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 IPR2014-01184
`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. 1423 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 IPR2014-01184
`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. 1423 p. 1
`
`
`
`IPR2014-01184
`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, 11,
`
`13, and 14 of the ’641 patent. 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
`
`IPR2014-01181 and IPR2014-01182. 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. 1201,
`
`
`
`
`2
`
`Samsung Ex. 1423 p. 2
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`1:21–23, 2:15–21. In the disclosed embodiments, a radio listener may create
`
`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 also 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 may also communicate with the audio system using a physical
`
`interface with at least two conductive paths, the first path for communicating
`
`information and the second path for providing power to the electronic
`
`device. Id. at 18:40–53.
`
`
`
`
`3
`
`Samsung Ex. 1423 p. 3
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`
`C. Illustrative Claims
`
`
`
`Claims 1–3 and 5–14 are it issue in this proceeding. Claims 1 and 8
`
`are independent. Claims 2, 3, and 5–7 depend, directly or indirectly, from
`
`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.
`
`Ex. 1201, 19:29–57.
`
`
`
`
`
`4
`
`Samsung Ex. 1423 p. 4
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`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;
`
` 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.
`
`Id. at 20:28–45.
`
`D. The Relied Upon Prior Art
`
`
`
`
`
`
`
`Petitioner relies upon the flowing prior art references, as well as the
`
`Declaration of Dr. Schuyler Quackenbush, Ph.D., dated July 23, 2014 (Ex.
`
`1223):
`
`Reference
`
`Publication
`
`Date
`
`Exhibit
`
`Ohmura
`
`US 6,937,732 B2
`
`Aug. 30, 2005
`
`1203
`
`Ahn
`
`US 2004/0214525 A1 Oct. 28, 2004
`
`Galensky
`
`US 6,845,398 B1
`
`Jan 18, 2005
`
`1205
`
`1209
`
`
`Owner’s Manual, Nokia 9000i Communicator, 1995–1997 Nokia Mobile
`Phones Ltd. (Ex. 1208B).
`
`
`
`
`5
`
`Samsung Ex. 1423 p. 5
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`
`E. The Asserted Grounds of Unpatentability
`
`Reference(s)
`
`Basis
`
`Claims challenged
`
`Ohmura and Ahn
`
`§ 103 1, 2, 5, 8, 9, 11, 13, and 14
`
`Ohmura, Ahn, and Nokia
`
`§ 103 1–3, 5, 9, 10, 13, and 14
`
`Ohmura, Ahn, and Galensky
`
`§ 103 7 and 12
`
`Ohmura, Ahn, Nokia, and Galensky
`
`§ 103 6, 7, and 12
`
`
`
`
`
`
`
`
`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
`
`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 expressly defined 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. 26; Ex. 1222, 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
`
`
`
`
`6
`
`Samsung Ex. 1423 p. 6
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`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 audio broadcasts. Id. (citing Ex.
`
`1201, 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
`
`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. Priority
`
`The ’641 patent issued from U.S. Patent Application No. 13/673,391
`
`(“the ’391 application”), which has a filing date of November 9, 2012. Ex.
`
`1201. Through a chain of continuing applications, the ’391 application
`
`claims the benefit of priority to U.S. Patent Application No. 09/537,812
`
`(“the ’812 application”), which has a filing date of March 28, 2000. Patent
`
`Owner asserts that Ohmura and Ahn are not prior art with respect to the ’641
`
`
`
`
`7
`
`Samsung Ex. 1423 p. 7
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`patent because “they were filed and published well after the priority date for
`
`the ’641 patent of March 28, 2000.” Prelim. Resp. 22; Ex. 1203 (indicating
`
`a filing date for Ohmura of April 4, 2001); Ex. 1205 (indicating a filing date
`
`for Ahn of October 26, 2001).
`
`
`
`“[A] patent’s claims are not entitled to an earlier priority date merely
`
`because the patentee claims priority.” In re NTP, Inc., 654 F.3d 1268, 1276
`
`(Fed. Cir. 2011). A patentee must, instead, “demonstrate that the claims
`
`meet the requirements of 35 U.S.C. § 120.” Id. As part of this analysis,
`
`patentee must show that “each application in the chain leading back to the
`
`earlier application” complies “with the written description requirement of 35
`
`U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed.
`
`Cir. 1997).
