`United States Patent No. 8,532,641
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-656
`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
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`
`
`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
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`TABLE OF CONTENTS
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`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 ....................................................................... 6
`A. Overview of the ‘641 Patent ............................................................................ 6
`B.
`‘641 Patent Prosecution History ...................................................................... 8
`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 Abecassis in view of Chennakeshu
`(Claims 1-3, 5, 8-11, 13, 14); Ground 2: Obvious over Abecassis
`in view of Chennakeshu & Herrod (Claims 1-3, 5, 6, 9, 10, 14);
`Ground 3: Obvious over Abecassis in view of Chennakeshu &
`Lau (Claims 1-3, 5, 8-11, 13, 14); Ground 4: Obvious over
`Abecassis in view of Chennakeshu, Herrod, & Lau (Claims 1-3, 5,
`6, 9, 10, 14); Ground 5: Obvious over Abecassis in view of
`Chennakeshu & Galensky (Claims 7, 12); Ground 6: Obvious
`over Abecassis in view of Chennakeshu, Herrod, & Galensky
`(Claims 6, 7); Ground 7: Obvious over Abecassis in view of
`Chennakeshu, Lau, & Galensky (Claims 7, 12); Ground 8:
`Obvious over Abecassis in view of Chennakeshu, Herrod, Lau, &
`Galensky (Claims 6, 7) ..................................................................................... 12
`1.
`Overview of U.S. Pat. No. 6,192,340 (“Abecassis”) ....................... 12
`2.
`Overview of U.S. Pat. No. 6,542,758 (“Chennakeshu”) ................ 13
`3.
`Overview of U.S. Pat. No. 6,405,049 (“Herrod”) ........................... 13
`4.
`Overview of U.S. Pat. No. 6,772,212 (“Lau”) ................................. 14
`5.
`Overview of U.S. Pat. No. 6,845,398 (“Galensky”)........................ 14
`6. Motivation to Combine Abecassis with Chennakeshu,
`Herrod, Lau, & Galensky .................................................................... 15
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`Claims 1-3 & 5-14 Are Obvious Over Grounds 1-8 ...................... 18
`7.
`D. Ground 9: Obvious over Treyz in view of Gladwin, Chennakeshu,
`& Rydbeck (Claims 1-3, 5, 8-11, 13, 14); Ground 10: Obvious
`over Treyz in view of Herrod, Gladwin, Chennakeshu, & Rydbeck
`(Claims 1-3, 5, 9, 10, 13, 14); Ground 11: Obvious over Treyz in
`view of Gladwin, Chennakeshu, Rydbeck, & Galensky (Claims 7,
`12); Ground 12: Obvious over Treyz in view of Herrod, Gladwin,
`Chennakeshu, Rydbeck, & Galensky (Claims 6, 7, 12) .............................. 38
`1.
`Overview of U.S. Pat. No. 6,526,335 (“Treyz”) .............................. 38
`2.
`Overview of U.S. Pat. No. 6,879,865 (“Gladwin”) ......................... 39
`3.
`Overview of U.S. Pat. No. 7,123,936 (“Rydbeck”) ......................... 39
`4. Motivation to Combine Treyz with Herrod, Gladwin,
`Chennakeshu, Rydbeck, & Galensky ................................................ 40
`Claims 1-3 & 5-14 Are Obvious Over Grounds 9-16 .................... 43
`5.
`VI. CONCLUSION........................................................................................................... 59
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`CASES
`
`In re Affinity Labs of Texas, LLC,
`550 Fed. Appx. 884 (Fed. Cir. Jan. 9, 2014) ............................................................. 2, 22
`
`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
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`35 U.S.C.
`
`§ 102 ............................................................................................................................. passim
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`§ 103 ............................................................................................................................. passim
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`§ 112 ....................................................................................................................................... 1
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`§§ 311-319 ............................................................................................................................. 1
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`§ 314 ..................................................................................................................................... 10
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`OTHER AUTHORITIES
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`37 C.F.R.
