Qurio Holdings, Inc.
`Robert Renke
`4011 WestChase Blvd, Suite 110
`Raleigh, NC 27607
` (919) 532-7665 (telephone)
`
`
`By:
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`DIRECTV, LLC
`Petitioner
`
`v.
`
`QURIO HOLDINGS, INC.
`Patent Owner
`
`___________________
`
`Case IPR2015-02005
`Patent 7,787,904
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`

`
`IPR2015-02005
`U.S. Patent 7,787,904
`
`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`BACKGROUND OF THE ‘904 PATENT .................................................... 1
`
`III. A PERSON OF ORDINARY SKILL IN THE ART ..................................... 8
`
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`“WPAN” ............................................................................................. 10
`
`“mobile device” .................................................................................. 12
`
`“media device” ................................................................................... 12
`
`“media database” ................................................................................ 13
`
`V.
`
`THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ....................................................................................... 14
`
`A.
`
`Claims 1-3, 10, 12, and 15-18 are not obvious in view of DeVet
`and Vidal ............................................................................................ 14
`
`1.
`2.
`3.
`
`Summary of DeVet .................................................................. 14
`Summary of Vidal .................................................................... 15
`There Is No Reasonable Likelihood That Claims 1-3, 10,
`12, and 15-18 Would Have Been Obvious Over the
`Combination of DeVet and Vidal ............................................ 16
`
`B.
`
`Claims 1-3, 10, 12, and 15-18 are not obvious in view of Morse
`and Holloway ..................................................................................... 20
`
`1.
`2.
`3.
`
`Summary of Morse................................................................... 21
`Summary of Holloway ............................................................. 21
`There Is No Reasonable Likelihood That Claims 1-3, 10,
`12, and 15-18 Would Have Been Obvious Over the
`Combination of Morse and Holloway ..................................... 22
`
`C.
`
`Claims 1-3, 10, 12, and 15-18 are not obvious in view of
`NetRemote and RX3000 .................................................................... 26
`
`1.
`2.
`3.
`
`Summary of NetRemote .......................................................... 27
`Summary of RX3000 ............................................................... 27
`Petitioner has not sufficiently proven that RX3000 is a
`prior art printed publication ..................................................... 28
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`IPR2015-02005
`U.S. Patent 7,787,904
`
`4.
`
`5.
`
`Petitioner has not sufficiently proven that the NetRemote
`Webpage (Ex. 1011) is a prior art printed publication ............ 30
`There Is No Reasonable Likelihood That Claims 1-3, 10,
`12, and 15-18 Would Have Been Obvious Over the
`Combination of NetRemote and RX3000 ................................ 31
`
`VI. PETITIONER PRESENTS REDUNDANT GROUNDS ............................ 35
`
`A. Ground 1 Based On DeVet and Vidal, Ground 2 Based On
`Morse and Holloway, and Ground 3 Based On NetRemote and
`RX3000 Are Horizontally Redundant Relative to Each Other .......... 36
`
`VII. CONCLUSION ............................................................................................. 37
`
`
`
`-iii-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
`
`TABLE OF AUTHORITIES
`
`Cases
`Bicon Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006) .................................... 9
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359. (Fed. Cir. 2002) .................. 9
`Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656 ................................ 9
`In re Hall, 781 F.2d 897 (Fed. Cir. 1986) ................................................................28
`In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ............................................................ 9
`In re Wyer, 655 F. 2d 221 (CCPA 1981) ................................................................28
`Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008) ............................28
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-
`00003 ....................................................................................................................35
`Macronix Int’l v. Spansion LLC¸ IPR2014-00106 .................................................... 9
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) .............10
`Microsoft Corporation v. Depomed, Inc., IPR2014-00292 .....................................10
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00088 ...............................................36
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358 (Fed. Cir. 2007) ......................10
`Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00152 ..... 9
`
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................28
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 326(b) ...................................................................................................35
`35 U.S.C. §314(a) ....................................................................................................14
`
`Rules
`37 C.F.R. § 42.1(b) ..................................................................................................35
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.20(c) .................................................................................................35
`37 C.F.R. §42.100(b) ................................................................................................. 9
`
`
`
`
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`-iv-
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`IPR2015-02005
`U.S. Patent 7,787,904
`
`TABLE OF EXHIBITS
`
`
`Existing Exhibits:
`
`Exhibit No.
