Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`Paper 10
`Filed: January 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`Petitioner,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01181
`Patent 8,532,641 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Samsung Ex. 1324 p. 1
`
`
`571.272.7822
`
`
`
`
`
`
`
`Paper 10
`Filed: January 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`Petitioner,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01181
`Patent 8,532,641 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Samsung Ex. 1324 p. 1
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`I. INTRODUCTION
`
`
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC, (collectively,
`
`“Petitioner”) filed a Corrected Petition (Paper 4, “Pet.”) requesting
`
`institution of inter partes review of claims 1–3 and 5–14 of U.S. Patent No.
`
`8,532,641 B2 (“the ’641 patent”). Affinity Labs of Texas, LLC (“Patent
`
`Owner”) timely filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to
`
`the Petition.
`
`
`
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`
`
`For the reasons given below, on this record, we find that Petitioner has
`
`established a reasonable likelihood of prevailing with respect to claims 8 and
`
`11–14. Pursuant to 35 U.S.C. § 314, we authorize an inter partes review to
`
`be instituted as to these claims on the grounds set forth below.
`
`
`
`
`
`A. Related Proceedings
`
`Petitioner represents that the ’641 patent is being asserted in Affinity
`
`Labs of Texas, LLC v. Samsung Electronics Co., Ltd., 3:14-cv-3030 (N.D.
`
`Cal.) and Affinity Labs of Texas, LLC v. Blackberry, 5:14-cv-3031 (N.D.
`
`Cal.). Pet. 4. The ’641 patent is also the subject of co-pending IPR petitions
`
`IPR2014-01182 and IPR2014-01184. Paper 7, 1; Pet. 4.
`
`
`
`
`
`B. The ’641 Patent
`
`The ’641 patent is directed to a system and method for
`
`communicating selected information to an electronic device. Ex. 1001,
`
`1:21–23, 2:15–21. In the disclosed embodiments, a radio listener may create
`
`
`
`
`2
`
`Samsung Ex. 1324 p. 2
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`a personalized playlist and “listen to this playlist in a wireless atmosphere
`
`while enjoying CD quality sound.” Id. at 2:18–21. The audio information
`
`transmitted to a user may include “streaming audio.” Id. at 3:67–4:1.
`
`
`
`Electronic devices contemplated for use in the disclosed system
`
`include “a network radio, a modular device, an audio system, a personal
`
`digital assistant (PDA), a cellular phone, or other electronic devices operable
`
`to receive information wirelessly communicated” by a communications
`
`engine. Id. at 5:36–41. Wireless communication may be accomplished
`
`using various means, including cellular communications, AM or FM signals,
`
`and “high speed, low-power microwave wireless link[s],” such as a
`
`“Bluetooth link.” Id. at 2:33–43, 5:61–6:24.
`
`
`
`According to the ’641 patent, “conventional” wireless systems
`
`communicate across a channel in “an asynchronous manner.” Id. 6:34–39.
`
`In addition to this conventional asynchronous method, the ’641 patent also
`
`“advantageously allows for signals to be transmitted to an electronic device
`
`in a less than asynchronous manner.” Id. at 6:40–42.
`
`
`
`In one embodiment, the electronic device is operable to communicate
`
`the received audio information to a different audio system, such as an audio
`
`radio receiver, using “a localized communications-signaling network.” Id. at
`
`9:44–56, 10:26–35, 12:29–35. The electronic device also may communicate
`
`with the audio system using a physical interface having two conductive
`
`paths, the first path for communicating information and the second path for
`
`providing power to the device. Id. at 18:40–53.
`
`
`
`
`
`C. Illustrative Claims
`
`Claims 1–3 and 5–14 are at issue in this proceeding. Claims 1 and 8
`
`are independent. Claims 2, 3, and 5–7 depend, directly or indirectly, from
`
`
`
`
`3
`
`Samsung Ex. 1324 p. 3
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`claim 1 and claims 9–14 depend, directly or indirectly, from claim 8.
