among hundreds of prior art references) during prosecution of the ‘641
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`patent, they were not substantively considered by the PTO and are presented in this
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`Petition in combinations never before the PTO. As detailed below, pursuant to 37
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`C.F.R. § 42.104(b)(4)-(5), all of the Challenged Claims are unpatentable.
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`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`A.
`Pursuant to § 42.100(b), and solely for purposes of this review, Petitioners
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`construe the claim language such that terms are given their broadest reasonable
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`interpretation in light of the specification. Terms not specifically listed and construed
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`Inter Partes Review
`United States Patent No. 8,532,641
`below should be given their plain and ordinary meaning under the broadest
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`reasonable interpretation. See 37 C.F.R. § 42.100(b). Because the standard for claim
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`construction at the PTO is different than that used in U.S. District Court litigation, see
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`In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); MPEP §
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`2111, Petitioners expressly reserve the right to argue in a different forum a different
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`claim construction for any term in the ‘641 patent as appropriate in that proceeding.
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`“stream” (Claim 1) / “streaming audio signal” (Claim 8) For review
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`purposes, “stream” is construed to mean “transfer as a flow of data” and “streaming
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`audio signal” is construed to mean “audio signal transferred as a flow of data.” See e.g.,
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`Ex. 1001 at 8:31-35 (“the method of FIG. 2 may be deployed in association with an
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`Internet website operable to display selectable links for downloading information. The
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`information may include audio information such as MP3s, streaming audio, streaming.”); see also
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`Ex. 1015 at 7; Ex. 1021 at 394 (4/30/2003 Final Rejection at 3) (“the examiner
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`maintains that ‘streaming audio’ is transferred as an ‘audio file’ and can be stored on the receiving
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`device as such. The invention as claimed provides no teachings of any other definition or significant
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`difference between ‘streaming audio’ and the transferring of an ‘audio file.’); Ex. 1022 at 4 (IBM
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`Dictionary of Computing at 654) (“stream (1) To send data from one device to
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`another.”).
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` “[wireless] communication rate” (Claims 6, 7, 11, 12) For review purposes,
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`this term is construed to mean “speed at which data is [wirelessly] transmitted.” See,
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`e.g., Ex. 1001 at 6:25-7:18.
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`11
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`Inter Partes Review
`United States Patent No. 8,532,641
` “CD quality listening experience” (Claim 11) For review purposes, this
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`term is construed to mean “a listening experience that is similar to that of a CD.” See,
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`e.g., Ex. 1001 at 2:18-21, 9:57-67.
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`Level of Ordinary Skill in the Art & State of the Art
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`B.
`“A [POSITA] is a person of ordinary creativity, not an automaton.” KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “[I]n many cases a person of ordinary skill
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`will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id.
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`at 420. More specifically, the level of ordinary skill in the art relating to the technology
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`of the ‘641 patent at the time at which the earliest patent application to which the ‘641
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`patent claims priority was filed (March 28, 2000) would have been a person with a
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`Bachelor’s degree in Electrical Engineering or Computer Science, or an equivalent
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`field, and approximately 1-2 years of experience in working with client/server
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`architectures, Internet transmission protocols, wireless transmission protocols,
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`Internet browser programming, and streaming media transmission. Ex. 1023.
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`C. Ground 1: Obvious over Ito in view of Haartsen (Claims 1, 2, 5, 6,
`8, 9, 11, 13, 14); Ground 2: Obvious over Ito in view of Haartsen &
`Nokia (Claims 1-3, 5, 8-11, 13, 14); Ground 3: Obvious over Ito in
`view of Haartsen & Rydbeck (Claims 1, 2, 5, 8, 9, 11, 13, 14);
`Ground 4: Obvious over Ito in view of Haartsen, Nokia, &
`Rydbeck (Claims 1-3, 5, 8-11, 13, 14); Ground 5: Obvious over Ito in
`view of Haartsen & Galensky (Claims 7, 12); Ground 6: Obvious
`over Ito in view of Haartsen, Nokia, & Galensky (Claims 6, 7, 12);
`Ground 7: Obvious over Ito in view of Haartsen, Rydbeck, &
`Galensky (Claims 7, 12); Ground 8: Obvious over Ito in view of
`Haartsen, Nokia Rydbeck, & Galensky (Claims 6, 7, 12)
`1.
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`Overview of U.S. Pat. No. 6,990,334 (“Ito”)
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`Inter Partes Review
`United States Patent No. 8,532,641
`Ito (Ex. 1003), titled “Wireless Information Communication Method and Its
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`Device” was filed on August 19, 1998 and issued on January 24, 2006, making it prior
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`art to the ‘641 patent under at least 35 U.S.C. § 102(e). Ito discloses a wireless phone
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`that can wirelessly receive music from a base station and stream music via a l