`
`Description
`
`1001
`
`1003
`
`1004
`
`1005
`
`1006
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1016
`
`1017
`
`U.S. Patent No. 7,787,904 B2 to Issa
`
`De Vet et al, “A personal digital assistant as an
`advanced remote control for audio/video equipment”
`from the Second Workshop on Human Computer
`Interaction with Mobile Devices, 1999
`
`U.S. Patent Application Publication No.
`2003/0193426 A1 to Vidal
`
`U.S. Patent Application Publication No.
`2005/0057538 A1 to Morse et al.
`
`U.S. Patent Application Publication No.
`2006/0041655 A1 to Holloway et al.
`
`NetRemote LE Installation Guide for J. River Media
`Center
`
`NetRemote LE Network Configuration Guide
`
`NetRemote LE Setup Guide
`
`Proximis NetRemote Webpage
`
`User’s Guide for HP iPAQ rx3000 series Mobile
`Media Companion
`
`Declaration of Tal Lavian, Ph.D.
`
`Declaration of Lisa Gade
`
`Declaration of Christopher Butler
`
`-v-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`Qurio Holdings, Inc. (“Patent Owner”) respectfully submits this Preliminary
`
`Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, in response
`
`to the Petition for Inter Partes Review (Paper 3) of U.S. Patent No. 7,787,904 (“the
`
`‘904 Patent”) filed by DirecTv, LLC (“Petitioner”). Petitioner has requested
`
`review of claims 1-3, 10, 12, and 15-18 of the ‘904 Patent. This Preliminary
`
`Response is timely, as it is being filed within three months of the mailing date of
`
`the Notice of Filing Date Accorded to Petition (Paper 5), mailed October 6, 2015.
`
`I.
`
`INTRODUCTION
`
`A trial should not be instituted in this matter because the references relied
`
`upon in the Petition do not give rise to a reasonable likelihood of the Petitioner
`
`prevailing with respect to the challenged claims of the ‘904 Patent.
`
`Further, the grounds raised by the Petitioner against the challenged claims
`
`are horizontally redundant. Should a trial be instituted based on one or more
`
`grounds, the redundant grounds should be dismissed.
`
`Should the Board decide to institute a trial, Patent Owner reserves the right
`
`to present additional arguments in the Patent Owner Response.
`
`II. BACKGROUND OF THE ‘904 PATENT
`
`The ‘904 Patent is generally directed to controlling, via a mobile device,
`
`content played by media devices in a wireless personal area network (“WPAN”).
`
`-1-
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`IPR2015-02005
`U.S. Patent 7,787,904
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`More particularly, the ‘904 Patent provides a mobile device for controlling digital
`
`content played by a plurality of media devices. Ex. 1001 at 2:57-58.
`
`The media devices include media players and content that may be played by
`
`the media players. Id. at 3:4-6. Exemplary media devices include a personal
`
`computer, a digital video recorder associated with a television, an audio player
`
`such as a Moving Pictures Experts Group (MPEG) Audio Layer-3 (MP3) player, a
`
`digital picture frame, and the like. Id. at 3:26-31. The media device includes a
`
`wireless communication interface, a control system, and a content database. Id. at
`
`33-35. The wireless communication interface provides wireless communication
`
`via the WPAN between the media device and the mobile device and may operate
`
`according to a wireless communication standard such as, but not limited to, the
`
`Bluetooth wireless communication standard, the Zigbee wireless communication
`
`standard, the Wireless Fidelity (WiFi) wireless communication standard, or the
`
`IEEE 802.11 wireless communication standards. Id. at 3:35-47. The control
`
`system includes a media player that plays content in the content database and a
`
`WPAN media server that instructs the media player to play select content based on
`
`instructions for information received from the mobile device. Id. at 3:47-54, 3:59-
`
`62. The content database may, for example, be any storage device such as, but not
`
`limited to, a hard drive or Random Access Memory (RAM) and operates to store
`
`-2-
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`IPR2015-02005
`U.S. Patent 7,787,904
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`content such as digital video files, digital audio files, digital images, slideshows of
`
`digital images, or the like. Id. at 3:54-57.
