Inter Partes Review
`United States Patent No. 8,532,641
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-659
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
`§
`Samsung Electronics America, Inc.
`Priority Date: March 28, 2000
`§
`
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`
`
`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
`
`
`
`
`For: SYSTEM AND METHOD FOR MANAGING MEDIA
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,532,641
`
`
`
`
`
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`TABLE OF CONTENTS
`
`V. 
`
`LIST OF EXHIBITS ................................................................................................................ v
`I. 
`INTRODUCTION ....................................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ......................................... 6 
`III.  PETITIONERS HAVE STANDING ...................................................................... 7 
`IV. 
`SUMMARY OF THE ‘641 PATENT ....................................................................... 9 
`A.  Overview of the ‘641 Patent ............................................................................ 9 
`B. 
`‘641 Patent Prosecution History .................................................................... 11 
`THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST
`ONE CLAIM OF THE ‘641 PATENT .................................................................. 12 
`A. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................. 12 
`B. 
`Level of Ordinary Skill in the Art & State of the Art ................................. 14 
`C. 
`Ground 1: Obvious over Ito in view of Haartsen, Ushiroda, &
`Bork (Claims 1, 2, 5, 9); Ground 2: Obvious over Ito in view of
`Haartsen, Nokia, Ushiroda, & Bork (Claims 1-3, 5, 9, 10); Ground
`3: Obvious over Ito in view of Haartsen, Rydbeck, Ushiroda, &
`Bork (Claims 1, 2, 5, 9); Ground 4: Obvious over Ito in view of
`Haartsen, Nokia, Rydbeck, Ushiroda, & Bork (Claims 1-3, 5, 9,
`10); Ground 5: Obvious over Ito in view of Haartsen, Galensky,
`Ushiroda, & Bork (Claim 7); Ground 6: Obvious over Ito in view
`of Haartsen, Nokia, Galensky, Ushiroda, & Bork (Claims 6, 7);
`Ground 7: Obvious over Ito in view of Haartsen, Rydbeck,
`Galensky, Ushiroda, & Bork (Claim 7); Ground 8: Obvious over
`Ito in view of Haartsen, Nokia Rydbeck, Galensky, Ushiroda, &
`Bork (Claims 6, 7) ............................................................................................ 14 
`1. 
`Overview of U.S. Pat. No. 6,990,334 (“Ito”) ................................... 17 
`2. 
`Overview of Nokia 9000/9000i Owner’s Manual (“Nokia”) ....... 18 
`3. 
`Overview of U.S. Patent No. 6,212,403 (“Ushiroda”) ................... 18 
`4. 
`Overview of U.S. Patent No. 6,633,932 (“Bork”) .......................... 19 
`5. 
`Overview of U.S. Pat. No. 6,973,067 (“Haartsen”) ........................ 20 
`6. 
`Overview of U.S. Pat. No. 7,123,936 (“Rydbeck”) ......................... 21 
`7. 
`Overview of U.S. Pat. No. 6,845,398 (“Galensky”)........................ 21 
`
`
`
`i
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`8.  Motivation to Combine Ito with Haartsen, Nokia, Ushiroda,
`Bork, Rydbeck, & Galensky ............................................................... 21 
`Claims 1-3, 5-7, 9 & 10 Are Obvious Over Grounds 1-8 ............. 29 
`9. 
`VI.  CONCLUSION........................................................................................................... 47 
`
`
`ii
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`Dystar Textilfarben GMBH v. C.H. Patrick Co.,
`464 F.3d 1356, 1368 (Fed. Cir. 2006) ............................................................................. 27
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................................ 13
`
`Kaiser Aluminum v. Constellium Rolled Prods. Ravenswood, LLC,
`Case IPR2014-01002, Paper 11 (Dec. 29, 2014) .......................................................... 16
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................... passim
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`Case CBM2013-00009, Paper 10 (Mar. 28, 2013) ........................................................ 16
`
`Nestle USA, Inc. v. Steuben Foods, Inc.
