IPR 2014-01184
`U.S. Patent No. 8,532,641
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG ELECTRONICS
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`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS
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`AMERICA, LLC
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`PETITIONERS
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`V.
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`AFFINITY LABS OF TEXAS, LLC
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`PATENT OWNER
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`_____________________
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`CASE IPR2014-01184
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`PATENT 8,532,641
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONERS’ CORRECTED PETITON FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 8,532,641
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`IPR 2014-01184
`U.S. Patent No. 8,532,641
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ....................................................................................................... 1
`
`THE ‘641 PATENT WAS WELL-VETTED DURING
`EXAMINATION ......................................................................................................... 2
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`III. CLAIM CONSTRUCTION ....................................................................................... 5
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`A.
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`B.
`
`C.
`
`“wireless telephone device” .............................................................................. 6
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`“stream a signal”/”streaming audio signal” ................................................... 7
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`“a signal representing at least a portion of a song”/ “signal that
`represents a playing of the song” .................................................................... 8
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`D.
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`“portable electronic device” ............................................................................. 8
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`IV. THE REFERENCES ................................................................................................... 9
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`A. Ohmura (U.S. Patent No. 6,937,732).............................................................. 9
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`B.
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`Ahn (U.S. Patent App. No. 2004/0214525) ................................................ 10
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`C. Galensky (U.S. Patent No. 6,845,398) .......................................................... 10
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`V.
`
`‘641 PATENT CLAIMS 1-3 AND 5-14 ARE PROPERLY
`SUPPORTED BY SUBJECT MATTER DISCLOSED IN THE
`PRIOR APPLICATIONS, AND ARE ENTITLED TO CLAIM
`PRIORITY TO THE MARCH 28, 2000 FILING DATE OF THE ‘812
`APPLICATION. ......................................................................................................... 11
`
`A.
`
`B.
`
`Legal standard for claiming priority to an earlier application. .................. 12
`
`The ‘812 application provides more than adequate support for the
`challenged claims. ............................................................................................. 13
`
`1. The ‘812 application provides more than adequate support for the
`element in claim 1 of “communicat[ing] 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 menu
`item associated with the available media content”. .................................... 14
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`IPR 2014-01184
`U.S. Patent No. 8,532,641
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`2. The ‘812 application provides more than adequate support for the
`element in claim 8 of “in response to a selection of a selectable menu
`item presented on a recipient device display”. ............................................ 19
`VI. THE CITED REFERENCES OF OHMURA AND AHN ARE NOT
`PRIOR ART REFERENCES BECAUSE THE CHALLENGED
`CLAIMS ARE ENTITLED TO THE EARLIER PRIORITY DATE. ........... 22
`
`VII. EVEN IF OMHURA AND AHN ARE PRIOR ART, THE CITED
`COMBINATIONS ARE NOTHING MORE THAN IMPERSSIBLE
`ATTEMPTS AT HINDSIGHT RECONSTRUCTION. .................................... 22
`
`A.
`
`B.
`
`C.
`
`The Supreme Court and Federal Circuit Precedent Preclude the
`Use of Hindsight in an Obviousness Analysis. ........................................... 22
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`Petitioners Fail to Identify A Proper Motivation for Making the
`Proposed Combination Other Than Through The Use of
`Improper Hindsight. ........................................................................................ 24
`
`Petitioners’ Combinations of Omhura, Ahn, Nokia, and Galensky
`are the Result of Improper Hindsight. ......................................................... 26
`
`VIII. THE INTER PARTES REVIEW INITIATED IN RELATION TO
`U.S. PATENT NO. 8,532,641 DEPRIVES PATENT OWNER OF ITS
`RIGHT TO A JURY TRIAL PURSUANT TO THE SEVENTH
`AMENDMENT OF THE UNITED STATES CONSTITUTION. ................ 29
`
`IX. THE CITED REFERENCES ARE MERELY CUMULATIVE AND
`ANY TRIAL SHOULD ONLY BE INSTITUTED ON ONE
`GROUND, IF ANY. .................................................................................................. 34
`
`X.