`
`
`
`In asserting benefit to the priority date of the ’812 application, Patent
`
`Owner provides no analysis demonstrating that claims 8, 11, 13, and 14, 1 as
`
`a whole, are adequately supported in the ’812 application, or that adequate
`
`disclosure may be found in each application in the priority chain leading to
`
`the ’812 application. See Prelim. Resp. 12. Accordingly, at this stage of the
`
`proceeding, we are not persuaded that Patent Owner has presented sufficient
`
`evidence or argument to demonstrate that claims 8, 11, 13, and 14 of the
`
`’641 patent, as a whole, are entitled to the March 28, 2000 priority date of
`
`the ’812 application. See NTP, 654 F.3d at 1276.
`
`
`1 As noted below, we determine that Petitioner has presented insufficient
`evidence to demonstrate that claims 1–3, 5–7, 9, 10, and 12 would have been
`obvious over the various asserted combinations of Ohmura, Ahn, Nokia, and
`Galensky. Therefore, we focus our priority analysis on claims 8, 11, 13, and
`14.
`
`
`
`
`8
`
`Samsung Ex. 1423 p. 8
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`
`With respect to the specific limitations of claim 8, Petitioner asserts a
`
`lack of written description support for the following limitation:
`
`. a wireless
`.
`.
`A portable electronic device having
`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 . . . .
`
`Ex. 1201, 20:34–40 (emphasis added). In response, Patent Owner argues
`
`that the ’641 patent provides “more than sufficient support” for this claim
`
`element. Prelim. Resp. 19. Specifically, Patent Owner argues that the ’641
`
`patent discloses that an “electronic device”—“correspond[ing] to the
`
`claimed . . . portable electronic device”—may display a radio dial, or “menu
`
`of selectable icons,” on an automobile display, i.e., a “recipient device.” Id.
`
`at 19–21. In support, Patent Owner relies on the following passage in the
`
`’641 patent:
`
`Radio dial 412 may also be displayed as a separate user
`
`interface and in some embodiments, does not require a
`"browsing" environment to view radio dial 412. For example,
`an electronic device, such as a PDA, having a display may
`graphically present radio dial 412 to a user. One example may
`be using electronic device in association with an automobile
`audio system. Electronic device may display radio dial 412 and
`may allow a user to navigate, modify, select, adjust volume,
`access day timer, access phone lists, etc. or perform other
`functions while the electronic device is used in association with
`an automobile sound system. Therefore, radio dial 412 may be
`operable as an application for use with several different types of
`electronic devices (i.e., computer systems, portable computing
`
`
`
`
`
`
`
`
`
`
`9
`
`Samsung Ex. 1423 p. 9
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`devices, cellular phones, etc.) operable to display radio dial 412
`and in [s]ome embodiments may be wirelessly communicated
`to an electronic device.
`
`Ex. 1201, 12:25–40 (emphasis added); Prelim. Resp. 20.
`
`
`
`According to Patent Owner, in this passage “[t]he portable device
`
`would be responding to the selection of a feature or option in the Radio Dial
`
`being displayed to the user on the recipient device,” and this passage
`
`therefore “clearly demonstrates” possession of the claim element “in
`
`response to a selection of a selectable menu item presented on a recipient
`
`device display,” as recited in claim 8. Prelim. Resp. 21. We are not
`
`persuaded, however, that the identified disclosures support Patent Owner’s
`
`argument. In particular, in the identified passage it is the “electronic
`
`device,” not the automobile audio system or “recipient device,” which
`
`displays the radio dial to the user. See Ex. 1201, 12:31–35.
`
`
`
`Based on the foregoing, at this stage of the proceeding we are not
`
`persuaded that Patent Owner has demonstrated that claims 8, 11, 13, and 14
`
`of the ’641 patent are entitled to a priority date earlier than the November 9,
`
`2012 filing date of Application No. 13/673,391.2 Thus, Ohmura and Ahn
`
`are available as prior art under at least 35 U.S.C. § 102(e).
`
`
`2 In the Patent Owner Response, Patent Owner will have an opportunity to
`demonstrate that claims 8, 11, 13, and 14 meet the requirements of 35 U.S.C.
`§ 120, including written description support under 35 U.S.C. § 112, ¶ 1. See
`NTP, 654 F.3d at 1276. In so doing, Patent Owner should address each
`claim as a whole, rather than as a collection of individual claim limitations.
`See Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336,
`1346 (Fed. Cir. 2013) (looking to “the claims as a whole rather than as the
`sum of their individual limitations,” when determining compliance with 35
`U.S.C. § 112 ¶ 1).