`Case IPR2014-01235, Paper 12 (Dec. 22, 2014) .......................................................... 16
`
`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 28 (Feb. 12, 2015) .......................................................... 17
`
`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 31 (Feb. 12, 2015) ..................................................... 8, 17
`
`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 32 (Feb. 12, 2015) .......................................................... 17
`
`
`STATUTES
`
`35 U.S.C.
`
`§ 102 ............................................................................................................................. passim
`
`§ 103 ............................................................................................................................. passim
`
`§ 112 ....................................................................................................................................... 1
`
`§§ 311-319 ............................................................................................................................. 1
`
`iii
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`§ 314 ..................................................................................................................................... 12
`
`§ 315 ................................................................................................................................ 8, 17
`
`
`OTHER AUTHORITIES
`
`37 C.F.R
`
`§ 1.33 .................................................................................................................................... 47
`
`§ 42 ......................................................................................................................................... 1
`
`§ 42.8 ...................................................................................................................................... 6
`
`§ 42.15 ................................................................................................................................. 47
`
`§ 42.22 ................................................................................................................................... 8
`
`§ 42.100 ........................................................................................................................ 13, 47
`
`§ 42.104 ...................................................................................................................... 7, 8, 12
`
`§ 42.105 ............................................................................................................................... 47
`
`§ 42.122 ................................................................................................................................. 7
`
`§ 325 ................................................................................................................................ 3, 16
`
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`§ 2111 .................................................................................................................................. 13
`
`iv
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`LIST OF EXHIBITS
`
`Ex. 1405B
`
`Description
`Exhibit
`U.S. Patent No. 8,532,641 (“the ‘641 patent”)
`Ex. 1401
`U.S. Patent No. 8,532,641 File History
`Ex. 1402
`U.S. Patent No. 6,990,334 (“Ito”)
`Ex. 1403
`Declaration of Harri Valio
`Ex. 1404
`Declaration of Jari Toivanen
`Ex. 1405
`Ex. 1405A Exhibit A to the Declaration of Jari Toivanen - User’s Manual for
`the Nokia 9000 Communicator, dated 1995, published by Nokia
`Mobile Phones.
`Exhibit B to the Declaration of Jari Toivanen - Owner’s Manual for
`the Nokia 9000i Communicator (“Nokia”),
`dated 1995-1997, published by Nokia Mobile Phones Ltd.
`U.S. Patent No. 6,973,067 (“Haartsen”)
`Ex. 1406
`Declaration of Todd Michael Fenton
`Ex. 1407
`Ex. 1407A Exhibit A to the Declaration of Todd Michael Fenton - “Bluetooth
`– the universal radio interface for ad hoc wireless connectivity”, J.
`Haartsen, Ericsson Review, The Telecommunications Technology
`Journal, No. 3, 1998 (“Haartsen Article”)
`U.S. Patent No. 7,123,936 (“Rydbeck”)
`Ex. 1408
`U.S. Patent No. 6,845,398 (“Galensky”)
`Ex. 1409
`U.S. Patent No. 6,633,932 (“Bork”)
`Ex. 1410
`U.S. Patent No. 6,212,403 (“Ushiroda”)
`Ex. 1411
`U.S. Patent No. 7,187,947 File History
`Ex. 1412
`Declaration of Paul E. Berg
`Ex. 1413
`Ex. 1413A Exhibit A to the Declaration of Paul E. Berg - Universal Serial Bus
`Specification, Revision 1.1, September 23, 1998, Compaq Computer
`Corporation, Intel Corporation, Microsoft Corporation, and NEC
`Corporation.