`
`§ 1.33 .................................................................................................................................... 60
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`§ 42 ......................................................................................................................................... 1
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`§ 42.8 ...................................................................................................................................... 4
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`§ 42.15 ................................................................................................................................. 60
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`§ 42.22 ................................................................................................................................... 5
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`§ 42.100 .................................................................................................................. 10, 11, 60
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`§ 42.104 .......................................................................................................................... 5, 10
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`§ 42.105 ............................................................................................................................... 60
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`§ 325 ....................................................................................................................................... 5
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`
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`MANUAL OF PATENT EXAMINING PROCEDURE
`§ 2111 .................................................................................................................................. 11
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`LIST OF EXHIBITS
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`Ex. 1109
`Ex. 1110
`Ex. 1111
`
`Description
`Exhibit
`U.S. Patent No. 8,532,641 (“the ‘641 patent”)
`Ex. 1101
`U.S. Patent No. 8,532,641 File History
`Ex. 1102
`U.S. Patent No. 6,192,340 (“Abecassis”)
`Ex. 1103
`U.S. Patent No. 6,772,212 (“Lau”)
`Ex. 1104
`U.S. Patent No. 6,542,758 (“Chennakeshu”)
`Ex. 1105
`U.S. Patent No. 6,405,049 (“Herrod”)
`Ex. 1106
`U.S. Patent No. 6,845,398 (“Galensky”)
`Ex. 1107
`Declaration of Todd Michael Fenton
`Ex. 1108
`Ex. 1108A 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. 6,526,335 (“Treyz”)
`U.S. Patent No. 6,879,865 (“Gladwin”)
`U.S. Provisional Application No. 60/151,714 (“Gladwin Provisional
`Application”)
`U.S. Patent No. 7,123,936 (“Rydbeck”)
`Ex. 1112
`Ex. 1113
`Declaration of Paul E. Berg
`Ex. 1113A 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. 1114
`Ex. 1115 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. 1116 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)
`
`Ex. 1117
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`Ex. 1118
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`Description
`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
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`Exhibit
`Ex. 1119
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`Ex. 1120
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`Ex. 1121
`Ex. 1122
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`Ex. 1123
`Ex. 1124
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`Inter Partes Review
`United States Patent No. 8,532,641
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioners respectfully
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`request inter partes review (“IPR”) of claims 1-3 and 5-14 of U.S. Pat. No. 8,532,641
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`(“the ‘641 patent”) currently assigned to Affinity Labs of Texas, LLC (“Affinity”).
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`The ‘641 patent is one of 14 patents that cite back to an application filed on
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`March 28, 2000.1 These patents all share a common specification and generally relate
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`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.
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`There is nothing new in the claims of the ‘641 patent. In fact, in connection
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`with other reexaminations involving patents that are related to the ‘641 patent, the
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`PTO has repeatedly found that numerous elements in the ‘641 patent claims are well-
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`1 Petitioners submit in another IPR concurrently filed that Affinity is not entitled to
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`the claimed priority date of March 28, 2000. For purposes of this Petition, however,
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`Petitioners submit that the Challenged Claims are invalid over prior art that pre-dates
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`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
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`not entitled to the March 28, 2000 priority date based on other grounds.
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`known and obvious. For example, the Federal Circuit recently affirmed the PTO’s
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`finding that all of the claims of U.S. Pat. No. 7,486,926 (“the ‘926 patent”) are invalid
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`as obvious. In re Affinity, 550 Fed. Appx. 884 (Fed. Cir. Jan. 9, 2014). Likewise, the
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`PTAB recently determined that all of the claims of U.S. Pat. No. 7,634,228 (“the ‘228
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`patent”) are unpatentable as obvious. Ex. 1118. The claims of both the ‘926 and ‘228
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`patents contain many of the very same limitations found in the ‘641 patent.
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`As set forth in this Petition, the supposed “invention” in each of claims 1-3 and
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`5-14 (the “Challenged Claims”) was well-known and obvious prior to the earliest
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`claimed priority date of March 28, 2000. For example, the ‘641 patent claims require
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`the following conventional features of a wireless phone that were well-known in the
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`art long before March 28, 2000: a display, a housing, an enclosure, a rechargeable
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`power supply, a physical interface for communicating data and receiving a recharging
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`power, a memory, and the ability to alter an output of an audio signal when
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`recognizing receipt of a phone call. Several of the references cited herein – including
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`Abecassis, Rydbeck, and Herrod – confirm that these conventional features of a
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`wireless phone were well-known. In fact, these features were all found to be inherent
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`in a wireless phone during prosecution of the ‘641 patent. Certain dependent claims
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`also require such commonplace features as an email client, a voice-mail client, an
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`Internet browser, a hands-free mode, and wirelessly receiving an upgrade for a
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`software application, all of which are clearly disclosed by the references cited herein.
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`The Challenged Claims also require the wireless phone to send information
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`2
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`about available media content from the phone to a recipient device to generate a
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`graphical menu comprising a selectable menu item. This feature was well-known in
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`the art and is disclosed by at least the Abecassis, Lau, Treyz, and Gladwin references,
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`cited herein. Indeed, the Federal Circuit affirmed the PTO’s decision that Lau (or
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`alternatively, Lau in view of Lee (U.S. Pat. No. 6,728,531) disclosed a similar claim
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`element of the ‘926 patent. See Ex. 1120 at 21-23 (12/6/2011 RAN at 18-20).