`
`
`
`
`10
`
`Samsung Ex. 1423 p. 10
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`
`C. Claims 1–3 and 5–14
`
`
`
`Petitioner asserts that claims 1–3 and 5–14 would have been obvious
`
`under 35 U.S.C. § 103(a) over various combinations of Ohmura, Ahn,
`
`Nokia, and Galensky. Pet. 33–55.
`
`
`
`
`
`
`
`
`
`1. Prior Art
`
`a. Ohmura
`
`Ohmura is directed to a system for providing musical content in a
`
`vehicle. Ex. 1203, 1:11–13. Generally, the Ohmura system is composed of
`
`an audio apparatus mounted in a vehicle that communicates with one or
`
`more portable audio apparatuses. Id. at 3:64–4:1. The portable audio
`
`apparatuses have stored music that may be played through the vehicles
`
`speakers, via the audio apparatus. Id. at 3:49–51, 8:19–27. Using a
`
`displayed selectable menu, a user may select music from any of the available
`
`portable devices, which is then communicated wirelessly using a short-
`
`distance data communication system, such as Bluetooth, to the audio
`
`apparatus to be played in real-time through the vehicles speakers. Id. at
`
`9:39–42, 13:21–27, 20:59–67, Fig. 6.
`
`
`
`In the Ohmura system, the audio apparatus may receive and transmit
`
`Internet data using a cellular telephone mounted in the vehicle. Id. at 7:39–
`
`58. For example, in one embodiment a user may select music data from an
`
`“Internet MENU” screen to facilitate the delivery of “new music in the
`
`vehicle.” Id. at 17:23–48.
`
`
`
`
`
`b. Ahn
`
`Ahn relates to online transmission of music data using the Bluetooth
`
`standard. Ex. 1205, Abstract. In the Ahn system, music data may be
`
`
`
`
`11
`
`Samsung Ex. 1423 p. 11
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`streamed from a cellular phone to the car’s audio equipment using “an
`
`asynchronous call path.” Id. ¶¶ 26, 34, 36.
`
`
`
`
`
`2. Claims 1–3, 5–7, 9, 10, and 12
`
`Claims 1–3, 5–7, 9, 10, and 12 each require, inter alia, “a wireless
`
`telephone device.” Ex. 1201, 19:30, 20:47, 21:2. Petitioner concedes that
`
`Ohmura does not disclose a wireless telephone device that is operable to
`
`perform the steps of claims 1–3, 5–7, 9, 10, and 12, but asserts that, because
`
`both “Ahn and Ohmura disclose portable devices that can receive music data
`
`via a wireless communication module,” one of ordinary skill in the art would
`
`have sought to “advantageously provide” Ohmura’s portable device with the
`
`ability to “directly connect to the Internet using the wireless telephone” in
`
`order to “receive music data.” Pet. 30; see also Ex. 1223 ¶ 40 (testifying
`
`that “it would have been recognized as beneficial for Ohmura’s portable
`
`device to be able to directly connect to the Internet using the wireless
`
`telephone capability in order to receive music data”)
`
`
`
`Patent Owner asserts that Petitioner has not explained adequately why
`
`one of ordinary skill in the art would have sought to add telephone capability
`
`to Ohmura’s portable devices, especially “[g]iven that Ohmura makes no
`
`mention of a cellular phone or use of a cellular phone in its system.” Prelim.
`
`Resp. 27–28 (asserting that Dr. Quackenbush’s testimony is conclusory and
`
`unsupported). Contrary to Patent Owner’s assertion, Ohmura does in fact
`
`disclose the use of a cellular telephone. See Ex. 1203, 7:39–53.
`
`Nevertheless, this cellular telephone exists as a separate device from the
`
`portable apparatuses of Ohmura, and Ohmura discloses that one of the
`
`problems the disclosed system resolves is the ability to play music using the
`
`portable audio apparatus “without the need to download contents data such
`
`
`
`
`12
`
`Samsung Ex. 1423 p. 12
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`as music and conversation from the Internet.” Id. at 3:56–63, 7:48–49,
`
`8:56–63, 17:24–48, Fig. 1 (disclosing portable audio apparatuses 200a and
`
`200b, as well as cellular telephone 27); see also id. at 2:38–48 (noting that
`
`systems using a “wireless telephone line” to receive music data from
`
`external sources may be “unable to reliably receive the music data of the
`
`relevant piece of music”).