`U.S. Patent No. 7,953,390 File History
`Ex. 1414
`Ex. 1415 May 20, 2014 Decision on Institution of Inter Partes Review in
`IPR2014-00209 (Inter Partes Review of U.S. Patent No. 7,953,390)
`Ex. 1416 May 20, 2014 Decision on Institution of Inter Partes Review in
`
`v
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`Description
`IPR2014-00212 (Inter Partes Review of U.S. Patent No. 7,953,390)
`June 12, 2014 Action Closing Prosecution in Reexamination Control
`Nos. 95/001,262 and 90/011,254 (Inter Partes and Ex Parte
`Reexaminations of U.S. Patent No. 7,187,947)
`June 30, 2014 Patent Trial and Appeal Board Decision, Appeal No.
`2014-002024 in Reexamination Control No. 95/001,281 (Inter Partes
`Reexamination of U.S. Patent No. 7,634,228)
`Specification of the Bluetooth System v1.0 B, Vols. 1 & 2, 1999,
`Telefonaktiebolaget LM Ericsson, International Business Machines
`Corporation, Intel Corporation, Nokia Corporation, Toshiba
`Corporation.
`IBM Dictionary of Computing, Edited by George McDaniel,
`McGraw-Hill, Inc., 1994
`January 30, 2015 Decision on Institution of Inter Partes Review in
`IPR2014-01181 (Inter Partes Review of U.S. Patent No. 8,532,641)
`January 30, 2015 Decision on Institution of Inter Partes Review in
`IPR2014-01182 (Inter Partes Review of U.S. Patent No. 8,532,641)
`January 30, 2015 Decision on Institution of Inter Partes Review in
`IPR2014-01184 (Inter Partes Review of U.S. Patent No. 8,532,641)
`Declaration of Dr. Schuyler Quackenbush
`Declaration of Hayan Yoon in Support of Petition for Inter Partes
`Review of United States Patent No. 8,532,641
`
`Exhibit
`
`Ex. 1417
`
`Ex. 1418
`
`Ex. 1419
`
`Ex. 1420
`
`Ex. 1421
`
`Ex. 1422
`
`Ex. 1423
`
`Ex. 1424
`Ex. 1425
`
`
`
`vi
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, 1 Petitioners respectfully
`
`request inter partes review (“IPR”) of claims 1-3, 5-7, 9, and 10 (“Challenged Claims”)
`
`of U.S. Pat. No. 8,532,641 (“the ‘641 patent”) currently assigned to Affinity Labs of
`
`Texas, LLC (“Affinity”).
`
`The ‘641 patent is one of 14 patents that cite back to U.S. Pat. App. No.
`
`09/537,812 (“the ‘812 application”) filed on March 28, 2000.2 These patents all share
`
`a common specification and generally relate to the delivery of Internet media content,
`
`such as “songs, on-line radio stations, on-line broadcasts, [or] streaming audio,” to a
`
`portable device. The portable device may be used to play the media content and may
`
`also be connected with another electronic device, such as a portable radio or vehicle
`
`audio system, so that the audio information may be communicated to the other
`
`
`1 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
`
`otherwise. All emphasis is added by Petitioners unless otherwise noted.
`
`2 Petitioners submit in another IPR concurrently filed that Affinity is not entitled to
`
`the claimed priority date of March 28, 2000. For purposes of this Petition, however,
`
`Petitioners submit that the Challenged Claims are invalid over prior art that pre-dates
`
`March 28, 2000. Petitioners reserve the right to raise in an appropriate forum
`
`invalidity based on § 112, as well as the right to argue that the Challenged Claims are
`
`not entitled to the March 28, 2000 priority date based on other grounds.
`
`
`
`1
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`electronic device.
