IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA, INC1.
`
`Petitioners,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`_____________________
`
`IPR2014-011812
`
`PATENT 8,532,641 B2
`
`_____________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION
`ON EXAMINATION OF DR. SCHUYLER QUACKENBUSH
`
`
`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 Case IPR2014-01182 and IPR2014-01184 were consolidated with IPR2014-
`01181. (Paper 15 at 2.)
`
`
`Patent 8,532,641 B2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA, INC1.
`
`Petitioners,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`_____________________
`
`IPR2014-011812
`
`PATENT 8,532,641 B2
`
`_____________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION
`ON EXAMINATION OF DR. SCHUYLER QUACKENBUSH
`
`
`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 Case IPR2014-01182 and IPR2014-01184 were consolidated with IPR2014-
`01181. (Paper 15 at 2.)
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`Patent Owner, Affinity Labs of Texas, LLC (“Affinity”) respectfully moves
`
`for observation of the following testimony from the September 30, 2015 deposition
`
`of Dr. Schuyler Quackenbush, submitted as Exhibit 2038.
`
`1.
`
`In Exhibit 2038, at 6:19-8:11, 12:19-22, and 20:9-22:9, Dr. Quackenbush
`
`testified regarding claim construction positions advanced for the first time in his
`
`supplemental declaration (Ex. 1025). This testimony is relevant to Dr.
`
`Quackenbush’s claim construction opinions advanced at Paragraphs 43-61 of his
`
`supplemental declaration. (Ex. 1025 at ¶¶ 43-61.) This testimony is relevant
`
`because it demonstrates that the claim construction positions advanced by Dr.
`
`Quackenbush in his supplemental declaration were not presented at any time prior
`
`to Petitioners’ Reply.
`
`2.
`
`In Exhibit 2038, at 9:9-14:8, Dr. Quackenbush testified regarding his
`
`understanding of the terms “streaming” versus “downloading.” This testimony is
`
`relevant to Petitioners’ arguments and Dr. Quackenbush’s opinions as to the proper
`
`construction of the claim terms “stream a signal”/”streaming audio signal.” (Ex.
`
`1025 at ¶¶47-49; Paper 23 at 3-4.) This testimony is relevant because it
`
`demonstrates the overbreadth of Petitioners’ and Dr. Quackenbush’s proposed
`
`construction of the above-cited claim terms.
`
`3.
`
`In Exhibit 2038, at 15:19-19:24, Dr. Quackenbush testified regarding the
`
`bases of his opinions regarding the general functionality of Bluetooth technology at
`
`1
`
`
`
`
`the time of invention. This testimony is relevant to Dr. Quackenbush’s underlying
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`opinions regarding the functionality of Bluetooth at the time of invention, as well
`
`as his opinions regarding the motivation and ability of a person of ordinary skill in
`
`the art (POSITA) to implement Bluetooth technology with various technologies set
`
`forth in the Petitions. (Ex. 1025 at ¶¶ 68-79, 133-155, 212-216; Paper 23 at 16-22,
`
`32-35, 47-49.) This testimony is relevant because it demonstrates that Petitioners’
`
`arguments and Dr. Quackenbush’s opinions regarding the functionality of
`
`Bluetooth technology at the time of invention are based upon a selective,
`
`hindsight-driven analysis.
`
`4.
`
`In Exhibit 2038, at 33:9-36:11 and 41:9-42:2, Dr. Quackenbush testified
`
`regarding his opinions as to the disclosures of U.S Patent No. 6,192,340 (IPR2014-
`
`01182, Ex. 1103, hereinafter “Abecassis”). This testimony is relevant to
`
`Petitioners’ argument that Abecassis itself teaches a rechargeable power supply, as
`
`required by the ’641 Patent. (Ex. 1025 at ¶¶ 89-93; Paper 23 at 10-11.) This
`
`testimony is relevant because it illustrates the single disclosure (Abecassis at Col.
`
`8:42 and Col. 8:45) relied upon by Dr. Quackenbush and Petitioners to support
`
`their argument that Abecassis discloses a battery for its power supply.
`
`5.