`
`Independent claims 1 and 8 are illustrative of the challenged claims and are
`
`reproduced below:
`
`1. A music enabled communication system, comprising: a
`wireless telephone device, the device having (1) a display at
`least partially defining a front surface of the device, (2) a
`housing component at least partially defining a back surface of
`the device, (3) an enclosure located between the front surface
`and the back surface, (4) a wireless communication module
`located within the enclosure, (5) a rechargeable power supply
`located within the enclosure, (6) a physical interface having a
`first and a second conductive path, the physical interface
`operable to communicate data via the first conductive path and
`to receive a recharging power for the rechargeable power
`supply via the second conductive path, and (7) a memory
`system, located within the enclosure; and
`
` a
`
` collection of instructions stored in the memory system, the
`collection of
`instructions operable when executed
`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 menu item associated with the available media
`content, to utilize the wireless communication module to stream
`a signal representing at least a portion of a song to the recipient
`device using a given asynchronous wireless channel of a
`localized communications signaling network, to recognize
`receipt of an incoming telephone call, and to alter an outputting
`of the signal in connection with recognizing receipt of the
`incoming telephone call.
`
`8. A system for wirelessly communicating musical content,
`comprising:
`
` a
`
` portable electronic device having a processor operable to play
`an audio file that represents a song;
`
`
`
`
`
`4
`
`Samsung Ex. 1324 p. 4
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`a memory communicatively coupled to the processor and
`configured to store a plurality of audio files; and
`
` a
`
` wireless communication module communicatively coupled to
`the processor and operable to communicate a streaming audio
`signal that represents a playing of the song to a recipient device
`via a localized communications signaling network in response
`to a selection of a selectable menu item presented on a recipient
`device display, wherein the wireless communication module is
`compliant with a Bluetooth standard, further wherein the
`wireless communication module is configured to communicate
`at least a portion of the streaming audio signal to the recipient
`device using an asynchronous channel.
`
`
`D. The Prior Art
`
`Petitioner relies upon the flowing prior art references, as well as the
`
`
`
`
`
`Declaration of Dr. Schuyler Quackenbush, PhD. dated July 23, 2014 (Ex.
`
`1023):
`
`Reference
`
`Publication
`
`Date
`
`Exhibit
`
`Ito
`
`Haartsen
`
`Rydbeck
`
`US 6,990,334 B1
`
`Jan. 24, 2006
`
`1003
`
`US 6,973,067 B1 Dec. 6, 2005
`
`1006
`
`US 7,123,936 B1 Oct. 17, 2006
`
`1008
`
`Galensky
`
`US 6,845,398 B1
`
`Jan. 18, 2005
`
`1009
`
`Lee
`
`Lau
`
`US 6,728,531 B1 Apr. 27, 2004
`
`1010
`
`US 6,772,212 B1 Aug. 3, 2004
`
`1012
`
`Owner’s Manual, Nokia 9000i Communicator, 1995–1997 Nokia Mobile
`Phones Ltd. (Ex. 1005B).