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`Dependent claims 6, 7, and 12 require that the wireless telephone is capable of
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`receiving data at two communication rates based at least partially upon an amount of
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`data located in the buffer memory. This too was well-known in the art, as
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`demonstrated by the Galensky reference cited herein. See, e.g., Ex. 1107 at 5:66-6:15,
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`Ex. 1115. Indeed, during prosecution of the ‘390 patent (the grandparent to the ‘641
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`patent), the Examiner concluded that it would have been obvious to transmit data at
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`two communication rates. Ex. 1114 at 500 (9/17/2010 OA at 6); see also Ex. 1116.
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`Finally, claims 2, 3, 5, and 8-14 require that the wireless communication module
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`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.,
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`Ex. 1117. In fact, companies including Ericsson, IBM, Intel, Nokia, and Toshiba had
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`been working to develop Bluetooth technology long before March 2000. Ex. 1119.
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`Each and every element of the Challenged Claims has been disclosed in the
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`prior art and the Challenged Claims are nothing more than a routine and predictable
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`combination of these well-known elements. Thus, Petitioners respectfully request that
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`United States Patent No. 8,532,641
`the Board find that each of the Challenged Claims is invalid under 35 U.S.C. § 103.
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`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
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`real parties-in-interest are Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Telecommunications America, LLC, (collectively
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`“Samsung” or “Petitioners”). Lead counsel, backup counsel, and service information
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`for each Petitioner are designated in the signature block of this Petition.
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`Related Matters Under 37 C.F.R. § 42.8(b)(2): Affinity is currently asserting
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`claims 1-3 and 5-14 of the ‘641 patent against Petitioners in Affinity v. Samsung, 3:14-
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`cv-3030 (NDCA) and in Affinity v. Blackberry, 5:14-cv-3031 (NDCA). The following
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`matters concern one or more of the ‘641 patent and/or patents that are related to the
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`‘641 patent: IPR2014-00209; IPR2014-00212; IPR2014-00407; IPR2014-00408;
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`90/011,254; 95/001,262; 90/010,333; 95/001,223; 95/001,264; 90/011,982;
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`95/001,281; 95/001,263; 95/001,266; 95/001,782; Affinity v. Apple, 9:09-cv-47
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`(EDTX), 1:11-cv-349 (EDTX), & 4:09-cv-4436 (NDCA); Affinity v. Dice Elecs., 9:08-
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`cv-163 (EDTX); Affinity v. BMW, 9:08-cv-164 (EDTX); Affinity v. Alpine, 9:08-cv-171
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`(EDTX); Affinity v. Nike, 2:10-cv-54 (EDTX) & 4:10-cv-5543 (NDCA); Affinity v.
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`Volkswagen, 1:11-cv-36 (EDTX); Affinity v. Clear Channel Broadcasting, 1:12-cv-205
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`(WDTX); Affinity v. Samsung, 4:13-mc-80209, 4:14-cv-2717, 4:14-cv-02966 (NDCA);
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`Affinity v. Ford, 1:12-cv-580 (EDTX) & 6:13-cv-363 (WDTX); Affinity v. General Motors,
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`1:12-cv-582 (EDTX), 6:13-cv-370 (WDTX); Affinity v. Toyota, 6:13-cv-365 (WDTX);
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`Affinity v. Volvo, 6:13-cv-366 (WDTX); Affinity v. Honda, 6:13-cv-367 (WDTX); Affinity
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`v. Jaguar, 6:13-cv-368 (WDTX); Affinity v. Nissan, 6:13-cv-369 (WDTX). Finally,
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`Petitioners have concurrently filed two other IPR petitions for the ‘641 patent based
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`on different primary references (“Ito,” “Lee,” and “Ohmura”) that also demonstrate
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`the obviousness of the Challenged Claims under 35 U.S.C. §§ 103. Petitioner notes
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`that the Director, pursuant to Rule 325(c), may determine at the proper time that
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`merger of these proceedings may be appropriate.2
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`III. PETITIONERS HAVE STANDING
`Grounds for Standing Under 37 C.F.R. § 42.104(a): Petitioners certify that
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`the ‘641 patent is eligible for IPR and that Petitioners are not barred or estopped from
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`requesting IPR of the ‘641 patent. Each of Petitioners were served with a complaint
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`asserting infringement of the ‘641 patent on or after Nov. 26, 2013, and no Petitioner,
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`real party-in-interest, or privy of a Petitioner was served with such a complaint before
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`that date. The Petitioners and real parties-in-interest have not initiated a civil action
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`challenging validity of the ‘641 patent.