`
`Exemplary mobile devices include a mobile phone, Personal Digital
`
`Assistant (PDA), and the like, and a standalone device similar to a remote control.
`
`Id. at 4:4-6. The mobile device includes a wireless communication interface for
`
`communicating via the WPAN with the plurality of media devices and a control
`
`system. Id. at 4:7-9. The wireless communication interface may operate, for
`
`example, according to a wireless communication standard such as, but not limited
`
`to, the Bluetooth wireless communication standard, the Zigbee wireless
`
`communication standard, the Wireless Fidelity (WiFi) wireless communication
`
`standard, or the IEEE 802.11 wireless communication standards. The control
`
`system includes a media client and a media database. Id. at 4:21-22. The media
`
`client provides instructions or information to the media server in order to control
`
`the content played by the media player. Id. at 4:23-27. When the mobile device
`
`enters a WPAN, the media client interacts with the media server to obtain metadata
`
`describing the content in the content database. Id. at 4:27-30. The metadata is
`
`stored in the media database at the mobile device and may include information
`
`such as a file name, file type, and an identifier of the WPAN for each file in the
`
`content database. Id. at 4:30-33. A user associated with the mobile device may
`
`browse information from media database and select content to be played by the
`
`-3-
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`

`
`media player using the media database. Id. at 4:38-42. An exemplary media
`
`database is shown in FIG. 5 reproduced below.
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`IPR2015-02005
`U.S. Patent 7,787,904
`
`
`
`As can be appreciated from the above exemplary media database stored in
`
`the mobile device, multiple pieces of information can be associated with the same
`
`media content in the content database in an organized manner to form an organized
`
`collection of information describing the media content residing at the media device
`
`in the content database. Id. at 5:18-45.
`
`-4-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
`
`Petitioner challenges claims 1-3, 10, 12, and 15-18, of the ‘904 Patent, of
`
`which claims 1 and 16 are independent.
`
`Independent claim 1 recites a mobile device for controlling digital content
`
`played by a plurality of media devices comprising: a) a wireless communication
`
`interface for communicating with the plurality of media devices; b) a media
`
`database; and c) a control system adapted to, for each of the plurality of media
`
`devices: i) communicate with the media device when the mobile device is within a
`
`wireless personal area network (WPAN) associated with the media device to obtain
`
`information describing content residing at the media device; and ii) store the
`
`information describing the content residing at the media device in the media
`
`database; wherein desired content is selected from the content at the media device
`
`based on the information in the media database and played at the media device
`
`when the mobile device is within the WPAN associated with the media device.
`
`Claim 2, which depends from claim 1, further recites the control system is
`
`further adapted to select the desired content to play at the media device from the
`
`media database and instruct the media device to play the desired content when the
`
`mobile device is within the WPAN associated with the media device.
`
`Claim 3, which depends from claim 2, further recites the control system is
`
`further adapted to interact with a user such that the user selects the desired content
`
`to play at the media device from the media database.
`
`-5-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
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`Claim 10, which depends from claim 2, further recites if the mobile device is
`
`simultaneously within the WPAN associated with a first one of the plurality of
`
`media devices and the WPAN associated with a second one of the plurality of
`
`media devices, the control system is further adapted to: select one of the first and
`
`second ones of the plurality of media devices as a select media device; and select
`
`desired content to play for only the select media device from the media database
`
`and instruct only the select media device to play the desired content.
`
`Claim 12, which depends from claim 2, further recites the mobile device is
`
`included within a system further comprising the plurality of media devices,
`
`wherein each of the plurality of media devices comprises: a) a wireless
`
`communication interface for communicating with the mobile device when the
`
`mobile device is within the WPAN associated with the media device; b) a content
`
`database storing the content; and c) a media server adapted to: i) provide the
`
`information describing the content in the content database to the mobile device
`
`when the mobile device is within the WPAN associated with the media device; and
`
`ii) instruct a media player to play the desired content in response to receiving an
`
`instruction to play the desired content from the mobile device.