`
`
`
`
`
`
`5
`
`Samsung Ex. 1324 p. 5
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`E. The Asserted Grounds of Unpatentability
`
`References
`
`Basis
`
`Claim(s) challenged
`
`Ito and Haartsen
`
`§ 103 1–3, 5, 9, 10, 13, 14
`§ 103 1–3 and 5
`
`§ 103 6, 7, and 12
`
`§ 103 6 and 7
`
`§ 103 8, 9, 11, 13, and 14
`§ 103 12
`§ 103 1 and 2
`§ 103 7
`
`§ 103 1, 2, 5, 6, 8, 9, 11, 13, and
`14
`§ 103 1–3, 5, 8–11, 13, and 14
`Ito, Haartsen, and Nokia
`§ 103 1, 2, 5, 8, 9, 11, 13, and 14
`Ito, Haartsen, and Rydbeck
`§ 103 1–3, 5, 8–11, 13, and 14
`Ito, Haartsen, Nokia, and Rydbeck
`§ 103 7 and 12
`Ito, Haartsen, and Galensky
`§ 103 6, 7, and 12
`Ito, Haartsen, Nokia, and Galensky
`Ito, Haartsen, Rydbeck, and Galensky § 103 7 and 12
`Ito, Haartsen, Nokia, Rydbeck, and
`§ 103 6, 7, and 12
`Galensky
`Lee, Nokia, Lau, and Haartsen
`Lee, Nokia, Lau, Haartsen, and
`Rydbeck
`Lee, Nokia, Lau, Haartsen, and
`Galensky
`Lee, Nokia, Lau, Haartsen, Rydbeck,
`and Galensky
`Lee, Lau, Haartsen
`Lee, Lau, Haartsen, and Galensky
`Lee, Lau, Haartsen, and Rydbeck
`Lee, Lau, Haartsen, Rydbeck, and
`Galensky
`
`
`
`II. ANALYSIS
`
`
`
`
`
`A. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b). In determining the
`
`broadest reasonable construction, we presume that claim terms carry their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted when a
`
`
`
`
`6
`
`Samsung Ex. 1324 p. 6
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`patentee, acting as a lexicographer, sets forth an alternate definition of a
`
`term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`streaming audio signal
`
`
`
`The term “streaming audio signal” is not defined expressly in the ’641
`
`patent. Petitioner contends that the term “stream” means to “transfer as a
`
`flow of data” and “streaming audio signal” should be construed to mean an
`
`“audio signal transferred as a flow of data.” Pet. 11; Ex. 1022, 4 (defining
`
`the term “stream” to mean “[t]o send data from one device to another”).
`
`
`
`Patent Owner contends that a “streaming audio signal” is a
`
`“signal/audio signal that is played as it arrives at a recipient device, not
`
`requiring that an entire file be transferred to and stored at a recipient device
`
`prior to initiating playback.” Prelim. Resp. 7. In support of this
`
`construction, Patent Owner cites to several portions of the ’641 specification
`
`that discuss transferring files and streaming broadcasts. Prelim. Resp. 7
`
`(citing Ex. 1001 3:67–4:1, 7:4–7, 8:25–26, 10:20, 13:8–9.)
`
`
`
`The ordinary meaning of “streaming” is “relating to or being the
`
`transfer of data (as audio or video material) in a continuous stream
`
`especially for immediate processing or playback.” (Streaming Definition,
`
`MERRIAM-WEBSTER.com, http://www.merriamwebster.com
`
`/dictionary/streaming (last visited Jan. 15, 2015)). This is consistent with
`
`Petitioner’s proposed construction requiring transfer of the audio
`
`information “as a flow of data.” Although the ordinary meaning of
`
`“streaming” encompasses the immediate processing or playback of data, as
`
`asserted by Patent Owner, it is not limited to this method, and the ’641
`
`patent Specification does not set forth an alternate definition of the term with
`
`
`
`
`7
`
`Samsung Ex. 1324 p. 7
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`reasonable clarity, deliberateness, and precision sufficient to justify
`
`departing from the ordinary meaning of the term. See In re Paulsen, 30 F.3d
`
`at 1480. Accordingly, we construe “streaming audio signal” to mean “an
`
`audio signal that is transferred in a continuous stream.”
`
`
`
`
`
`B. Grounds Based on Ito
`
`Petitioner contends that claims 1–3 and 5–14 would have been
`
`obvious under 35 U.S.C. § 103 over various combinations of Ito, Haartsen,
`
`Nokia, Rydbeck, and Galensky.
`
`
`
`
`
`
`
`1. Prior Art
`
`a. Ito
`
`Ito is directed to “an acoustic receiving device for receiving music
`
`data via wireless circuit.” Ex. 1003, 1:10–12. In the Ito system, the acoustic
`
`receiving device is part of a cellular telephone that is operable to receive
`
`music signals from a service center, transmitted via a base station. Id. at
`
`6:59–67.
`
`
`
`In one disclosed embodiment, the cellular phone provides a vehicle
`
`audio system and associated display with a list of available songs, which are
`
`then displayed as a selectable menu. Id. at 14:30–34, 22:28–36, Fig. 18.