`
`
`
`Given that the Ohmura system already includes a separate cellular
`
`telephone, we agree with Patent Owner that Petitioner has not explained
`
`sufficiently why one of ordinary skill in the art would have found it
`
`“beneficial” or “advantageous” to modify Ohmura’s portable audio
`
`apparatus to include Internet connectivity over a cellular connection. See
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (noting that it is
`
`important to provide some articulated reasoning with rational underpinning
`
`to support the proposed combination of references); ActiveVideo Networks,
`
`Inc. v. Verizon Commc’ns Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (noting
`
`that generic testimony that bears little relation to the specific combination of
`
`prior art elements at issue is not helpful).
`
`
`
`Based on the foregoing, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that claims 1–3, 5–7, 9, 10, and 12
`
`would have been obvious under 35 U.S.C. § 103(a) over the various asserted
`
`combinations of Ohmura, Ahn, Nokia, and Galensky.
`
`
`
`
`
`3. Claims 8, 11, 13, and 14
`
`Claims 8, 11, 13, and 14, each require, inter alia, a “portable
`
`electronic device” that is operable to communicate a streaming audio signal
`
`over an asynchronous channel. See, e.g., Ex. 1201, 20:30–45. Petitioner
`
`contends that claims 8 and 11 would have been obvious under 35 U.S.C.
`
`
`
`
`13
`
`Samsung Ex. 1423 p. 13
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`§ 103(a) over Ohmura and Ahn and claims 13 and 14 would have been
`
`obvious over Ohmura, Ahn, and Nokia. Pet. 49–59. Petitioner provides
`
`detailed claim charts and the testimony of Dr. Quackenbush in support of its
`
`obviousness contentions. Id.; Ex. 1223 ¶¶ 106–113, 122–127, 131–140.
`
`
`
`Patent Owner contends that Petitioner has not demonstrated that
`
`claims 8, 11, 13, and 14 would have been obvious over Ohmura and Ahn
`
`because Petitioner never asserts that streaming an audio signal was known in
`
`the art or that it would have been “routine” to use an asynchronous channel
`
`to do so. Prelim. Resp. 26–27. As noted by Petitioner, however, Ohmura
`
`and Ahn both utilize the Bluetooth standard to stream an audio signal. Pet.
`
`38–39; Ex. 1203, 9:39–42, 13:20–26, 20:59–63, 25:52, Fig. 4 (disclosing
`
`Bluetooth communication and noting that audio is output to the speakers in
`
`“real-time”); Ex. 1205 ¶¶ 36, 37, 58 (noting that “streaming music data”
`
`may be reproduced before all the corresponding data are received). In
`
`addition, Ahn discloses that Bluetooth streaming is conducted over an
`
`asynchronous data channel and the ’641 patent itself concedes that
`
`asynchronous wireless communication was “conventional” in the art. Ex.
`
`1205 ¶¶ 34, 36 (streaming an audio signal over an asynchronous channel
`
`using Bluetooth); Ex. 1201, 6:31–39 (noting that wireless communication
`
`using an asynchronous channel was “conventional”). Given these
`
`disclosures, we are not persuaded by Patent Owner’s argument.
`
`
`
`Based on the foregoing, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that claims 8 and 11 would have been
`
`obvious under 35 U.S.C. § 103(a) over Ohmura and Ahn, and that claims 13
`
`and 14 would have been obvious over Ohmura, Ahn, and Nokia.
`
`
`
`
`14
`
`Samsung Ex. 1423 p. 14
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`
`
`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.
`
`
`
`
`
`
`
`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 and 11 as obvious under 35 U.S.C. § 103(a) over Ohmura
`
`and Ahn; and
`
`
`
`Claims 13 and 14 as obvious under 35 U.S.C. § 103(a) over Ohmura,
`
`Ahn, and Nokia;
`
`
`
`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.
`
`
`
`
`15
`
`Samsung Ex. 1423 p. 15
`
`
`
`IPR2014-01184
`Patent 8,532,641 B2
`
`PETITIONERS:
`
`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`Steven.baughman@ropesgray.com
`Gabrielee.higgins@ropesgray.com
`
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Thomas R. DeSimone
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`rmschultz@rkmc.com
`trdesimone@rkmc.com
`
`
`
`
`
`
`
`
`
`
`
`16
`
`Samsung Ex. 1423 p. 16
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