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`CONCLUSION........................................................................................................... 35
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`TABLE OF AUTHORITIES
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`IPR 2014-01184
`U.S. Patent No. 8,532,641
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`Page
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`Cases
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`Abbott Labs v. Cordis Corp.,
`710 F.3d 1318 (Fed. Cir. 2013) .................................................................................. 33
`
`Canon Inc. v. Intellectual Ventures I LLC,
`IPR2014-00536, Paper 9, September 24, 2014 ........................................................ 34
`
`Commodity Futures Trading Commission v. Schor,
`478 U.S. 833 (1986) ..................................................................................................... 30
`
`Ford Motor Co. v. Lemelson,
`42 USPQ2d 1706 (D. Nev. 1997) ............................................................................. 12
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .................................................................................... 6
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ..................................................................... 22, 23, 24
`
`Joy Techs., Inc. v. Manbeck,
`959 F.2d 226 (Fed. Cir. 1992) .................................................................................... 31
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F. 3d 1342 (Fed. Cir. 2012) ................................................................................. 25
`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) .................................................................................... 22, 23, 24
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00003, Paper No. 8, Oct. 25, 2012 ....................................................... 34
`
`Lockwood v. American Airlines, Inc.,
`107 F.3d 1565, 41 USPQ2d 1961 (Fed. Cir. 1997) ................................................. 12
`
`McCormick Harvesting Machine Co. v. Aultman,
`169 U.S. 606 (1898) ..................................................................................................... 31
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`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ........................................................................... 23, 24
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`U.S. Patent No. 8,532,641
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`Patlex Corp. v. Mossinghoff,
`758 F.2d 594 (Fed. Cir. 1985) ............................................................................. 31, 32
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................... 6
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`ScentAir Tech., Inc. v. Prolitec, Inc.,
`IPR 2013-00179, Paper 9 (Apr. 16, 2013) ................................................................ 32
`
`Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co.,
`112 F.2d 1561 (Fed. Cir. 1997) .................................................................................. 15
`
`Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.,
`492 F.3d 1350 (Fed. Cir. 2007) .................................................................................. 23
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper No. 17, October 31, 2014 ................................................. 34
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`Statutes
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`112 Cong. Rec. S1375 ............................................................................................................... 1
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`35 U.S.C. § 103(a) .................................................................................................................... 22
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`35 U.S.C. § 112 .................................................................................................................. 12, 15
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`35 U.S.C. § 120 ......................................................................................................................... 12
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`35 U.S.C. § 314 .............................................................................................................. 1, 24, 36
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`Other Authorities
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`37 C.F.R. § 42.100(b) ................................................................................................................ 5
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`37 C.F.R. § 42.107 ..................................................................................................................... 1
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`37 C.F.R. § 42.121 ................................................................................................................... 33
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`37 C.F.R. § 42.51(b)(l) ............................................................................................................. 33
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`37 C.F.R. § 42.72 ..................................................................................................................... 33
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`37 C.F.R. § 42.73 ..................................................................................................................... 33
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`37 C.F.R. § 42.73(d)(1) ............................................................................................................ 33
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Affinity Labs of Texas, LLC
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`IPR 2014-01184
`U.S. Patent No. 8,532,641
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`submits this Preliminary Response to the above-captioned Corrected Petition for Inter
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`Partes Review of U.S. Patent No. 8,532,641 (“Pet.,” Paper 4).
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`I.
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`INTRODUCTION
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`The Board should not institute inter partes review because the Petition fails to
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`meet the requirements of 35 U.S.C. § 314. Inter partes review may only be instituted
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`when a petition demonstrates a reasonable likelihood that the petitioner would prevail
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`on at least one challenged claim. The legislative history indicates that the new
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`“reasonable likelihood of success” standard is akin to the high burden imposed on a
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`party seeking to obtain a preliminary injunction. 112 Cong. Rec. S1375 (Mar. 8, 2011)
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`(statement by Sen. Jon. Kyl). Accordingly, a petitioner must present a prima facie case
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`warranting a rejection of a challenged claim.
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`The Petition fails to present a prima facie case of obviousness for any of the
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`challenged claims. Petitioner presents redundant combinations of references in three
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`separate petitions for inter partes review. Some of the Petitioners’ assertions of
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`obviousness are based on references which do not qualify as prior art to U.S. Patent
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`8,532,641 (“the ’641 patent”). The ’641 patent is entitled to a priority date of March
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`28, 2000 based on the chain of priority from U.S. Pat. Application No. 09/537,812
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`(“the ‘812 application”) which disclosed the ‘641 patent’s subject matter. A prima
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`facie case of obviousness cannot be built upon the application of hindsight analysis or
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`references not qualifying as prior art. Because the Petitioner fails to establish a prima
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`U.S. Patent No. 8,532,641
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`facie case for any of the challenged claims, the Board should deny the Petition.