`
`Upon selection of a particular menu item, the selected songs are delivered
`
`from the service center to the cellular phone and then retransmitted by the
`
`cellular phone to the vehicle-loaded acoustic equipment. Id. at 16:54–17:19,
`
`21:43–50, 22:28–42. In this embodiment, the cellular telephone transmits
`
`the received music to the vehicle audio system in the “weak electro-
`
`magnetic wave . . . of the FM broadcasting frequency band (normally 76
`
`MHz to 90MHz).” Id. at 22:1–13.
`
`
`
`
`8
`
`Samsung Ex. 1324 p. 8
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`b. Nokia
`
`
`
`The owner’s manual for the Nokia 9000i Communicator discloses a
`
`cellular phone having a rechargeable battery, a physical interface for
`
`communicating data and delivering power, a rechargeable battery, and a
`
`display that constitutes more than half of the front surface of the device. See
`
`Ex. 1005B, 7, 13–14, 28, 51, 81, 99. Nokia further discloses an e-mail
`
`client, an Internet web browser, and method for voicemail access. Id.
`
`
`
`
`
`c. Haartsen
`
`Haartsen is directed to a method and apparatus for “establishing
`
`multimedia communications on a shared communications channel.” Ex.
`
`1006, Abstract. In Haartsen, the communications channel is operable to
`
`communicate data, voice, and video services using either synchronous or
`
`asynchronous data communication. Id. at 1:17–19, 3:28–31. According to
`
`Haartsen, an “exemplary system” for implementing the invention “may be
`
`found in a technology known as ‘Bluetooth,’” which provides “low-cost,
`
`robust, efficient, high capacity, ad hoc voice and data connectivity.” Id. at
`
`4:63–67.
`
`
`
`
`
`d. Rydbeck
`
`Rydbeck is directed to a cellular telephone with an entertainment
`
`module capable of “storing music or other audio signals for playback
`
`through the telephone’s headset.” Ex. 1008, Abstract. During operation of
`
`the Rydbeck device, “[w]hen an incoming call is received, the
`
`microprocessor 20 automatically mutes or stops the playback of audio from
`
`the digital entertainment module 50 until the call is terminated.” Id. at 4:12–
`
`15.
`
`
`
`
`9
`
`Samsung Ex. 1324 p. 9
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`e. Galensky
`
`
`
`Galensky is directed to “[a] wireless device, system and method for
`
`receiving and playing multimedia files streamed from a multimedia server
`
`over a wireless telecommunications network.” Ex. 1009, Abstract.
`
`Galensky discloses that “to conserve bandwidth within the wireless
`
`network,” it is preferable to transmit data “at the highest rate possible” to
`
`create a 5–10 second buffer and, once the desired buffer is created, to
`
`decrease the data transmission rate to the minimum rate necessary for
`
`adequate transmission of “streamed data.” Id. at 6:1–18.
`
`
`
`
`
`2. Claims 1–3, 5–7, 9, and 10
`
`Claims 1–3, 5–7, 9, and 10 each require, inter alia, a “wireless
`
`telephone device” or “portable electronic device” having a physical interface
`
`with first and second conductive paths; the first path operable to
`
`communicate data and the second path operable to receive power for the
`
`rechargeable power supply. See Ex. 1001, 19:29–30, 37–41, 20:52–57.
`
`Petitioner asserts that Ito in combination with Nokia discloses, or renders
`
`obvious, this limitation of the ’641 patent. Pet. 12, 15, 16, 18–33.
`
`
`
`Patent Owner asserts that Ito in combination with Nokia would not
`
`have rendered the required physical interface obvious because Ito does not
`
`disclose a physical interface operable to communicate data or power and
`
`Petitioner has presented no justification for incorporating the physical
`
`interface of Nokia in Ito’s device, which “by design . . . lacks any means for
`
`wired communications.” Prelim. Resp. 27–28.
