IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-657
`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
`
`

`
`Inter Partes Review
`United States Patent No. 8,532,641
`
`TABLE OF CONTENTS
`
`V. 
`
`LIST OF EXHIBITS ............................................................................................................... iv
`I. 
`INTRODUCTION ....................................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ......................................... 3 
`III.  PETITIONERS HAVE STANDING ...................................................................... 5 
`IV. 
`SUMMARY OF THE ‘641 PATENT ....................................................................... 6 
`A.  Overview of the ‘641 Patent ............................................................................ 6 
`B. 
`‘641 Patent Prosecution History ...................................................................... 7 
`‘641 PATENT CLAIMS 1-3 AND 5-14 ARE NOT ENTITLED TO
`CLAIM PRIORITY TO THE MARCH 28, 2000 FILING DATE OF
`THE ‘812 APPLICATION AND THE SEPTEMBER 23, 2004
`FILING DATE OF THE ‘755 APPLICATION .................................................... 9 
`VI.  THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST
`ONE CLAIM OF THE ‘641 PATENT .................................................................. 25 
`A. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................. 25 
`B. 
`Level of Ordinary Skill in the Art & State of the Art ................................. 27 
`C. 
`Ground 1: Obvious over Ohmura in view of Ahn (Claims 1, 2, 5,
`8, 9, 11, 13, 14); Ground 2: Obvious over Ohmura in view of Ahn
`& Nokia (Claims 1-3, 5, 9, 10, 13, 14); Ground 3: Obvious over
`Ohmura in view of Ahn & Galensky (Claims 7, 12); Ground 4:
`Obvious over Ohmura in view of Ahn, Nokia, & Galensky
`(Claims 6, 7, 12) ................................................................................................ 27 
`1. 
`Overview of US 6,937,732 (“Ohmura”) ........................................... 27 
`2. 
`Overview of U.S. Patent Publication No. 2004/0214525
`(“Ahn”) .................................................................................................. 28 
`Overview of Nokia 9000/9000i Owner’s Manual (“Nokia”) ....... 29 
`Overview of U.S. Pat. No. 6,845,398 (“Galensky”)........................ 30 
`Motivation to Combine Ohmura with Ahn, Nokia, &
`Galensky ................................................................................................ 30 
`Claims 1-3 & 5-14 Are Obvious Over Grounds 1-4 ...................... 33 
`6. 
`VII.  CONCLUSION........................................................................................................... 59 
`
`
`3. 
`4. 
`5. 
`
`
`
`i
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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) .................................................................. 12
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................................ 26
`
`In re NTP, Inc.,
`654 F.3d 1268, 1276 (Fed. Cir. 2011) ............................................................................ 10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................................... 27
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`Case CBM2012-00003, Paper 15 (Feb. 12, 2013) ..................................................... 9-10
`
`Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co.,
`112 F.3d 1561 (Fed. Cir. 1997) ........................................................................................ 23
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) .......................................................................................... 9
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .......................................................................................... 9
`
`STATUTES
`
`35 U.S.C.
`
`§ 102 ............................................................................................................................. passim
`
`§ 103 ............................................................................................................................. passim
`
`§ 112 ................................................................................................................................ 9, 10
`
`§§ 311-319 ............................................................................................................................. 1
`
`§ 314 ..................................................................................................................................... 25
`
`ii
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`Inter Partes Review
`United States Patent No. 8,532,641
`
`OTHER AUTHORITIES
`
`37 C.F.R. ..................................................................................................................................... 5
`
`§ 1.33 .................................................................................................................................... 59
`
`§ 42 ......................................................................................................................................... 1
`
`§ 42.8 .................................................................................................................................. 3-4
`
`§ 42.15 ................................................................................................................................. 59
`
`§ 42.22 ................................................................................................................................... 5
`
`§ 42.100 ......................................................................................................................... 25, 59
`
`§ 42.104 .......................................................................................................................... 5, 25
`
`§ 42.105 ............................................................................................................................... 59
`
`§ 325 ....................................................................................................................................... 4
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`§ 2111 .................................................................................................................................. 26
`
`iii
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`

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`Inter Partes Review
`United States Patent No. 8,532,641
`
`LIST OF EXHIBITS
`
`Exhibit
`Ex. 1201
`Ex. 1202
`Ex. 1203
`Ex. 1204
`
`Ex. 1208B
`
`Description
`U.S. Patent No. 8,532,641 (“the ‘641 patent”)
`U.S. Patent No. 8,532,641 File History
`U.S. Patent No. 6,937,732 (“Ohmura”)
`European Patent Application Publication No. 1146674 filed by
`Ohmura et al.