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`II. THE ‘641 PATENT WAS WELL-VETTED DURING EXAMINATION
`The patent at issue, the ’641 patent, was granted on September 10, 2013 to
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`inventors Russell White and Kevin Imes. It issued from a continuation application
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`that claims priority back to the filing of the ‘812 application, which was filed more
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`than a decade ago.
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`In 1999, inventors Russell White and Kevin Imes invented a new media
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`ecosystem that utilized a portable media device as a media hub. They filed a
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`comprehensive patent application on March 28, 2000 that disclosed, among other
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`things, the ability to download media, playlists, and applications from an online store,
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`the ability to stream Internet radio, the ability to communicatively couple a portable
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`electronic device to secondary devices (such as automobiles), and much, much more.
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`Numerous patents have resulted from this innovative disclosure, including the ’641
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`patent.
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`The ’641 patent is entitled, “System and Method for Managing Media.” The
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`invention claimed in the ’641 patent generally relates to a portable wireless and/or
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`cellular device capable of playing media content such as music. See, Ex. 1201, col 5:19-
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`24. Specifically, the claimed invention of the ’641 patent identified novel methods for
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`how a portable music device such as a cellphone not only can receive audio content
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`from network resources, but in how it could itself be configured to deliver that
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`content so that a user may enjoy the content using other separate devices such as
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`automobile or home stereo systems.
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`One element of the claimed ’641 patent invention is the novel means to
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`communicate media content from a network resource to a portable music device such
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`as a cellular phone. For example, the ’641 patent disclosed novel techniques for how
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`selected content could be formatted and transmitted to a portable device. See, Ex.
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`1201, col. 6:25-27. Specifically, the claimed invention of the ’641 patent identifies
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`several ways in which content can be segmented, formatted, and delivered to facilitate
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`transmissions to a portable media device, including by segmenting, compressing,
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`modifying, and/or storing content data in various different compressed and
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`uncompressed multimedia formats. See, id. col. 4:24-30, 4:53-63. The various portions
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`of a selected media can be stored at respective network locations with network
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`addresses for the locations included in a playlist. And, the portable device can make
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`requests for the sequential portions. See, id. col. 4:46-64. The claimed invention also
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`offered a novel approach to facilitate a portable media device’s ability to choose
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`various portions of selected content by requesting individual segmented portions of
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`that content that are formatted for different data rates. See, id. col. 6:54-7:18
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`The claimed portable music device, however, could do more than simply
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`download music in a novel way and then play that music. The ’641 patent also
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`discloses and claims functionality for the portable music device to wirelessly stream
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`media content to a separate, second device (such as a car or home stereo) over an
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`asynchronous communications channel. See, id. col. 2:22-32, 4:7-53, 9:31-56. In
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`addition to wirelessly communicating audio information to the separate device, the
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`novel claimed portable music device is capable of also sending data related to the
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`media (such as song titles) so that the separate device can generate a graphical menu
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`and operate to select specific media from the portable music device to play. See, id. col.
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`4:4-63, 10:66-11:14. As a result, music stored or downloaded by the portable music
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`device can be played and controlled on the separate device. See, id. col. 9:31-43.
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`Finally, the portable media device is not limited to playing and streaming media.
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`As the ‘641 patent discloses and claims, the device is also capable of making and
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`receiving calls, connecting to the internet, managing voice mails, and receiving email
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`communications. See Ex. 1201, col. 10:36-65.
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`As Petitioners have set forth in their submission, the family of patents that
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`have issued from the ‘812 application has been heavily litigated. See Pet. at pp. 4-5.
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`Further, the “References Cited” section of the ’641 patent spans over twelve pages of
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`references and prior art references, encompassing several hundreds of references that
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`were before the Examiner during the prosecution of the ’641 patent. See Ex. 1201 at
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`pp. 1-13. Petitioners’ strategy in relation to the ’641 patent at issue has been to engage
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`in a pattern of conduct that can best be described as a systematic attempt to harass
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`the Patent Owner through numerous attempts at combining cumulative prior art
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`references in an ill-fated attempt to establish obviousness.