`
`
`
`Petitioner concedes that Ito does not disclose the required physical
`
`interface, but asserts that this type of interface was “well-known” in the art
`
`prior to the effective filing date of the ’641 patent, as evidenced by Nokia
`
`
`
`
`10
`
`Samsung Ex. 1324 p. 10
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`and the commercially available USB interface. Pet. 16, 23. Petitioner
`
`further asserts that, because both Ito and Nokia disclose “wireless phones
`
`that can receive and transmit audio files,” one of ordinary skill in the art
`
`“would have been motivated to implement Nokia’s teachings of
`
`advantageous phone features,” including “a physical interface” that would
`
`permit the Ito phone to “communicate data via a physical interface.” Pet.
`
`16, 23 (citing Ex. 1023 ¶¶ 44, 49). Testifying in support of Petitioner, Dr.
`
`Quackenbush contends that:
`
`[t]he use of an interface with portable devices for providing
`both recharging and data communication, such as that disclosed
`in Nokia, was well known in the art and advantageously
`provided a convenient way to both recharge the device and send
`or receive files or other data to or from the device.
`
`Ex. 1023 ¶ 49 (emphasis added).
`
`
`
`Petitioner directs us to no disclosure in Ito of communicating
`
`information to or from the cellular phone over a wired connection. See Ex.
`
`1003, 22:1–10 (communicating with the radio receiver using FM
`
`broadcasting band), 14–16 (receiving music data “via the PHS wireless
`
`circuit”), 60–67 (receiving information via infrared ray from the remote
`
`controller). Given the wireless nature of Ito, Petitioner has not explained
`
`sufficiently why communicating information over Nokia’s physical interface
`
`would have been “advantageous” or “convenient” in Ito’s phone. See
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328
`
`(Fed. Cir. 2012) (rejecting generic and conclusory testimony that “fails to
`
`explain why a person of ordinary skill in the art would have combined
`
`elements from specific references in the way the claimed invention does”).
`
`We are not persuaded, therefore, that Petitioner has presented sufficient
`
`articulated reasoning with rational underpinning to support combining
`
`
`
`
`11
`
`Samsung Ex. 1324 p. 11
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Nokia’s physical interface with the specific wireless telephone device of Ito.
`
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`
`
`
`
`Based on the foregoing, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that claims 1–3, 5–7, 9, and 10 of the
`
`’641 patent would have been obvious under 35 U.S.C. § 103(a) over the
`
`various asserted combinations of Ito, Haartsen, Nokia, Rydbeck, and
`
`Galensky.1
`
`
`
`
`
`3. Claims 8 and 11–14
`
`Petitioner asserts that claims 8, 11, 13, and 14 would have been
`
`obvious over Ito, Haartsen, Nokia, and Rydbeck, and claim 12 would have
`
`been obvious over Ito, Haartsen, Nokia, Rydbeck, and Galensky. In support
`
`of these assertions, Petitioner provides detailed claim charts and the
`
`supporting declaration testimony of Dr. Quackenbush. Pet. 30–31; Ex. 1023
`
`¶¶ 106–121, 130–140.
`
`
`
`Claim 8 requires, in relevant part, streaming audio signals to a
`
`recipient device “in response to a selection of a selectable menu item
`
`presented on a recipient device display.” Ex. 1001, 20:35–40. Patent Owner
`
`asserts that claim 8 would not have been obvious over Petitioner’s
`
`combination of references because “Ito communicates an audio signal to one
`
`device in response to a command received from another, separate device.”
`
`Prelim. Resp. 31. Specifically, Patent Owner contends that the selectable
`
`menu displayed in Ito is “controlled via a remote controller.” Id. at 32
`
`1 In our decisions instituting inter partes reviews in IPR2014-00209 and
`IPR2014-00212, we determined that Petitioner had demonstrated a
`reasonable likelihood that the same type of physical interface would have
`been obvious over the prior art. Ex. 1015, 10–11; Ex. 1016, 11–12,
`respectively. These decisions were based on different prior art references,
`arguments, and declaration testimony.