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`Claims & Statutory Grounds Under 37 C.F.R. §§ 42.22 & 42.104(b):
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`Petitioners request IPR of ‘641 claims 1-3 and 5-14 and assert that these claims are
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`unpatentable based on one or more grounds under 35 U.S.C. § 103: Ground 1:
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`2 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
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`otherwise. All emphasis is added by Petitioners unless otherwise noted.
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`Obvious over Abecassis in view of Chennakeshu (Claims 1-3, 5, 8-11, 13, 14); Ground
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`2: Obvious over Abecassis in view of Chennakeshu and Herrod (Claims 1-3, 5, 6, 9,
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`10, 14); Ground 3: Obvious over Abecassis in view of Chennakeshu and Lau (Claims
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`1-3, 5, 8-11, 13, 14); Ground 4: Obvious over Abecassis in view of Chennakeshu,
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`Herrod, and Lau (Claims 1-3, 5, 6, 9, 10, 14); Ground 5: Obvious over Abecassis in
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`view of Chennakeshu and Galensky (Claims 7, 12); Ground 6: Obvious over
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`Abecassis in view of Chennakeshu, Herrod, and Galensky (Claims 6, 7); Ground 7:
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`Obvious over Abecassis in view of Chennakeshu, Lau, and Galensky (Claims 7, 12);
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`Ground 8: Obvious over Abecassis in view of Chennakeshu, Herrod, Lau, and
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`Galensky (Claims 6, 7); Ground 9: Obvious over Treyz in view of Gladwin,
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`Chennakeshu, and Rydbeck (Claims 1-3, 5, 8-11, 13, 14); Ground 10: Obvious over
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`Treyz in view of Herrod, Gladwin, Chennakeshu, and Rydbeck (Claims 1-3, 5, 9, 10,
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`13, 14); Ground 11: Obvious over Treyz in view of Gladwin, Chennakeshu, Rydbeck,
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`and Galensky (Claims 7, 12); Ground 12: Obvious over Treyz in view of Herrod,
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`Gladwin, Chennakeshu, Rydbeck, and Galensky (Claims 6, 7, 12). Sections V.C-V.D
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`provide claim charts specifying how the cited prior art renders obvious each of the
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`Challenged Claims, as confirmed by the knowledge and understanding of a person of
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`ordinary skill in the art (“POSITA”) as of March 28, 2000 as evidenced in Ex. 1123,
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`the Declaration of Dr. Schuyler Quackenbush.
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`IV. SUMMARY OF THE ‘641 PATENT
`A. Overview of the ‘641 Patent
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`The ‘641 specification generally describes a “System and Method for Managing
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`Media” as applied to various electronic devices such as a PC, portable device, or
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`vehicle audio system. The Challenged Claims are directed to a system for delivering
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`media content to a wireless telephone over a wireless network, communicating
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`information about media content from the telephone to a recipient device to generate
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`a graphical menu comprising selectable menu items on the display of the recipient
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`device, and streaming an audio signal from the telephone to the recipient device using
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`an asynchronous wireless channel of a local network in response to a selection of a
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`menu item on the recipient device. The Challenged Claims further claim a Bluetooth
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`communication module in the telephone and that media content is delivered to a
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`wireless telephone at a hybrid of communication rates.
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`The elements of the Challenged Claims are an amalgam of features described in
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`various embodiments in the ‘641 patent. For example, in one portion of the
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`specification, the ‘641 patent discloses that “Electronic devices are described in more
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`detail below and may include a network radio, a modular device, an audio system, a
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`personal digital assistant (PDA), a cellular phone….” Ex. 1101 at 5:36-39. Many of the
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`other features of claim 1, however, such as a rechargeable battery, display, housing,
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`and physical interface, are never specifically described in the specification with respect
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`to a cellular phone. Similarly, although the ‘641 patent describes the ability to
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`communicate audio information from a portable device to a second device over a
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`localized wireless connection (id. at 9:31-43), such disclosure is not connected to the
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`‘641 patent’s only description of an asynchronous wireless channel (see id. at 6:31-47).
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`As set forth in this Petition, all of the elements of the Challenged Claims were
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`well-known in the art long before the earliest claimed priority date of March 28, 2000.