`
`Petitioners previously filed a petition (IPR2014-01181) seeking inter partes
`
`review and judgment against claims 1-3 and 5-14 of the ‘641 patent based on
`
`combinations of Ito, Nokia, Haartsen, Rydbeck, and/or Galensky. On January 30,
`
`2015, the Board granted the petition with respect to claims 8 and 11-14, finding that
`
`there was a reasonable likelihood that claims 8, 11, 13, and 14 are obvious over Ito in
`
`view of Haartsen, Nokia, and Rydbeck, and that claim 12 is obvious over Ito in view
`
`of Haartsen, Nokia, Rydbeck, and Galensky. Ex. 1421 at 15. The Board did not
`
`institute review as to ‘641 patent claims 1-3, 5-7, 9, and 10, however, concluding that
`
`the petition in IPR2014-01181 did not sufficiently identify support for obviousness in
`
`the combinations of Ito, Haartsen, Nokia Galensky and/or Rydbeck. Id. at 12.
`
`Specifically, the Board stated that, “[g]iven 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. . . . We are not
`
`persuaded, therefore, that Petitioner has presented sufficient articulated reasoning
`
`with rational underpinning to support combining Nokia’s physical interface with the
`
`specific wireless telephone device of Ito.” Id. at 11-12.
`
`While respectfully disagreeing with the Board’s decision not to institute a
`
`review of claims 1-3, 5-7, 9, and 10 in IPR2014-01181, Petitioners, rather than
`
`requesting reconsideration, now file this separate Petition requesting inter partes review
`
`of claims 1-3, 5-7, 9, and 10 as obvious based on the same primary prior art reference,
`
`2
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`Ito, in view of Nokia, Haartsen, Rydbeck, and/or Galensky, and further in view of
`
`Ushiroda and Bork. These grounds — including new art (Ushiroda) not known to
`
`Petitioners before the filing of their original petition and located, instead, after the
`
`Board’s institution decision in IPR2014-01181 — raise new questions and address the
`
`concerns perceived by the Board in the earlier petition, with the benefit of the fuller
`
`explanation and consideration that a separate petition affords. Petitioners note that
`
`the Director, pursuant to Rule 325(c), may determine at the proper time that merger
`
`of the foregoing proceedings (in particular, IPR2014-01181) with this Petition may be
`
`appropriate, and as noted below, Petitioners are concurrently filing a motion for
`
`joinder of these proceedings.
`
`The Ushiroda and Bork references relied on in this Petition specifically address
`
`the Board’s concern with the Nokia reference that was expressed in IPR2014-1181.
`
`Ushiroda directly addresses the Board’s concern, as both Ito and Ushiroda describe
`
`Personal Handy Phone System (“PHS”) telephone devices, and Ushiroda discloses
`
`that its PHS telephone device has a physical interface for connecting to an external
`
`data terminal and for recharging the battery, in addition to wireless capability. Ex.
`
`1411 at Fig. 1; 1:7-9; 2:51-56; 2:61-65; 3:10-12; 4:40-51. Bork also discloses a portable
`
`device such as a wireless telephone with a single physical interface for both data
`
`communication and recharging the battery, and explicitly discloses why it would have
`
`been advantageous to have a single physical interface on a wireless telephone,
`
`including the benefits of saving cost and travel space by eliminating the need for an
`
`3
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`additional cable, eliminating the need for two dedicated power sources, and providing
`
`the ability to recharge a portable device from a second device when no other power
`
`source is available. See, e.g., Ex. 1410 at 2:54-63. Accordingly, Ushiroda and Bork
`
`explicitly address the Board’s concern that Petitioners had failed to demonstrate in
`
`IPR2014-01181 why a single physical interface for both data communication and
`
`recharging the battery would have been advantageous or convenient in the specific
`
`wireless telephone device of Ito.