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`Here, the Petitioners set forth bare assertions that do not present a prima facie
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`case of obviousness for any of the challenged claims. Indeed, the Petition presents
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`redundant combinations of references, including two references which were already
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`cited on the face of the patent. The cited art includes Petitioners’ “primary” reference,
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`U.S. Patent No. 6,937,732 (“Ohumra”), as well as U.S. Pat. No. 6,845,398
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`(“Galensky”). Petitioners offer no reasonable explanation as to why any of the
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`references cited on the face of the patent now render the challenged claims invalid
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`when the Examiner allowed these claims during examination over these references.
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`While Petitioners seek to portray the references cited in their Petition as novel
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`combinations that render the challenged claims invalid as obvious, the simple truth is
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`that Petitioners’ grounds for invalidity represent little more than impermissible
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`attempts at hindsight reconstruction, a rehashing of prior art already vetted by the
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`Patent Office, and/or cumulative of the same. Thus, the Board should deny the
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`Petition.
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`III. CLAIM CONSTRUCTION
`For purposes of inter partes review, “[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the patent in
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`which it appears.” (37 C.F.R. § 42.100(b)). While claim terms “are generally given their
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`ordinary and customary meaning,” which is “the meaning that the term would have to
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`a person of ordinary skill in the art in question at the time of the invention,” see e.g.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005), the construction
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`must also be consistent with the specification, and the claim language should be read
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`in the light of the specification as it would be interpreted by one of ordinary skill in
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`the art. See e.g. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Moreover,
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`the “ordinary and customary meaning of a term may be evidenced” by other sources
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`too, including the prosecution history. Phillips, 415 F.3d at 1314.
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`A. “wireless telephone device”
`This term appears in independent claim 1 and claims that depend therefrom.
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`The ’641 patent does not explicitly define a “wireless telephone device,” but indicates
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`that the device should communicate wirelessly over a cellular communications
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`network. See Ex. 1201, col. 7:35-39, 8:3-6. This is consistent with a construction that
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`the Board has adopted in proceedings on a related patent for a similar term, “cellular
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`phone,” which was construed to be a “telephone with access to a cellular radio system
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`so it can be used over a wide area, without a physical connection to a network.” Case
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`IPR2014-00408, Institution of Inter Partes Review (July 21, 2014) at 7. The same
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`construction is appropriate for the similar term, “wireless telephone device,” in this
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`related patent.
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`B. “stream a signal”/”streaming audio signal”
`These terms appear in independent claims 1 and 8 and claims that depend
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`IPR 2014-01184
`U.S. Patent No. 8,532,641
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`therefrom. The broadest reasonable construction of these terms, “stream a signal”
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`and “streaming audio signal” is a “signal/audio signal that is played as it arrives at a
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`recipient device, not requiring that an entire file be transferred to and stored at a
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`recipient device prior to initiating playback.” This is consistent with their plain and
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`ordinary meaning, as understood by one of ordinary skill in the art, who understands
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`that there is a difference between “download and play files” and streaming files. This
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`understanding is evident from the teachings of the ’641 patent specification, see e.g. Ex.
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`1201, 7:4-7; and compare 3:67-4:1 and 10:20 (referring to “streaming audio”) with 8:25-
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`26 and 13:8-9 (describing downloading selective information), as well as in statements
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`the applicants made during prosecution of the priority ‘812 application:
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`[S]treaming audio includes playing audio or video immediately as it is
`downloaded from the Internet, rather than storing it in a file on the
`receiving computer first.” A second reference defines streaming audio as
`“. . . streaming sound is played as it arrives. The alternative is a sound
`recording that doesn’t start playing until the entire file has arrived.” In
`other words, by downloading and storing the file, an electronic device
`incorporating teachings of the present invention will be able to play
`music without break-ups, pauses, and music stoppages attendant to
`streaming systems.
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`Ex. 2201 at 2 (Excerpt of File History for the ‘812 application, Amendment and
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`Argument dated Feb. 18, 2003).
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`C.
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` “a signal representing at least a portion of a song”/ “signal that
`represents a playing of the song”
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`These terms appear in independent claims 1 and 8 and claims that depend
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`therefrom. To the extent that any construction becomes necessary of “a signal
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`representing at least a portion of a song”/”signal that represents a playing of the
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`song,” these terms should not be construed as synonymous with the communication
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`of “data.”
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`D. “portable electronic device”
`This term appears in claim 8 and claims that depend therefrom. This term was
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`previously construed in litigation involving patents within the same family as the ‘641
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`to mean “an electronic device that can be easily moved by a user from one location to
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`another and that can be operated in a mobile environment independent of, or
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`untethered to, another system.” Ex. 2203 at 31. This construction is consistent with
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`the specification direction that the device should be “removable” and the plain
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`language of the claims. See Ex. 1201, col. 10:28-35. As such, this construction is
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`appropriate for the ’641.