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`Indeed, the specification itself makes clear that the applicants did not purport to
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`invent, inter alia, the following claim elements: cellular telephone (Ex. 1101 at 5:36-41);
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`display (11:1-3, 12:35-40); housing and enclosure. (Fig. 9); wireless communication
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`module (2:33-43, 5:42-6:6, 9:57-67); rechargeable power supply (13:26-32); non-
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`circular physical interface for communicating data and recharging power (18:33-55,
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`Fig. 9); memory (8:48-52, 8:66-9:3); streaming media (8:31-37); asynchronous channel
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`(6:34-39); Bluetooth (2:41-43, 9:47-49); email client (10:40-45); voicemail client (id.);
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`Internet browser (9:17-22, 10:66-11:14); hands-free mode (10:45-46); buffer memory
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`(8:48-52); audio player (9:13-19, 11:35-39, 16:29-34). In the same way that these
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`elements have been combined in the ‘641 patent claims, it would have been obvious
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`and straightforward to a POSITA to have combined them in the prior art.
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`Furthermore, many prior art references were identified through submission of
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`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. 1102.
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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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`‘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. 1102
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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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`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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`9
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`Inter Partes Review
`United States Patent No. 8,532,641
`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 in Sections V.C to V.D. Specifically, this
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`Petition relies on two primary references, Abecassis (describing, inter alia, a portable
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`Multimedia Player which can connect to a second device, such as another Multimedia
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`Player, and play, receive, and transfer audio) and Treyz (alternatively describing, inter
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`alia, an automobile computer system in a vehicle with multimedia functionality and
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`the ability to connect to other devices, such as a cellular phone). Although Abecassis
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`and Treyz were cited (among hundreds of prior art references) during prosecution of
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`the ‘641 patent, they were not substantively considered by the PTO and are presented
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`in this Petition in combinations never before the PTO. As detailed below, pursuant to
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`37 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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`below should be given their plain and ordinary meaning under the broadest
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`10
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`Inter Partes Review
`United States Patent No. 8,532,641
`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. 1101 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. 1115 at 7; Ex. 1121 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. 1122 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. 1101 at 6:25-7:18.
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` “CD quality listening experience” (Claim 11) For review purposes, this
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`11
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`Inter Partes Review
`United States Patent No. 8,532,641
`term is construed to mean “a listening experience that is similar to that of a CD.” See,
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`e.g., Ex. 1101 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. 1123.
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`C. Ground 1: Obvious over Abecassis in view of Chennakeshu
`(Claims 1-3, 5, 8-11, 13, 14); Ground 2: Obvious over Abecassis in
`view of Chennakeshu & Herrod (Claims 1-3, 5, 6, 9, 10, 14); Ground
`3: Obvious over Abecassis in view of Chennakeshu & Lau (Claims
`1-3, 5, 8-11, 13, 14); Ground 4: Obvious over Abecassis in view of
`Chennakeshu, Herrod, & Lau (Claims 1-3, 5, 6, 9, 10, 14); Ground
`5: Obvious over Abecassis in view of Chennakeshu & Galensky
`(Claims 7, 12); Ground 6: Obvious over Abecassis in view of
`Chennakeshu, Herrod, & Galensky (Claims 6, 7); Ground 7:
`Obvious over Abecassis in view of Chennakeshu, Lau, & Galensky
`(Claims 7, 12); Ground 8: Obvious over Abecassis in view of
`Chennakeshu, Herrod, Lau, & Galensky (Claims 6, 7)
`1.
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`Overview of U.S. Pat. No. 6,192,340 (“Abecassis”)
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`12
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`Inter Partes Review
`United States Patent No. 8,532,641
`Abecassis (Ex. 1103), titled “Integration of Music from a Personal Library with
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`Real-time Information,” was filed on October 19, 1999 and issued on February 20,
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`2001, making it prior art to the ‘641 patent under at least 35 U.S.C. § 102(e). Abecassis
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`generally discloses a system for playing music, which includes a Multimedia Player that
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`is a cellular telephone. Ex. 1103 at 1:8-12, 9:26-28. Information about audio can be
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`sent from the phone to a second device, such as a remote control, to generate a menu
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`of audio choices for playback. Id. at 9:50-59. Audio can be wirelessly transmitted to
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`the phone and sent to a second device, such as another phone or a remote control. Id.
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`at 1:52-65, 7:49-54, 8:52-67, 9:32-34, 10:41-45, 12:28-31, 13:62-67, 14:60-65, 26:16-28.
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`2. Overview of U.S. Pat. No. 6,542,758 (“Chennakeshu”)
`Chennakeshu (Ex. 1105), titled “Distributed Radio Telephone for Use in a
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`Vehicle,” was filed on J