`
`As set forth in this Petition, the supposed “invention” in each of the
`
`Challenged Claims was well-known and obvious prior to the claimed priority date of
`
`March 28, 2000. For example, the ‘641 patent claims require the following
`
`conventional features of a wireless phone that were well-known in the art long before
`
`March 28, 2000: a display, a housing, an enclosure, a rechargeable power supply, a
`
`physical interface for communicating data and receiving a recharging power, a
`
`memory, and the ability to alter an output of an audio signal when recognizing receipt
`
`of a phone call. Several of the references cited herein — including Ito, Nokia,
`
`Ushiroda, Bork, and Rydbeck — confirm that these conventional features of a
`
`wireless phone were well-known. In fact, these features were all found to be inherent
`
`in a wireless phone during prosecution of the ‘641 patent. Certain dependent claims
`
`also require such commonplace features as an email client, a voice-mail client, an
`
`Internet browser, a hands-free mode, and wirelessly receiving an upgrade for a
`
`software application, all of which were expressly disclosed, by, e.g., the cited Nokia
`
`4
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`
`reference.
`
`The Challenged Claims also require the wireless phone to send information
`
`about available media content from the phone to a recipient device to generate a
`
`graphical menu comprising a selectable menu item. This feature was well-known in
`
`the art and is disclosed by at least the Ito reference, cited in this Petition.
`
`Dependent claims 6 and 7 require that the wireless telephone is capable of
`
`receiving data at two communication rates based at least partially upon an amount of
`
`data located in the buffer memory. This too was well-known in the art, as
`
`demonstrated by the Galensky reference cited herein. See, e.g., Ex. 1409 at 5:66-6:15,
`
`Ex. 1415. Indeed, during prosecution of the ‘390 patent (the grandparent to the ‘641
`
`patent), the Examiner concluded that it would have been obvious to transmit data at
`
`two communication rates. Ex. 1414 at 500 (9/17/2010 OA at 6); see also Ex. 1416.
`
`Finally, claims 2, 3, 5, 9, and 10 require that the wireless communication
`
`module is compliant with a Bluetooth standard. The use of Bluetooth in the context
`
`of the ‘641 patent family has likewise been found by the PTO to have been obvious.
`
`See, e.g., Ex. 1417. In fact, companies including Ericsson, IBM, Intel, Nokia, and
`
`Toshiba had been working to develop Bluetooth technology long before March 2000.
`
`Ex. 1419.
`
`Each and every element of the Challenged Claims has been disclosed in the
`
`prior art and the Challenged Claims are nothing more than a routine and predictable
`
`combination of these well-known elements. Thus, Petitioners respectfully request that
`
`5
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`the Board find that each of the Challenged Claims is invalid under 35 U.S.C. § 103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Notices Under 37 C.F.R. § 42.8(b)(1), (b)(3), & (b)(4): The Petitioners and
`
`real parties-in-interest are Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc. (collectively “Samsung” or “Petitioners”). Lead counsel, backup counsel,
`
`and service information for Petitioners are designated in the signature block below.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) and Joinder Motion:
`
`Affinity is asserting ‘641 patent claims 1-3 and 5-14 against Petitioners in Affinity v.
`
`Samsung, 3:14-cv-3030 (NDCA) and in Affinity v. Blackberry, 5:14-cv-3031 (NDCA).
`
`There are three inter partes review proceedings involving the ‘641 patent that
`
`were previously filed by Petitioners. In IPR2014-01181, the Board instituted review of
`
`claims 8 and 11-14 based on the primary reference “Ito.” Ex. 1421. In IPR2014-01182,
`
`the Board instituted review of claims 1-3 and 5-14 based on the primary reference
`
`“Abecassis.” Ex. 1422. And, in IPR2014-01184, the Board instituted review of claims
`
`8, 11, 13, and 14 based on the primary reference “Ohmura.” Ex. 1423. Petitioners
`
`have also concurrently filed an additional IPR petition challenging claims 1-3, 5-7, 9,
`
`10, and 12 of the ‘641 patent based on the Hu reference.
`
`The following additional matters concern one or more of the ‘641 patent
`
`and/or patents that are related to the ‘641 patent: IPR2014-00209; IPR2014-00212;
`
`IPR2014-00407; IPR2014-00408; 90/011,254; 95/001,262; 90/010,333; 95/001,223;
`
`95/001,264; 90/011,982; 95/001,281; 95/001,263; 95/001,266; 95/001,782; Affinity v.