`
`
`
`
`12
`
`Samsung Ex. 1324 p. 12
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`(citing Ex. 1003, 22:1–13, 22–42, Fig. 18). Patent Owner does not explain
`
`sufficiently, however, why the selection of a menu item in claim 8 must be
`
`made by any particular device, and we do not discern such a requirement in
`
`claim 8. See Ex. 1001, 20:37–40 (requiring the playing of a song “in
`
`response to a selection of a selectable menu item presented on a recipient
`
`device display”). We, therefore, are not persuaded by Patent Owner’s
`
`argument.
`
`
`
`
`
`Patent Owner further argues that Ito does not disclose “streaming” an
`
`audio signal, as that term is defined by Patent Owner. Prelim. Resp. 7, 41.
`
`(proposing a construction of “streaming audio signal” to require an “audio
`
`signal that is played as it arrives at a recipient device”). According to Patent
`
`Owner, the acoustic receiver of Ito either rebroadcasts a music signal via FM
`
`broadcasting band or plays the music data after it is “restored.” Prelim.
`
`Resp. 40–41 (citing Ex. 1003, Abstract, 3:65–67, 22:1–12). We are not
`
`persuaded by this argument. First, Patent Owner does not explain
`
`sufficiently why Ito’s method of broadcasting an audio signal over the FM
`
`band does not provide “a continuous stream” of audio data, as we have
`
`construed the term “streaming audio signal” to require. See Pet. 21; Ex.
`
`1023 ¶ 60. Second, it appears that the process of restoring music data in
`
`Ito’s system is not a matter of storing an entire file before playback is
`
`initiated, but part of the internal decoding process that permits music data to
`
`be output to the speakers as the data are received. See Ex. 1003, 10:52–61,
`
`10:56–61 (“The data processing circuit 43, by applying the predetermined
`
`decoding processing to this coded data S18, restores the receiving packet
`
`data S21 comprised of music data and outputs this to the received packet
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`processing unit . . . .”).
`
`
`
`
`13
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`Samsung Ex. 1324 p. 13
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`IPR2014-01181
`Patent 8,532,641 B2
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`
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`Patent Owner further argues that Petitioner has set forth insufficient
`
`rationale for using an asynchronous channel in a localized wireless network
`
`compliant with the Bluetooth standard. Prelim. Resp. 19–20. We are not
`
`persuaded by this argument as both Ito and Haartsen disclose using a
`
`localized wireless network to transmit audio information, Haartsen discloses
`
`that the Bluetooth standard provides for “low-cost, robust, efficient, high
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`capacity, ad hoc voice and data connectivity,” and the ’641 patent concedes
`
`that “conventional wireless communication” systems transmit information
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`“across a channel in an asynchronous manner to provide a continuous audio
`
`signal to the recipient.” Ex. 1001, 6:34–42; Ex. 1006, 1:12–19, 4:63–67; see
`
`also Ex. 1023 ¶ 63 (testifying that “transmitting data in an asynchronous
`
`manner was a simple, flexible, and cost-effective way to transmit data”).
`
`
`
`
`
`With respect to claim 12, Patent Owner further argues that Ito does
`
`not disclose a wireless telephone or portable device that switches between
`
`communications rates, and Galensky does not cure this deficiency because it
`
`does not disclose that the cellular phone causes the switching of
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`communication rates. Prelim. Resp. 42–43. We are not persuaded by this
`
`argument because claim 12 does not require that the portable device initiate
`
`or control the switching of communication rates. Ex. 1001, 21:6–12
`
`(requiring a “wide area wireless communication module operable to receive
`
`a collection of data representing a media at a hybrid of wireless
`
`communication rates . . .”).
`
`
`
`Patent Owner further asserts that Ito does not disclose a rechargeable
`
`battery or means for recharging such a battery, as set forth in claim 14.
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`Prelim. Resp. 29. Although Ito does not disclose a rechargeable battery or
`
`means for recharging this battery, at this stage of the proceeding, we credit
`
`
`
`
`14
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`Samsung Ex. 1324 p. 14
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`IPR2014-01181
`Patent 8,532,641 B2
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`Dr. Quackenbush’s testimony that rechargeable batteries for use in portable
`
`devices were well known in the art, as evidenced by Nokia, and one of
`
`ordinary skill in the art would have sought to incorporate the rechargeable
`
`battery of Nokia in Ito’s phone in order to eliminate the need to replace the
`
`batteries periodically in Ito’s portable device.2 Ex. 1023 ¶¶ 42–44, 140; Ex.