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`IV. THE REFERENCES
`A. Ohmura (U.S. Patent No. 6,937,732)
`U.S. Patent No. 6,937,732 issued on August 30, 2005 and was assigned to
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`Mazda Motor Corp. Ex. 1203. Ohmura is the U.S. counterpart to several foreign
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`applications. One of these foreign applications, EP 1146674, was considered during
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`prosecution during examination of the ’641 patent. Ex. 1201 at 5. Ohmura discusses a
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`system wherein portable audio apparatuses 200a and 200b may be used in the car.
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`However, these portable audio apparatuses 200a and 200b could only be used in the
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`car, and Ohmura contains no disclosure of using these portable audio apparatuses
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`200a and 200b outside of the car. Indeed, the Abstract states that purpose of the
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`system was “[a]s a communication system for this in-car radio communication, [for]
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`perform[ing] data communication with one another in the vehicle.” Ex. 1201 at
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`Abstract. Further, Ohmura does not disclose using the portable audio apparatuses
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`200a and 200b to make phone calls, or that they could be used to make and receive
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`telephone calls.
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`In addition, Ohmura discloses a system wherein music files may be transmitted
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`wirelessly between the portable audio apparatuses 200a and 200b and the audio
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`apparatus 100 that is built into the car. Ex. 1203, col. 3:61-4:13. In fact, Ohmura
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`recognizes the problem with other portable audio devices that require wired
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`communications in that the “shape and mode” of the wired port between devices are
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`different. Ex. 1203, col. 2:65-3:1. Ohmura addresses this problem by its portable
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`audio apparatuses 200a and 200b being able to wirelessly communicate with the audio
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`apparatus 100. Ex. 1203, col. 3:61-4:13, Fig. 2.
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`B. Ahn (U.S. Patent App. No. 2004/0214525)
`U.S. Patent Application No. 2004/0214525, applied for by Byung-Koo Ahn et
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`al, was filed on October 21, 2001 and published on October 28, 2004. Ahn discloses a
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`music system wherein Bluetooth communication protocol is used to transmit data
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`between a mobile station and the car kit. The mobile device of Ahn is not described
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`as being able to receive email, have a Web browser, or have a voicemail client.
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`C. Galensky (U.S. Patent No. 6,845,398)
`U.S. Patent No. 6,845,398 entitled “Wireless Multimedia Player” was filed on
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`August 2, 1999 and issued to Duane Galensky and Andrew Zidel on January 18, 2005.
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`Galensky is listed on the face of the ‘641 Patent and was considered by the Patent
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`Office during prosecution. Ex. 1201 at 4. Galensky described a system and method
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`for streaming multimedia content to a “wireless” multimedia player. The wireless
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`device disclosed in Galensky is capable of requesting content from a multimedia
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`server via a wireless channel. Ex. 1209, col. 4:66–5:9. Galensky describes that upon
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`receipt of the content from the multimedia server, the wireless device can then
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`playback the content on the wireless device or through speakers connected to the
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`device through a conventional audio jack. Id. at col. 4:49-53; 5:50-59. Galensky does
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`not disclose sharing of content from the wireless device to any other devices.
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`Galensky further describes that in order to allow wireless network providers to serve
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`more subscribers and preserve bandwidth, the wireless device can request that the
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`wireless network (as opposed to the multimedia server) to adjust the data transmission
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`rate for streamed content to the wireless device. Id. at col. 5:66-6:26.
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`V.
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`‘641 PATENT CLAIMS 1-3 AND 5-14 ARE PROPERLY SUPPORTED
`BY SUBJECT MATTER DISCLOSED IN THE PRIOR
`APPLICATIONS, AND ARE ENTITLED TO CLAIM PRIORITY TO
`THE MARCH 28, 2000 FILING DATE OF THE ‘812 APPLICATION.
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`The ‘641 patent claims and is entitled to a priority date of March 28, 2000,
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`based upon the filing date of U.S. Pat. Application No. 09/537,812 (“the ‘812
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`application”).1 Petitioners fail to raise any credible argument that challenged claims of
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`the ‘641 patent are not entitled to this priority date. Indeed, Petitioners fail to provide
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`any expert testimony in support of their position, relying instead on attorney
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`argument alone.