`
`Claim 15, which depends from claim 1, further recites the control system is
`
`further adapted to update the information describing the content from the media
`
`-6-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
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`device after leaving the WPAN associated with the media device and returning to
`
`the WPAN associated with the media device.
`
`Independent claim 16 recites a method for controlling digital content played
`
`by a plurality of media devices comprising, for each of the plurality of media
`
`devices: obtaining information describing content residing at the media device
`
`when a mobile device is within a wireless personal area network (WPAN)
`
`associated with the media device; storing the information describing the content
`
`residing at the media device in a media database of the mobile device; selecting
`
`desired content to play from the content residing at the media device based on the
`
`media database when the mobile device is within the WPAN associated with the
`
`media device; and playing the desired content at the media device.
`
`Claim 17, which depends from claim 16, further recites selecting the desired
`
`content to play comprises: selecting the desired content from the media database at
`
`the mobile device; and providing an instruction from the mobile device to the
`
`media device instructing the media device to play the desired content when the
`
`mobile device is within the WPAN associated with the media device.
`
`Claim 18, which depends from claim 17, further recites if the mobile device
`
`is simultaneously within the WPAN associated with a first one of the plurality of
`
`media devices and the WPAN associated with a second one of the plurality of
`
`media devices, the method further comprises: selecting one of the first and second
`
`-7-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
`
`ones of the plurality of media devices as a select media device; selecting the
`
`desired content to play for only the select media device from the media database;
`
`and instructing only the select media device to play the desired content.
`
`III. A PERSON OF ORDINARY SKILL IN THE ART
`
`Petitioner alleges that a person having ordinary skill in the art (“PHOSITA”)
`
`would have “possessed at least a bachelor’s degree in computer science and/or
`
`electrical engineering and two years of experience in internet, networking, or
`
`related software technologies, as well as familiarity with mobile wireless devices
`
`and communications” and that “[s]uch a person would have familiarity with
`
`communications between wireless clients and hosts, as well as various wireless
`
`standards such as Wi-Fi or Bluetooth.” Paper 3 at 7.
`
`For purposes of this paper, Patent Owner submits that a person having
`
`ordinary skill in the art of the invention would have a bachelor’s degree in
`
`computer science and/or electrical engineering and at least two years of relevant
`
`wireless communications experience.
`
`Patent Owner reserves its rights to present evidence and arguments in this
`
`proceeding or any other proceeding as to an alternative definition as to the level of
`
`ordinary skill in the field.
`
`-8-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
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`IV. CLAIM CONSTRUCTION
`
`In an inter partes review, a claim of an unexpired patent is construed using
`
`the “broadest reasonable construction in light of the specification.” 37 C.F.R.
`
`§42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`
`14, 2012). Under the BRI standard, “[t]here is a ‘heavy presumption’ that a claim
`
`term carries its ordinary and customary meaning.” Universal Remote Control, Inc.
`
`v. Universal Electronics, Inc., IPR2013-00152 (Paper 8, Aug. 19, 2013) (quoting
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366. (Fed. Cir. 2002)). A
`
`“claim term will not receive its ordinary meaning, however, if the patentee acted as
`
`his own lexicographer and clearly set forth a definition of the disputed claim term
`
`in either the specification or prosecution history.” Macronix Int’l v. Spansion
`
`LLC¸ IPR2014-00106 (Paper 13 at 6, Apr. 24, 2014) (quoting CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, “[a]ny special
`
`definitions for claim terms must be set forth with reasonable clarity, deliberateness,
`
`and precision.” Endo Pharmaceutical, Inc. v. Depomed, Inc., IPR2014-00656
`
`(Paper 12 at 6, September 29, 2014) (citing In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994)).
`
`Moreover, claims are to be construed “with an eye toward giving effect to all
`
`terms in the claim.” Endo Pharmaceutical, IPR2014-00656, Paper 12 at 8 (quoting
`
`Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)); see also Merck
`
`-9-
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`IPR2015-02005
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`& Co. v. Teva Pharms, USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim
`
`construction that gives meaning to all the terms of the claim is preferred over one
`
`that does not do so.”)). Claims should therefore be construed so as not to render
`
`limitations redundant or superfluous. See Endo Pharmaceutical, IPR2014-00656,
`
`Paper 12 at 8 (citing Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed.