`
`6
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`Apple, 9:09-cv-47 (EDTX), 1:11-cv-349 (EDTX), & 4:09-cv-4436 (NDCA); Affinity v.
`
`Dice Elecs., 9:08-cv-163 (EDTX); Affinity v. BMW, 9:08-cv-164 (EDTX); Affinity v.
`
`Alpine, 9:08-cv-171 (EDTX); Affinity v. Nike, 2:10-cv-54 (EDTX) & 4:10-cv-5543
`
`(NDCA); Affinity v. Volkswagen, 1:11-cv-36 (EDTX); Affinity v. Clear Channel
`
`Broadcasting, 1:12-cv-205 (WDTX); Affinity v. Samsung, 4:13-mc-80209, 4:14-cv-2717,
`
`4:14-cv-02966 (NDCA); Affinity v. Ford, 1:12-cv-580 (EDTX) & 6:13-cv-363 (WDTX);
`
`Affinity v. General Motors, 1:12-cv-582 (EDTX), 6:13-cv-370 (WDTX); Affinity v. Toyota,
`
`6:13-cv-365 (WDTX); Affinity v. Volvo, 6:13-cv-366 (WDTX); Affinity v. Honda, 6:13-
`
`cv-367 (WDTX); Affinity v. Jaguar, 6:13-cv-368 (WDTX); Affinity v. Nissan, 6:13-cv-369
`
`(WDTX); Affinity v. Bosch, 6:14-cv-396 (WDTX); Affinity v. Robert Bosch, 1:14-cv-499
`
`(EDTX); Affinity v. Nissan, 1:14-cv-508 (EDTX); Affinity v. MLB Advanced Media, 6:15-
`
`cv-33 (WDTX); Affinity v. Directv, 6:15-cv-30 (WDTX); Affinity v. NBA Media Ventures,
`
`6:15-cv-31 (WDTX); Affinity v. Amazon.com, 6:15-cv-29 (WDTX); Affinity v. NHL
`
`Enterprises, 7:15-cv-32 (WDTX).
`
`By separate motion filed herewith, Petitioners request that this proceeding be
`
`joined with Case No. IPR2014-01181.
`
`III. PETITIONERS HAVE STANDING
`Grounds for Standing Under 37 C.F.R. § 42.104(a): Petitioners certify that
`
`the ‘641 patent is eligible for IPR and that Petitioners are not barred or estopped from
`
`requesting IPR of the ‘641 patent. Pursuant to 42.122(b), although Petitioners were
`
`served with a complaint asserting infringement of the ‘641 patent more than one year
`
`7
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`ago, the normal statutory one-year bar under 35 U.S.C. § 315(b) does not apply here
`
`because (1) the Board has already instituted IPR proceedings on this patent on timely
`
`first petitions filed by Petitioners (IPR2014-01181, IPR2014-01182, and IPR2014-
`
`01184), and (2) Petitioners accompany this second petition with a motion for joinder
`
`under 35 U.S.C. § 315(c). See Target Corp. v. Destination Maternity Corp., IPR2014-00508,
`
`Paper No. 31, at 2 (“The one-year time bar, however, does not apply to a request for
`
`joinder.”). The Petitioners and real parties-in-interest have not initiated a civil action
`
`challenging validity of the ‘641 patent.