`
`In Exhibit 2038, at 42:11-47:12, Dr. Quackenbush testified regarding the
`
`combination of Abecassis with U.S. Patent No. 6,405,049 (IPR2014-001182, Ex.
`
`1106, hereinafter “Herrod”). This testimony is relevant to Petitioners’ argument
`
`
`
`2
`
`
`
`and Dr. Quackenbush’s opinions that the combination of Abecassis and Herrod
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`teach a physical interface with the functionality required by the ’641 Patent. (Ex.
`
`1025 at ¶¶ 94-100; Paper 23 at 11-13.) This testimony is relevant because it
`
`demonstrates that the above-cited argument is based only upon Dr. Quackenbush’s
`
`general interpretation of the Herrod reference, rather than a particular disclosure
`
`from Herrod itself.
`
`6.
`
`In Exhibit 2038, at 48:3-53:9, Dr. Quackenbush testified regarding his
`
`understanding of the claim term “a means for recharging the internal battery,”
`
`which Patent Owner submits is a means plus function claim. (See Patent Owner
`
`Response at 39-42, 69-70, 118-122.) This testimony is relevant to Petitioners’
`
`argument and Dr. Quackenbush’s opinions that the cited reference combinations
`
`set forth by Petitioners in IPR2014-01182 teach this claim element. ([IPR2014-
`
`01181], Paper 23 at 28-29; Ex. 1025 at ¶¶ 93.) This testimony is relevant because it
`
`demonstrates that Petitioners’ and Dr. Quackenbush’s analysis failed to identify the
`
`structure disclosed in the ’641 Patent for this claim element, as required for a
`
`means-plus function claim under 35 U.S.C. § 112(f).
`
`7.
`
`In Exhibit 2038, at 53:25-61:2 and 64:8-65:22, Dr. Quackenbush testified
`
`regarding his reading of Abecassis and its alleged disclosure of “a selectable menu
`
`item associated with available media content.” This testimony is relevant to Dr.
`
`Quackenbush’s underlying analysis of the Abecassis reference with repect to this
`
`
`
`3
`
`
`
`claim element. (Ex. 1025 at ¶¶ 104-112; Paper 23 at 13-16.)This testimony is
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`relevant because it demonstrates that Dr. Quackenbush’s analysis is based upon his
`
`selective interpretation of disparate disclosures within the Abecassis reference
`
`rather than a single express teaching.
`
`8.
`
`In Exhibit 2038, at 67:11-73:23, Dr. Quackenbush testified regarding his
`
`reading of Abecassis and its alleged teaching of “stream[ing] a signal representing
`
`at least a portion of a song.” This testimony is relevant to Dr. Quackenbush’s
`
`underlying analysis of the Abecassis reference with respect to this claim element.
`
`(Ex. 1025 at ¶¶ 114-116; Paper 23 at 16-17.) This testimony is relevant because it
`
`demonstrates the select disclosures in Abecassis regarding “virtual audio … played
`
`in a real-time manner” that Dr. Quackenbush’s relies upon as disclosing the above-
`
`cited teaching.
`
`9.
`
`In Exhibit 2038, at 83:25-84:38, 85:2-12, and 87:12-23, Dr. Quackenbush
`
`testified regarding his understanding that Bluetooth includes a synchronous and
`
`asynchronous data channel related to his opinions regarding transferring
`
`asynchronous data channel (See Ex. 1025 at ¶¶ 113-116, 212-217). This testimony
`
`is relevant because Dr. Quackenbush admits that data may be transmitted in
`
`Bluetooth on either the synchronous and asynchronous data channel.
`
`10.
`
`In Exhibit 2038, at 88:16-91:16, Dr. Quackenbush testified regarding his
`
`opinion that “[t]ransmitting data in an asynchronous manner was a simple, flexible,
`
`
`
`4
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`and cost-effective way to transmit data” at the time of invention. (See Ex. 1025 at ¶
`
`116.) This testimony is relevant to Dr. Quackenbush’s analysis as to why a
`
`POSITA would look to combine Abecassis with U.S. Patent No. 6,542,758
`
`([IPR2014-001182], Ex. 1105, hereinafter “Chennakeshu”) with respect to this
`
`claim element. (Ex. 1025 at ¶¶ 116, 212-217; Paper 23 at 16-17.) This testimony is
`
`relevant because it demonstrates the limited extent to which Dr. Quackenbush’s
`
`analysis as to the above-cited reference combination is based upon evidence
`
`outside of his own opinions.