`
`Cir. 2007)); see also Microsoft Corporation v. Depomed, Inc., IPR2014-00292
`
`(Paper 33 at 11-12, October 14, 2014).
`
`Should a trial be instituted, the Patent Owner proposes that the Board adopt
`
`the following constructions for the following terms in accordance with the claim
`
`construction standard applicable to inter partes review proceedings. Patent Owner
`
`proposes all other terms be construed in accordance with their plain and ordinary
`
`meaning.
`
`A.
`
`“WPAN”
`
`Each of claims 1 and 11-20 recites the term “WPAN” (wireless personal
`
`area network). Petitioner does not provide a proposed construction for “WPAN.”
`
`The ‘904 Patent describes “[t]he wireless communication interface 22 [of the
`
`media devices 16 and 18] may operate according to a wireless communication
`
`standard such as, but not limited to, the Bluetooth wireless communication
`
`standard, the Zigbee wireless communication standard, or the wireless fidelity
`
`(WiFi) wireless communication standard, or the IEEE 802.11 wireless
`
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`IPR2015-02005
`U.S. Patent 7,787,904
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`communication standards.” Ex. 1001 at 3:41-47. The ‘904 Patent also describes
`
`“[t]he wireless communication interface 32 [of the mobile device 20] may operate
`
`according to a wireless communication standard such as, but not limited to, the
`
`Bluetooth wireless communication standard, the Zigbee wireless communication
`
`standard, or the wireless fidelity (WiFi) wireless communication standard, or the
`
`IEEE 802.11 wireless communication standards.” Id. at 4:15-20. The ‘904 Patent
`
`also describes, for example, “[m]ore specifically, the first time the mobile device
`
`20 enters the WPAN 12, the mobile device 20 communicates with the media
`
`device 16 to obtain metadata defining the content stored at the media device 16 and
`
`then stores the metadata.” Id. at 3:8-12. Accordingly, the ‘904 Patent defines the
`
`term “WPAN” as a network capable of multiple communication standards and was
`
`not intended to be limited to just the 802.15 Standard or to any other such narrower
`
`extrinsic definitions. For example, the ‘904 Patent includes communication
`
`standards such as “wireless fidelity (Wi-Fi) wireless communication standard, or
`
`the IEEE 802.11 wireless communication standards,” both of which are outside the
`
`802.15 Standard. Id. at 3:44-47, 4:19-20. The ‘904 Patent therefore defines the
`
`WPAN to provide communication between the communication interfaces of the
`
`mobile device and media device. The ‘904 Patent also describes, “[w]hen the
`
`wireless network enters a Wireless Personal Area Network (WPAN) associated
`
`with a media device, the media client communicates with the media device to…,”
`
`-11-
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`IPR2015-02005
`U.S. Patent 7,787,904
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`which requires some commonality of location. Id. at 1:33-35. Thus, Patent Owner
`
`proposes the broadest reasonable construction in light of the specification for the
`
`term “WPAN” is “a network defined by, and co-located with, a wireless
`
`communication interface.”
`
`B.
`
` “mobile device”
`
`Each of claims 1-20 recites the term “mobile device.” Petitioner proposes a
`
`construction for “mobile device” of “a mobile phone, personal digital assistant
`
`(PDA), or the like or a standalone device similar to a remote control.” Paper 3 at
`
`11. Patent Owner proposes that “mobile device” be construed in accordance with
`
`its plain and ordinary meaning. To the extent the Board believes the plain and
`
`ordinary meaning will not suffice, Patent Owner proposes the broadest reasonable
`
`construction is “a device designed to be carried in normal use.”
`
`C.
`
` “media device”
`
`Each of claims 1-3, 5-7, and 10-20 recites the term “media device.”