`
`1003, 7:35, 8:1–2, 32:37–38.
`
`
`
`Upon review of Petitioner’s and Patent Owner’s arguments, we are
`
`persuaded that Petitioner has presented sufficient evidence to demonstrate a
`
`reasonable likelihood that claims 8, 11, 13, and 14 would have been obvious
`
`over Ito, Haartsen, Nokia, and Rydbeck and claim 12 would have been
`
`obvious over Ito, Haartsen, Nokia, Rydbeck, and Galensky.
`
`
`
`
`
`
`
`4. Conclusion
`
`Based on the foregoing, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that claims 8, 11, 13, and 14 would
`
`have been obvious over Ito, Haartsen, Nokia, Rydbeck, and claim 12 would
`
`have been obvious over Ito, Haartsen, Nokia, Rydbeck, and Galensky. We
`
`are not persuaded, however, that Petitioner has presented sufficient evidence
`
`or argument to demonstrate a reasonable likelihood that claims 1–3, 5–7, 9,
`
`and 10 would have been obvious over the asserted combinations of Ito,
`
`Haartsen, Nokia, Galensky, and Rydbeck.
`
`
`2 Despite the use of the term “means” in claim 14, neither party identifies the
`corresponding structure for the “means for recharging the internal battery,”
`or argues why this term should not be construed as a means-plus-function
`limitation.
`
`
`
`
`15
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`Samsung Ex. 1324 p. 15
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`
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`C. Grounds Based on Lee
`
`
`
`Petitioner asserts that claims 1–3 and 5–14 would have been obvious
`
`over various combinations of Lee, Lau, Haartsen, Nokia, Rydbeck, and
`
`Galensky. See Pet. 36.
`
`
`
`
`
`
`
`1. Prior Art
`
`a. Lee
`
`Lee is directed to an internet radio (multimedia device) that can be
`
`configured remotely using a wireless communications device. Ex. 1010,
`
`Abstract. The system of Lee has a wireless IP address for Internet access, an
`
`Internet gateway network that provides programming, information, and
`
`Internet access to the multimedia device, and one or more remote
`
`programming devices. Id. at 5:55–62. The “remote programming devices”
`
`disclosed in Lee include computers, PDAs, and telephones that are
`
`configured to communicate information to the “remotely programmable
`
`multimedia/navigation device.” Id. at 6:35–41, Fig. 1. This information
`
`may be communicated using wideband transmission methods, such as
`
`cellular, FM, or satellite transmission, or through narrowband transmission
`
`methods, such as wireless LAN, IrDA, or Bluetooth. Id. at Fig. 1.
`
`
`
`
`
`b. Lau
`
`Lau discloses “an audio/visual server system that can be used to store
`
`and play audio/visual data,” such as music. Ex. 1012, 2:52–55. In Lau, the
`
`server communicates music to a head unit of a vehicle, which then may play
`
`that music through the vehicle speakers. Id. at 4:29–39.
`
`
`
`The head unit of Lau contains a number of buttons, which may be
`
`selected by the user. Id. at 11:31–41. When these buttons are pressed, a
`
`controller will communicate this information to the processor. Id. The
`
`
`
`
`16
`
`Samsung Ex. 1324 p. 16
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`
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`IPR2014-01181
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`controller then may acquire information from the processor regarding “the
`
`play list number, track number, and (optionally) the title of the track” and
`
`transmit this information to the head unit to update its display. Id. at 11:39–
`
`50.