`U.S. Patent Publication No. 2004/0214525 (“Ahn”)
`Ex. 1205
`International Publication No. WO 02/096137 filed by Ahn et al.
`Ex. 1206
`Declaration of Harri Valio
`Ex. 1207
`Declaration of Jari Toivanen
`Ex. 1208
`Ex. 1208A 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. 6,845,398 (“Galensky”)
`Ex. 1209
`Declaration of Paul E. Berg
`Ex. 1210
`Ex. 1210A 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. 1211
`Ex. 1212 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. 1213 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 and August 18, 2011 Action Closing Prosecution in
`
`Ex. 1214
`
`Ex. 1215
`
`iv
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`

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`Inter Partes Review
`United States Patent No. 8,532,641
`
`Description
`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.
`February 12, 2013 Decision on Institution of Covered Business
`Method Review in CBM2012-00003
`U.S. Patent No. 7,187,947 File History
`U.S. Patent No. 7,324,833 File History
`U.S. Patent No. 7,778,595 File History
`Control No. 95/001,263 Reexamination History from December 6,
`2011 until April 11, 2014 (Inter Partes Reexamination of U.S. Patent
`No. 7,486,926)
`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 U.S. Patent No. 8,532,641
`
`Exhibit
`
`Ex. 1216
`
`Ex. 1217
`
`Ex. 1218
`Ex. 1219
`Ex. 1220
`Ex. 1221
`
`Ex. 1222
`
`Ex. 1223
`Ex. 1224
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`
`
`v
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`

`
`Inter Partes Review
`United States Patent No. 8,532,641
`
`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 U.S. Pat. Application No.
`
`09/537,812 (“the ‘812 application”) filed on March 28, 2000 and issued as U.S. Pat.
`
`No. 7,187,947. These patents all share a common specification and generally relate to
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`the delivery of Internet media content, such as “songs, on-line radio stations, on-line
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`broadcasts, [or] streaming audio,” to a portable device. The portable device may 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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`Petitioners have concurrently filed two other IPRs demonstrating that the
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`supposed “invention” in each of claims 1-3 and 5-14 (the “Challenged Claims”) was
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`well-known and obvious prior to the claimed priority date of March 28, 2000. The
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`present Petition demonstrates that the Challenged Claims are, in fact, not entitled to
`
`the claimed March 28, 2000 priority date of the ‘812 application in addition to the
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`claimed September 23, 2004 priority date of U.S. Pat. Application No. 10/947,755
`
`(“the ‘755 application”) (issued as U.S. Pat. No. 7,324,833), and are unpatentable in
`
`view of references published after March 28, 2000. Specifically, Petitioners submit that
`
`Affinity is not entitled to claim a priority date earlier than at least January 16, 2008
`
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`1
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`Inter Partes Review
`United States Patent No. 8,532,641
`because the alleged “inventions” of the ‘641 patent claims were not disclosed in at
`
`least two of the applications preceding the application filed on that date in the claimed
`
`priority chain—the ‘812 and ‘755 applications. Indeed, the PTAB recently determined
`
`that the claims of the related ‘228 patent, which contain similar limitations, are
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`likewise not entitled to the March 28, 2000 priority date because of a lack of
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`disclosure in the ‘812 application, to which it also claimed priority. Ex. 1215.
`
`As set forth herein, the supposed “invention” in each of the Challenged Claims
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`was well-known and obvious prior to January 16, 2008. The Ohmura and Ahn
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`references relied on in this Petition disclose all of the limitations of independent
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`claims 1 and 8, including the ability for a wireless phone to communicate information
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`to a second device that is used to generate a selectable graphical menu item associated
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`with media content on the phone and stream music to the second device using an
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`asynchronous wireless channel of a localized communications signaling network. The
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`following conventional features of a wireless telephone were, among others, also quite
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`well-known in the art prior to January 16, 2008: a display, a housing, an enclosure, a
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`rechargeable battery, a memory, a physical interface for communicating data and
`
`receiving a recharging power, and the ability to alter an output of an audio signal
`
`when recognizing receipt of a phone call. The references cited herein – including
`
`Ohmura, Ahn, and Nokia – expressly confirm that these conventional features of a
`
`wireless phone were well-known. In fact, these features were all found to be inherent in
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`a wireless phone during prosecution of the ‘641 patent.