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`More to the point, Petitioners assert that the challenged claims are entitled to
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`claim priority to one continuation application in the chain, the ’595 patent, without
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`any explanation as to why this continuation out of five applications allegedly first
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`provides support for the challenged claims. Of note, all of the applications in the
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`chain are continuations, and not continuations-in-part, such that no new matter was
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`1 The ‘812 application issued as U.S. Patent No. 7,187,947.
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`added in any of the applications. As such, the specification is the same for all
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`applications
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`in the chain,
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`including the parent
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`‘812 application. Petitioners’
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`unsupported argument is nothing more than an indication that they can’t identify any
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`references that predate the priority date that allegedly invalidate the challenged claims,
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`including those references identified in the related inter partes review proceeding
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`challenging the same claims of the ’641 patent, IPR2014-01181 and IPR2014-01182.
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`A. Legal standard for claiming priority to an earlier application.
`A later filed patent application is entitled to claim priority to the filing date of
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`an earlier filed application for all common subject matter that is contained in the
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`earlier application, whether the subject matter appears in the body of the specification
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`or in the claims or drawings. In order to gain the benefit of the filing date of an earlier
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`filed application under 35 U.S.C. § 120, each application in the chain leading back to
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`the earlier application must comply with the written description requirement of 35
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`U.S.C. § 112. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d
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`1961, 1965-66 (Fed. Cir. 1997). However, a patent applicant is not required to foresee
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`all possible permutations of his or her inventions upon the filing of a patent
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`application. See, e.g., Ford Motor Co. v. Lemelson, 42 USPQ2d 1706, 1710 (D. Nev. 1997)
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`("Under the current statutory scheme a claimant need only disclose an invention
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`initially, not anticipate all of its future applications. In other words, the operation of
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`Section 120 makes it unnecessary for the parent application to reveal in advance
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`conceivable combinations of elements in later-filed claims . . .”).
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`B. The ‘812 application provides more than adequate support for the
`challenged claims.
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`Petitioners assert that certain sections of the ’641 patent specification and
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`related parent applications that the Patent Owner has cited during the prosecution of
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`the ’641 patent do not provide adequate support two claim limitations, one found in
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`claim 1 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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`the following element in claim 8 of “in response to a selection of selectable menu item
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`presented on a recipient device display.” First, Petitioners fail to have any expert
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`testimony to support their assertions, instead relying solely on attorney argument.
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`Second, similar arguments have already been rejected by the PTAB in related
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`proceedings. Petitioners merely disregard this finding without any explanation. On
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`these bases alone, the challenge to priority should be disregarded. Third, the claim
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`elements that the PTAB found could not claim priority are not the same as those
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`here. In particular, the rejected claims included a limitation of a “soft button” to be
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`displayed. Neither limitation challenged here contains such limitation. Thus, the
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`PTAB’s findings as to those claims are irrelevant here.
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`The ‘812 application and ’641 patent provide more than sufficient support for
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`these challenged claim elements. Petitioners assert that several passages in the ‘812
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`application and ’641 patent fail to establish possession of the claimed inventions.
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`However, Petitioners provide no basis for such assertion, and rather just summarily
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`conclude that the passages don’t provide support. Such failure to provide reasoning
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`for Petitioners’ assertions is improper and not a basis to conclude that Patent Owner’s
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`claim of priority, which has already been upheld by the PTAB, is incorrect.
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`1. The ‘812 application provides more than adequate support for
`the element in claim 1 of “communicat[ing] 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 menu item associated
`with the available media content”.
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`For the limitation in claim 1 related to displaying information on the recipient
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`device, Petitioners conclude that the following passage fails to support the recited
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`claim limitation:
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`Ex. 1201 at 11:57-62 (see also Ex. 1218 at 618 (3/28/2000
`‘812 App. at 27:8-13), Ex. 1219 at 380 (9/23/2004 ‘755
`App. at 19, [0059])): “A user may also use a select a device
`feature that allows a user to select a destination device for
`communicating selected audio information. For example, a
`user may want to communicate a playlist to several
`different devices such as a PDA, a home computer system,
`a work computer system, etc.”
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`The thrust of Petitioners’ argument is that this disclosure does not support the
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`concept that information about audio content (otherwise known as metadata) can be
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`transmitted from the portable device to the destination device. In view of the above
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`disclosure, this argument fails