`
`11.
`
`In Exhibit 2038, at 91:17-96:25, Dr. Quackenbush testified regarding his
`
`opinion that “Bluetooth was being widely adopted in the industry” at the time of
`
`invention. (See Ex. 1025 at ¶ 116.) This testimony is relevant to Dr.
`
`Quackenbush’s underlying opinions regarding the functionality of Bluetooth at the
`
`time of invention, as well as his opinions regarding the motivation and ability of a
`
`POSITA to implement Bluetooth technology with various technologies set forth in
`
`the Petitions. (Ex. 1025 at ¶¶ 68-79, 133-155, 212-216; Paper 23 at 16-22, 32-35,
`
`47-49.) This testimony is relevant because it demonstrates the extent to which Dr.
`
`Quackenbush’s opinions regarding Bluetooth adoption are based upon statements
`
`as to prospective adoption of Bluetooth technology, rather than evidence of actual
`
`adoption and commercialization.
`
`
`
`5
`
`
`
`In Exhibit 2038, at 99:11-100:18, Dr. Quackenbush testified that the column
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`12.
`
`6 lines 34 through 39 are the basis for his opinion that the ’641 patent discloses
`
`streaming data on the asynchronous channel. This testimony is relevant to Dr.
`
`Quackenbush’s opinion regarding what is disclosed in the specification of the ’641
`
`patent. (See Ex. 1025 at ¶ 191, 201).
`
`13.
`
`In Exhibit 2038, at 100:25-101:14 and 113:22-114:11, Dr. Quackenbush
`
`testified regarding his understanding of the frequency at which Bluetooth
`
`technologies operate. This testimony is relevant to Dr. Quackenbush’s underlying
`
`opinions regarding the functionality of Bluetooth at the time of invention, as well
`
`as his opinions regarding the motivation and ability of a POSITA to implement
`
`Bluetooth technology with various technologies set forth in the Petition. (Ex. 1025
`
`at ¶¶ 68-79, 133-155, 212-216; Paper 23 at 16-22, 32-35, 47-49.)
`
`14.
`
`In Exhibit 2038, at 105:16-108:14, Dr. Quackenbush testified regarding his
`
`lack of citation and analysis of other, non-Bluetooth, wireless communications
`
`systems available at the time of invention. This testimony is relevant to Dr.
`
`Quackenbush’s opinions regarding the motivation and ability of a POSITA to
`
`implement Bluetooth technology with various technologies set forth in the Petition,
`
`particularly Dr. Quackenbush’s opinion that Bluetooth was being widely adopted
`
`at the time of invention. (Ex. 1025 at ¶¶ 68-79, 133-155, 212-216; Reply at 16-22,
`
`32-35, 47-49.)
`
`
`
`6
`
`
`
`In Exhibit 2038, at 108:15-113:2, Dr. Quackenbush testified regarding his
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`15.
`
`opinions as to Chennakeshu’s alleged teaching of Bluetooth technology. This
`
`testimony is relevant to Dr. Quackenbush’s opinions regarding the motivation and
`
`ability of a POSITA to implement Bluetooth technology with various technologies
`
`set forth in the Petition. This testimony is relevant because it demonstrates Dr.
`
`Quackenbush’s failure to confirm that the cited disclosures of Chennakeshu could
`
`be performed on the Bluetooth standard available at the time of invention. (Ex.
`
`1025 at ¶¶ 68-79, 133-155, 212-216; Reply at 16-22, 32-35, 47-49.)
`
`16.
`
`In Exhibit 2038, at 114:12-117:6, Dr. Quackenbush testified regarding his
`
`opinions as to the teaching of U.S. Patent No. 6,990,334 ([IPR2014-01181], Ex.