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`2
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`

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`Inter Partes Review
`United States Patent No. 8,532,641
`The dependent claims of the ‘641 patent add limitations that were similarly
`
`well-known in the art, such as email, voice-mail, an Internet browser, a hands-free
`
`mode, Bluetooth compatibility, wireless receipt of a software application upgrade, and
`
`the ability to receive data at two communication rates based at least partially upon an
`
`amount of data located in buffer memory. See, e.g., Ex. 1202 at 413-18; Ex. 1211 at
`
`500; Ex. 1212; Ex. 1213; Ex. 1214; Ex. 1216. These limitations are likewise expressly
`
`disclosed in the Ohmura, Ahn, Nokia, and Galensky references cited herein.
`
`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. Furthermore, the Challenged Claims are
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`not entitled to, inter alia, claim priority to the March 28, 2000 filing date of the ‘812
`
`application or the September 23, 2004 filing date of the ‘755 application because there
`
`is no disclosure of the alleged “invention” in either of these applications. Thus,
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`Petitioners respectfully request that the Board find that each of the Challenged Claims
`
`is not entitled to claim a priority date earlier than January 16, 2008 and 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
`
`3
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`Inter Partes Review
`United States Patent No. 8,532,641
`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
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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;
`
`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
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`(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
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`(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,
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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
`
`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
`
`on different primary references (“Ito,” “Lee,” “Abecassis,” and “Treyz”) 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
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`4
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`Inter Partes Review
`United States Patent No. 8,532,641
`proper time that merger of these proceedings may be appropriate.1
`
`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:
`
`Obvious over Ohmura in view of Ahn (Claims 1, 2, 5, 8, 9, 11, 13, 14); Ground 2:
`
`Obvious over Ohmura in view of Ahn and Nokia (Claims 1-3, 5, 9, 10, 13, 14);
`
`Ground 3: Obvious over Ohmura in view of Ahn and Galensky (Claims 7, 12);
`
`Ground 4: Obvious over Ohmura in view of Ahn, Nokia, and Galensky (Claims 6, 7,
`
`12).
`
`Section VI.C provides a claim chart specifying how the cited art renders
`
`
`1 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.
`
`5
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`Inter Partes Review
`United States Patent No. 8,532,641
`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 January 16,
`
`2008, as evidenced in Ex. 1223, the Declaration of Dr. Schuyler Quackenbush.
`
`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. 1201 at 5:36-39. Many of the
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`Inter Partes Review
`United States Patent No. 8,532,641
`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
`
`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 January 16, 2008. Indeed, the specification itself
`
`makes clear that the applicants did not purport to invent, inter alia, the following claim
`
`elements: cellular telephone (Ex. 1201 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,
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`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.
`
`‘641 Patent Prosecution History
`
`B.
`The application leading to the ‘641 patent was filed on November 9, 2012 as a
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`7
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`Inter Partes Review
`United States Patent No. 8,532,641
`continuation of the U.S. Pat. No. 8,521,140 patent (filed May 27, 2011), which is a
`
`continuation of U.S. Pat. No. 7,953,390 (“the ‘390 patent”) (filed June 30, 2009),
`
`which is a continuation of U.S. Pat. No. 7,778,595 (“the ‘595 patent”) (filed January
`
`16, 2008), which is a continuation of the ‘833 patent (filed on September 23, 2004)
`
`and which in turn is a continuation of the ‘947 patent (filed March 28, 2000).