`
`Claims & Statutory Grounds Under 37 C.F.R. §§ 42.22 & 42.104(b):
`
`Petitioners request IPR of ‘641 claims 1-3, 5-7, 9 and 10 and assert that these claims
`
`are unpatentable based on one or more grounds under 35 U.S.C. § 103: Ground 1:
`
`Obvious over Ito in view of Haartsen, Ushiroda, and Bork (Claims 1, 2, 5, 9); Ground
`
`2: Obvious over Ito in view of Haartsen, Nokia, Ushiroda, and Bork (Claims 1-3, 5, 9,
`
`10); Ground 3: Obvious over Ito in view of Haartsen, Rydbeck, Ushiroda, and Bork
`
`(Claims 1, 2, 5, 9); Ground 4: Obvious over Ito in view of Haartsen, Nokia, Rydbeck,
`
`Ushiroda, and Bork (Claims 1-3, 5, 9, 10); Ground 5: Obvious over Ito in view of
`
`Haartsen, Galensky, Ushiroda, and Bork (Claim 7); Ground 6: Obvious over Ito in
`
`view of Haartsen, Nokia, Galensky, Ushiroda, and Bork (Claims 6, 7); Ground 7:
`
`Obvious over Ito in view of Haartsen, Rydbeck, Galensky, Ushiroda, and Bork (Claim
`
`7); Ground 8: Obvious over Ito in view of Haartsen, Nokia, Rydbeck, Galensky,
`
`Ushiroda, and Bork (Claims 6, 7).
`
`8
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`Section V.C provides claim charts specifying how the cited prior art renders
`
`obvious each of the Challenged Claims, as confirmed by the knowledge and
`
`understanding of a person of ordinary skill in the art (“POSITA”) as of March 28,
`
`2000 as evidenced in Ex. 1424, the Declaration of Dr. Schuyler Quackenbush.
`
`IV. SUMMARY OF THE ‘641 PATENT
`A. Overview of the ‘641 Patent
`The ‘641 specification generally describes a “System and Method for Managing
`
`Media” as applied to various electronic devices such as a PC, portable device, or
`
`vehicle audio system. The Challenged Claims are directed to a system for delivering
`
`media content to a wireless telephone over a wireless network, communicating
`
`information about media content from the telephone to a recipient device to generate
`
`a graphical menu comprising selectable menu items on the display of the recipient
`
`device, and streaming an audio signal from the telephone to the recipient device using
`
`an asynchronous wireless channel of a local network in response to a selection of a
`
`menu item on the recipient device. The Challenged Claims further claim a Bluetooth
`
`communication module in the telephone and that media content is delivered to a
`
`wireless telephone at a hybrid of communication rates.
`
`The elements of the Challenged Claims are an amalgam of features described in
`
`various embodiments in the ‘641 patent. For example, in one portion of the
`
`specification, the ‘641 patent discloses that “Electronic devices are described in more
`
`detail below and may include a network radio, a modular device, an audio system, a
`
`9
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`personal digital assistant (PDA), a cellular phone.” Ex. 1401 at 5:36-39. Many of the
`
`other features of claim 1, however, such as a rechargeable battery, display, housing,
`
`and physical interface, are never specifically described in the specification with respect
`
`to a cellular phone. Similarly, although the ‘641 patent describes the ability to
`
`communicate audio information from a portable device to a second device over a
`
`localized wireless connection (id. at 9:31-43), such disclosure is not connected to the
`
`‘641 patent’s only description of an asynchronous wireless channel (see id. at 6:31-47).
`
`As set forth in this Petition, all of the elements of the Challenged Claims were
`
`well-known in the art long before the earliest claimed priority date of March 28, 2000.
`
`Indeed, the specification itself makes clear that the applicants did not purport to
`
`invent, inter alia, the following claim elements: cellular telephone (Ex. 1401 at 5:36-41);
`
`display (11:1-3, 12:35-40); housing and enclosure. (Fig. 9); wireless communication
`
`module (2:33-43, 5:42-6:6, 9:57-67); rechargeable power supply (13:26-32); non-
`
`circular physical interface for communicating data and recharging power (18:33-55,
`
`Fig. 9); memory (8:48-52, 8:66-9:3); streaming media (8:31-37); asynchronous channel
`
`(6:34-39); Bluetooth (2:41-43, 9:47-49); email client (10:40-45); voicemail client (id.);
`
`Internet browser (9:17-22, 10:66-11:14); hands-free mode (10:45-46); buffer memory
`
`(8:48-52); audio player (9:13-19, 11:35-39, 16:29-34). In the same way that these
`
`elements have been combined in the ‘641 patent claims, it would have been obvious
`
`and straightforward to a POSITA to have combined them in the prior art.