`
`1003, hereinafter “Ito”). This testimony is relevant to Dr. Quackenbush’s opinions
`
`regarding the features and functionalities disclosed in the Ito reference and the
`
`motivation of a POSITA to implement Bluetooth technology in Ito’s “acoustic
`
`receiver device.” (Paper 23 at 29-35; Ex. 1025 at ¶¶ 24, 142). This testimony is
`
`relevant because it demonstrates Dr. Quackenbush’s lack of support for the
`
`proposition that a POSITA would be motivated, or was even technically capable of
`
`pairing Ito’s acoustic receiver device with any technology operating outside of the
`
`disclosed weak radio wave frequency of 76 MHz to 90 MHz.
`
`17.
`
`In Exhibit 2038, at 117:7-118:24, Dr. Quackenbush testified regarding his
`
`opinions as to the teachings of Ito with respect to Ito’s second embodiment. This
`
`
`
`7
`
`
`
`testimony is relevant to Dr. Quackenbush’s opinions regarding the features and
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`functionalities disclosed in the Ito reference and the motivation of a POSITA to
`
`implement Bluetooth technology in Ito’s “acoustic receiver device.” (Paper 23 at
`
`29-35; Ex. 1025 at ¶¶ 25-27, 137, 157, 185).This testimony is relevant because it
`
`demonstrates Dr. Quackenbush’s lack of support for the proposition that a POSITA
`
`would be motivated to, or was even technically capable of, pairing Ito’s acoustic
`
`receiver device (as described in Ito’s second embodiment) with available Bluetooth
`
`technologies.
`
`18.
`
`In Exhibit 2038, at 121:10-125:09, Dr. Quackenbush testified regarding his
`
`opinions as to the teaching of Ito with respect to Ito’s third embodiment. This
`
`testimony is relevant to Dr. Quackenbush’s opinions regarding the features and
`
`functionalities disclosed in the Ito reference and the motivation of a POSITA to
`
`implement Bluetooth technology in Ito’s “acoustic receiver device.” (Paper 23 at
`
`29-35; Ex. 1025 at ¶¶ 25-27, 137, 157, 185). This testimony is relevant because it
`
`demonstrates Dr. Quackenbush’s lack of support for the proposition that a POSITA
`
`would be motivated to, or was even technically capable of, pairing Ito’s acoustic
`
`receiver device (as described in Ito’s third embodiment) with available Bluetooth
`
`technologies.
`
`19.
`
`In Exhibit 2038, at 126:4-129:12, Dr. Quackenbush testified regarding Ito’s
`
`lack of disclosure regarding compatibility with in-band on-channel (IBOC) digital
`
`
`
`8
`
`
`
`radio. This testimony is relevant to Dr. Quackenbush’s opinions regarding the
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`features and functionalities disclosed in the Ito reference. (Paper 23 at 32-35; Ex.
`
`1025 at ¶¶24, 140-142). This testimony is relevant because it demonstrates that Ito
`
`does not actually support Dr. Quackenbush’s opinion that Ito’s disclosure of
`
`transmission via the analog “FM broadcasting frequency band” also allows for
`
`transmission via digital communications, such as Bluetooth. (See Ex. 1025 at ¶
`
`142.)
`
`20.
`
`In Exhibit 2038, at 131:6-134:7, Dr. Quackenbush testified regarding his
`
`opinions as to the alleged teachings of U.S. Patent No. 6,973,067 ([IPR2014-
`
`01181], Ex. 1006, hereinafter “Haartsen”). This testimony is relevant to Dr.
`
`Quackenbush’s opinions regarding the motivation and ability of a POSITA to
`
`implement Bluetooth technology with various technologies set forth in the Petition.
`
`(Paper 23 at 32-35; Ex. 1025 at ¶¶ 133-155). This testimony is relevant because it
`
`demonstrates Dr. Quackenbush’s failure to confirm that the cited disclosures of
`
`Haartsen could be performed on the Bluetooth standard available at the time of
`
`invention.
`
`21.
`
`In Exhibit 2038, at 136:20-138:20, Dr. Quackenbush testified regarding his
`
`opinions as to the alleged teachings of Haartsen. This testimony is relevant to Dr.
`
`Quackenbush’s opinions regarding the motivation and ability of a POSITA to
`
`implement the teachings of Haartsen in Ito’s system infrastructure. (Paper 23 at 32-
`
`
`
`9
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`35; Ex. 1025 at ¶¶ 133-155). This testimony is relevant because it demonstrates Dr.