`
`On March 13, 2013, the Examiner issued an Office Action, rejecting
`
`prosecution claims 8-11 and 13-20 under 35 U.S.C. § 102, prosecution claims 1-7 and
`
`12 under 35 U.S.C. § 103 and prosecution claims 1-20 for double patenting. Ex. 1202
`
`at 411-421 (3/13/2013 OA at 2-12). The Examiner also noted that many of the claim
`
`elements were inherent in the art (e.g., a display, housing, enclosure, wireless
`
`communication module, rechargeable power supply, physical interface, memory,
`
`receiving a wireless upgrade for a software application, email, voice-mail, Internet
`
`browser). Id. at 413-18 (3/13/2013 OA at 4-9). On May 1, 2013, Applicants amended
`
`the specification and claims: prosecution claim 1 (issued as claim 1) was amended to
`
`add “to communicate a collection of information about media content available from
`
`the wireless telephone device to a recipient device such that the recipient device can
`
`use the collection of information to generate a graphical menu comprising a selectable
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`menu item associated with the available media content”; and prosecution claim 8
`
`(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
`
`1-14). The Examiner then issued a Notice of Allowance on June 3, 2013, and the ‘641
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`Inter Partes Review
`United States Patent No. 8,532,641
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`patent issued on September 10, 2013.
`
`V.
`
`‘641 PATENT CLAIMS 1-3 AND 5-14 ARE NOT ENTITLED TO
`CLAIM PRIORITY TO THE MARCH 28, 2000 FILING DATE OF
`THE ‘812 APPLICATION AND THE SEPTEMBER 23, 2004 FILING
`DATE OF THE ‘755 APPLICATION
`
`The application leading to the ‘641 patent was filed as a continuation of the
`
`‘140 patent, which is a continuation of the ‘390 patent, which is a continuation of the
`
`‘595 patent, which is a continuation of the ‘833 patent, which is a continuation of the
`
`‘947 patent. The ‘641 patent claims priority to this chain of patent applications, the
`
`earliest of which is U.S. Pat. Application No. 09/537,812 (“the ‘812 application”),
`
`(filed on March 28, 2000 and issued on March 6, 2007 as the ‘947 patent), followed by
`
`U.S. Pat. Application No. 10/947,755 (“the ‘755 application”) (filed on September 23,
`
`2004 and issued on January 29, 2008 as the ‘833 patent).
`
`To properly claim the benefit of the March 28, 2000 priority date, or any other
`
`date in the chain of priority, however, the claims at issue must be directed to subject
`
`matter disclosed in the prior application(s) in the manner provided by § 112 ¶ 1, and
`
`must contain a written description of the invention. See, e.g., Vas-Cath Inc. v. Mahurkar,
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`935 F.2d 1555, 1562-63 (Fed. Cir. 1991). “A disclosure in a parent application that
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`merely renders the latter-claimed invention obvious is not sufficient to meet the
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`written description requirement; the disclosure must describe the claimed invention
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`with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
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`Furthermore, “entitlement to a priority date for any claim is a matter for which [the
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`9
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`Inter Partes Review
`United States Patent No. 8,532,641
`Patent Owner] bears the burden of proof.” Ex. 1217 at 16 (2/12/2013 Institution
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`Decision, CBM2012-00003); see also In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir.
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`2011) (“for a patent’s claims to be entitled to an earlier priority date, the patentee must
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`demonstrate that the claims meet the requirements of 35 U.S.C. § 120.”).
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`While reserving for another forum whether the claims have any support in any
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`of the listed priority applications, 2 Petitioners respectfully submit that for the
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`Challenged Claims in this Petition, Affinity is not entitled to claim priority to a date
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`earlier than at least January 16, 2008, which is the filing date of the ‘595 patent (the
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`great-grandparent to the ‘641 patent).
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`At minimum, the ‘812 and ‘755 applications do not disclose independent claim
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`1’s recitation of “communicat[ing] a collection of information about media content
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`available from the wireless telephone device to a recipient device such that the
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`recipient device can use the collection of information to generate a graphical menu
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`comprising a selectable menu item associated with the available media content” and
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`independent claim 8’s recitation of communicating a streaming audio signal “in
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`response to a selection of a selectable menu item presented on a recipient device
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`display” – the very limitations the applicants added to secure allowance of the ‘641
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`2 Petitioners reserve the right to raise in an appropriate forum invalidity based on
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`§ 112, as well as the right to challenge in another forum that the ‘641 patent is not
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`entitled to the claimed March 28, 2000 priority date on other grounds.
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`10
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`Inter Partes Review
`United States Patent No. 8,532,641
`patent. Exs. 1202, 1218, 1219. The earliest application that even arguably disclosed
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`these limitations was the application that led to the ‘595 patent, filed on January 16,
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`2008. See Ex. 1220. Further, because ‘641 patent claims 2-3 and 5-7 are dependent
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`upon independent claim 1, and claims 9-14 are dependent upon independent claim 8,
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`Affinity likewise cannot claim priority for these claims to the ‘812 and ‘755
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`applications.