`
`
`
`
`
`2. Claims 1–3, 5–7, 9, and 10
`
`Claims 1–3, 5–7, 9, and 10 each require a physical interface having
`
`first and second conductive paths for delivering power and communicating
`
`information. See Ex. 1001, 19:37–41, 20:52–57. Petitioner asserts that,
`
`because both Nokia and Lee disclose cellular phones that can receive and
`
`transmit audio files, one of ordinary skill in the art would have been
`
`motivated “to look to Nokia’s teachings of advantageous phone features,”
`
`including “a physical interface,” when implementing Ito’s phone. Pet. 39,
`
`46. Likewise, Dr. Quackenbush testifies that interfaces capable of providing
`
`both power and communications were known in the art and “advantageously
`
`provided a convenient way to both recharge the device and send or receive
`
`files or other data to or from the device.” Ex. 1023 ¶ 160.
`
`
`
`Patent Owner asserts that Petitioner proposed combination of Lee and
`
`Nokia fails because Petitioner does not explain why the physical interface of
`
`Nokia would have been advantageous or convenient in the device of Lee.
`
`Prelim. Resp. 26–28. We agree. Lee is directed to a method and apparatus
`
`for remotely configuring a wireless communication device using a remote
`
`programming device. Ex. 1010, Abstract, Fig. 1. Petitioner presents no
`
`credible evidence that the remote programming device of Lee communicates
`
`data over a wired connection, and neither Petitioner nor Dr. Quackenbush
`
`explains why one of ordinary skill in the art would have found a physical
`
`interface for communicating data over a wired connection advantageous or
`
`
`
`
`17
`
`Samsung Ex. 1324 p. 17
`
`
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`IPR2014-01181
`Patent 8,532,641 B2
`
`convenient in the specific apparatus and method of Lee, i.e., in the
`
`combination at issue. Accordingly, we are not persuaded that Petitioner has
`
`provided sufficient credible argument or evidence to demonstrate a
`
`reasonable likelihood that claims 1–3, 5–7, 9, and 10 would have been
`
`obvious over the various asserted combinations of Lee, Nokia, Lau,
`
`Haartsen, and Rydbeck.
`
`
`
`
`
`3. Claims 8 and 11–14
`
`Petitioner contends that in combination Lee, Lau, and Haartsen
`
`disclose the elements of claims 8, 11, 13, and 14, and the combination of
`
`Lee, Nokia, Lau, Haartsen, and Galensky, as well as Lee, Lau, Haartsen, and
`
`Galensky, disclose, or render obvious, the limitations of claim 12. Pet. 53–
`
`55, 57–59. Petitioner does not explain, however, why the grounds based on
`
`Lee are stronger, with respect to any of the challenged claims, than the
`
`grounds based on Ito. Accordingly, because our institution of an inter partes
`
`review on the Ito-based grounds covers claims 8 and 11–14, we exercise our
`
`discretion and decline to institute an inter partes review of the grounds
`
`based on Lee as to the same claims. See 35 U.S.C. § 314(a); 37 C.F.R.
`
`§ 42.108(a); see also 37 C.F.R. § 42.1(b) (proceedings before the Board are
`
`to be construed to “secure the just, speedy, and inexpensive resolution of
`
`every proceeding”).
`
`
`
`
`
`III. CONCLUSION
`
`For the reasons stated above, we institute an inter partes review as set
`
`forth in the Order. At this stage of the proceeding, we have not made a final
`
`determination with respect to the patentability of the challenged claims or
`
`any underlying factual or legal issues.
`
`
`
`
`18
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`Samsung Ex. 1324 p. 18
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`IPR2014-01181
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`
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`IV. ORDER
`
`
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review of
`
`the ’641 patent is hereby instituted on the following grounds:
`
`
`
`Claims 8, 11, 13, and 14 as obvious under 35 U.S.C. § 103 over Ito,
`
`Haartsen, Nokia, and Rydbeck; and
`
`
`
`Claim 12 as obvious under 35 U.S.C. § 103 over Ito, Haartsen, Nokia,
`
`Rydbeck, and Galensky;
`
`
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified above and no other grounds are authorized; and
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’641 patent is hereby instituted commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of trial.
`
`
`
`
`19
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`Samsung Ex. 1324 p. 19
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`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`PETITIONERS:
`
`J. Steven Baughman
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`
`PATENT OWNER:
`
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`rmschultz@rkmc.com
`
`Thomas R. DeSimone
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`trdesimone@
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