`
`Quackenbush’s failure to opine as to how a POSITA would implement Haartsen’s
`
`specific teachings that the disclosed “asynchronous link” may be a “time-division
`
`duplex link for alternatively transmitting and receiving at different ones of the
`
`remaining time slots” in Ito’s system infrastructure.
`
`22.
`
`In Exhibit 2038, at 139:16-143:17, Dr. Quackenbush testified regarding his
`
`understanding of the claim term “a means for recharging the internal battery,”
`
`which Patent Owner submits is a means plus function claim. (See Patent Owner
`
`Response at 39-42, 69-70, 118-122.) This testimony is relevant to Petitioners’
`
`argument and Dr. Quackenbush’s opinions that the cited reference combinations
`
`teach this claim element. (Paper 23 at 28-29, 39, 51-52; Ex. 1025 at ¶¶ 93, 177,
`
`238) This testimony is relevant because it demonstrates that Petitioners’ and Dr.
`
`Quackenbush’s analysis failed to identify the structure disclosed in the ’641 Patent
`
`for this claim element, as required for a means-plus function claim under 35 U.S.C.
`
`§ 112(f).
`
`23.
`
`In Exhibit 2038, at 144:1-148:10, Dr. Quackenbush testified regarding the
`
`relationship between the ’812 application, the ’947 application, and the ’641
`
`Patent. This testimony is relevant to Petitioners’ arguments and Dr. Quackenbush’s
`
`opinions regarding the connection between the content of the ’812 application, the
`
`’947 application, and the ’641 Patent. (Paper 23 at 43-44; Ex. 1025 at ¶¶ 188-191.)
`
`
`
`10
`
`
`
`This testimony is relevant because it demonstrates that the specifications of the
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`’812 application and the ’641 patent are substantially the same.
`
`24.
`
`In Exhibit 2038, at 148:11-150:15, Dr. Quackenbush testified regarding the
`
`disclosure of asynchronous communication in the ’812 application and the ’947
`
`application which led to the ’641 Patent. This testimony is relevant to Petitioners’
`
`arguments and Dr. Quackenbush’s opinions regarding the priority date of the ’641
`
`Patent. (Paper 23 at 42-44; Ex. 1025 at ¶¶ 191, 201.) This testimony is relevant
`
`because it demonstrates that the specification of the ’812 application and the ’947
`
`application which led to the ’641 Patent discloses communicating at least a portion
`
`of the streaming audio signal to the recipient device using an asynchronous
`
`channel.
`
`25.
`
`In Exhibit 2038, at 151:3-152:14, Dr. Quackenbush testified regarding his
`
`understanding of the claim term “a means for recharging the internal battery,”
`
`which Patent Owner submits is a means plus function claim. (See Patent Owner
`
`Response at 39-42, 69-70, 118-122.) This testimony is relevant to Petitioners’
`
`argument and Dr. Quackenbush’s opinions that the cited reference combinations
`
`teach this claim element. (Paper 23 at 28-29, 39, 51-52; Ex. 1025 at ¶¶ 93, 177,
`
`238) This testimony is relevant because it demonstrates that Petitioners’ and Dr.
`
`Quackenbush’s analysis failed to identify the structure disclosed in the ’641 Patent
`
`
`
`11
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`for this claim element, as required for a means-plus function claim under 35 U.S.C.
`
`Respectfully submitted,
`
`
`
`
`/Ryan M. Schultz/
`Registration No. 65,143
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`§ 112(f).
`
`
`
`Dated: October 6, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 6th day of October, 2015, a copy of this
`
`PATENT OWNER’S MOTION FOR OBSERVATION ON EXAMINATION OF
`DR. SCHUYLER QUACKENBUSH has been served in its entirety by e-mail on
`the Petitioners:
`
`For Samsung petitioners:
`
`Steven.baughman@ropesgray.com
`
`Gabrielle.higgins@ropesgray.com
`
`SamsungIPRService@ropesgray.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Ryan M. Schultz /
`Registration No. 65,143
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`
`
`
`13
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