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`In a recent decision issued by the PTAB in the reexamination proceedings of
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`the related ‘228 patent, the PTAB found that a similar claim limitation of the ‘228
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`patent was not supported by the ‘812 application. Ex. 1215 at 10-11 (No. 95/001,281,
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`6/30/2014 PTAB Decision at 9-10). The PTAB specifically stated that “we are
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`unpersuaded by Patent Owner that the original ‘812 application Specification supports
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`‘communicating at least some of the collection from the portable hand-held device to
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`a different electronic device in order to allow a user to view a soft button comprising
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`the name on an associated display of the different electronic device.’” Id. at 10
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`(6/30/2014 PTAB Decision at 9). The PTAB further found unpersuasive Affinity’s
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`argument that this feature was disclosed in ‘228 patent Fig. 4 and 9:52-56 (which
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`corresponds to ‘641 patent Fig. 4, 10:66-11:3). Id. at 10-11 (6/30/2014 PTAB
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`Decision at 9-10). The PTAB agreed with the Examiner that there was no disclosure
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`to support this claimed element, citing the Examiner’s findings that “[t]he user
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`interface of figure 4 is, by all accounts, embodied only in the portable audio that is
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`connected to the automobile sound system rather than both the portable player and
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`Inter Partes Review
`United States Patent No. 8,532,641
`the automobile sound system,” and “[t]here is no teaching, either explicitly or
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`implicitly, that the automobile sound system - or any other ‘different electronic device’
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`- with which the portable audio player communicates is capable of receiving audio
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`information from the portable device and then displaying soft buttons comprising a
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`name on an associated display, as claimed.’” Id.3
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`During prosecution of the ‘641 patent, on May 1, 2013, Applicants filed a Reply
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`to Office Action to amend the prosecution claims to include the recited claim
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`limitations that Petitioners submit are not disclosed in the ‘812 and ‘755 applications.
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`Ex. 1202 at 250-252 (5/1/2013 Reply to OA at 6-8). In their May 1, 2013 Reply,
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`Applicants asserted that the ‘641 patent claims were entitled to the March 28, 2000
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`3 During reexamination of the ‘926 patent (whose claims were all ultimately found
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`invalid as affirmed by the Federal Circuit), the PTAB also decided the issue of
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`whether the ‘926 patent was entitled to the March 28, 2000 priority date of the ‘812
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`application. Ex. 1221; In re Affinity, 550 Fed. Appx. 884 (Fed. Cir. Jan. 9, 2014). In that
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`proceeding, the PTAB originally affirmed the Examiner’s finding that the ‘926 patent
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`was not entitled to the March 28, 2000 priority date. Upon rehearing, however, the
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`PTAB reversed its original finding and held that the ‘926 patent was entitled to the
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`March 28, 2000 priority date. Petitioners respectfully submit that the PTAB’s finding
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`with respect to the ‘926 patent was incorrect. The priority date issue of the ‘926 patent
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`was not raised on appeal before the Federal Circuit.
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`12
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`Inter Partes Review
`United States Patent No. 8,532,641
`priority date and cited ‘641 patent 6:37-39, 10:21-31, 10:41-57, 12:14-40, Figs. 1, 2, 3, 4,
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`9 as supporting disclosure. Ex. 1202 at 255-57 (5/1/2013 Reply to OA at 11-13).
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`These citations, along with the ‘812 and ‘755 applications generally, however, do not
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`disclose that the claimed wireless telephone/portable device is capable of sending a
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`“collection of information about media content available from the wireless telephone
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`device to a recipient device such that that the recipient device can use the collection of
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`information to generate a graphical menu comprising a selectable menu item
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`associated with the available media content.” Exs. 1218, 1219. Nor is there any
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`disclosure
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`in
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`the
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`‘812 or
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`‘755 applications
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`that
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`the claimed wireless
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`telephone/portable device is able to communicate a streaming audio signal “in
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`response to a selection of a selectable menu item presented on a recipient device
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`display.” Id.
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`Specifically, the following portions of the ‘641 specification have been cited by
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`Affinity as support for these limitations during prosecution of the ‘641 patent, and as
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`support for similar claim limitations during various reexaminations of related patents.
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`Affinity cites numerous