`
`Furthermore, many prior art references were identified through submission of
`
`10
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`IDSs during prosecution of the ‘641 patent. These prior art references disclose all of
`
`the above features or concepts as already well-known in the art. See generally Ex. 1402.
`
`As detailed herein, the applicants did not invent anything beyond what was already
`
`well understood in the art at the time of their earliest claimed priority date.
`
`‘641 Patent Prosecution History
`
`B.
`The application leading to the ‘641 patent was filed on November 9, 2012 as a
`
`continuation of U.S. Pat. No. 8,521,140 (filed May 27, 2011), which is a continuation
`
`of U.S. Pat. No. 7,953,390 (filed June 30, 2009), which is a continuation of U.S. Pat.
`
`No. 7,778,595 (filed January 16, 2008), which is a continuation of the ‘833 patent
`
`(filed on September 23, 2004) and which in turn is a continuation of the ‘947 patent
`
`(filed March 28, 2000).
`
`On March 13, 2013, the Examiner issued an Office Action, rejecting
`
`prosecution claims 8-11 and 13-20 under 35 U.S.C. § 102, prosecution claims 1-7 and
`
`12 under 35 U.S.C. § 103 and prosecution claims 1-20 for double patenting. Ex. 1402
`
`at 411-421 (3/13/2013 OA at 2-12). The Examiner also noted that many of the claim
`
`elements were inherent in the art (e.g., a display, housing, enclosure, wireless
`
`communication module, rechargeable power supply, physical interface, memory,
`
`receiving a wireless upgrade for a software application, email, voice-mail, Internet
`
`browser). Id. at 413-18 (3/13/2013 OA at 4-9). On May 1, 2013, Applicants amended
`
`the specification and claims: prosecution claim 1 (issued as claim 1) was amended to
`
`add “to communicate a collection of information about media content available from
`
`11
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`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”; and prosecution claim 8
`
`(issued as claim 8) was amended to add “in response to a selection of a selectable
`
`menu item presented on a recipient device display.” Id. at 245-258 (5/1/2013 Reply at
`
`1-14). The Examiner then issued a Notice of Allowance on June 3, 2013, and the ‘641
`
`patent issued on September 10, 2013.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT
`PETITIONERS WILL PREVAIL WITH RESPECT TO
`AT LEAST ONE CLAIM OF THE ‘641 PATENT
`
`Petitioners submit there is at least “a reasonable likelihood that the petitioners
`
`would prevail with respect to at least 1 of the claims challenged in the petition.”
`
`35 U.S.C. § 314(a). Indeed, all of the Challenged Claims of the ‘641 patent are
`
`unpatentable as invalid under the requirements of 35 U.S.C. § 103 because they are
`
`obvious in light of the prior art, as explained below in Section V.C. Specifically, this
`
`Petition relies on two additional references, Bork and Ushiroda. Bork was not
`
`substantively considered by the PTO during prosecution of the ‘641 patent, and has
`
`not been previously presented in any inter partes review petition for the ‘641 patent. In
`
`addition, Ushiroda has never been presented or considered by the PTO during
`
`prosecution or any other PTO proceedings of the ‘641 patent. As detailed below,
`
`pursuant to 37 C.F.R. § 42.104(b)(4)-(5), all of the Challenged Claims are unpatentable.
`
`A.
`
`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`12
`
`

`

`Inter Partes Review
`United States Patent No. 8,532,641
`Pursuant to § 42.100(b), and solely for purposes of this review, Petitioners
`
`construe the claim language such that terms are given their broadest reasonable
`
`interpretation in light of the specification. Terms not specifically listed and construed
`
`below should be given their plain and ordinary meaning under the broadest
`
`reasonable inte