`
`Petitioner does not provide a proposed construction for “media device.” Each of
`
`Figs. 1, 2, 4, and 6-9 of the ‘904 Patent show the media devices 16 and 18 each as
`
`a single device that stores and plays resident media. The ‘904 Patent also
`
`describes, “the media devices 16 and 18 include media players and content that
`
`may be played by the media players.” Ex. 1001 at 3:4-6. Patent Owner proposes
`
`that the broadest reasonable construction of “media device” consistent with the
`
`-12-
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`

`
`specification of the ‘904 Patent is therefore “a device capable of playing resident
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`IPR2015-02005
`U.S. Patent 7,787,904
`
`content.”
`
`D.
`
` “media database”
`
`Each of claims 1-3, 10, 13, 16-18 and 20 recites the term “media database.”
`
`Petitioner does not provide a proposed construction for “media database.” Patent
`
`Owner submits that the broadest reasonable construction of the term “media
`
`database” consistent with the specification of the ‘904 Patent is “an organized
`
`collection of information describing media content residing at the media device.”
`
`This construction is supported by the specification of the ‘904 Patent. For
`
`example, the ‘904 Patent describes:
`
`As discussed below in more detail, when the mobile device 20 enters
`
`one of the WPANs 12, 14, the media client 36 interacts with the
`
`media server 30 to obtain metadata describing the content in the
`
`content database 26. The metadata is stored in the media database 38
`
`and may include information such as a file name, file type, and an
`
`identifier of the WPANs 12, 14 for each file in the content database
`
`26. Ex. 1001 at 4:27-33.
`
`FIG. 5 of the 904 patent also illustrates an exemplary media database.
`
`
`
`-13-
`
`

`
`IPR2015-02005
`U.S. Patent 7,787,904
`
`V. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`
`“The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the petition filed
`
`under section 311 and any response filed under section 313 shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. §314(a).
`
`A. Claims 1-3, 10, 12, and 15-18 are not obvious in view of DeVet and
`Vidal
`
`Claims 1-3, 10, 12, and 15-18 of the ‘904 Patent would not have been
`
`obvious in view of “A personal digital assistant as an advanced remote control for
`
`audio/video equipment” (“DeVet,” Ex. 1003) alone or in view of US Patent
`
`Application Publication No. 2003/0193426 A1 to Vidal (“Vidal,” Ex. 1004).
`
`Petitioner has failed to meet its burden in demonstrating a reasonable likelihood of
`
`prevailing with respect to any of the challenged claims based upon DeVet and
`
`Vidal.
`
`1.
`
`Summary of DeVet
`
`DeVet relates to “a personal digital assistant [(“PDA”)] that is used as a
`
`catalogue and advanced remote control to browse, select and play music in a
`
`compact disc [(“CD”)] jukebox.” Ex.1003 at 87. “The CDs are shown in a list on
`
`the display of the PDA.” Id. “The list of CDs can be sorted by music style, artist
`
`-14-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
`
`name, release years and album names, by either using the stylus or voice
`
`commands. Id. Connecting the PDA to the PC via the PDAs cradle, as shown in
`
`Figure 2 of DeVet reproduced below, allows an update of the catalogue. Id. at 88.
`
`Figure 2 of DeVet
`
`
`
`DeVet discloses “infrared communication between PDA to PC via an IrDA
`
`(Infrared Data Association) link.” Id. (Emphasis added.) Such infrared
`
`communications are to the PC. Nowhere does DeVet disclose or suggest infrared
`
`communications from the PC.
`
`2.
`
`Summary of Vidal
`
`Vidal relates to a universal remote control that communicates with
`
`appliances including a television, video tape player, video disk player, stereo,
`
`home device control, and computer system across a wireless communication
`
`channel such as an infrared channel or a radio frequency (RF) channel. Id. at 0033.
`
`“When a user selects an appliance to control at the remote control, the remote
`
`-15-
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`

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`IPR2015-02005
`U.S. Patent 7,787,904
`
`control sends a message to the appliance requesting a menu description.” Id. at
`
`0036. In response, the appliance returns the menu description to the remote
`
`control. Id. The remote control then displays the menu. Id. Custom appliance
`
`control symbols representing functions can be downloaded from the appliance. Id.
`
`at 0041.
`
`3.
`
`There Is No Reasonable Likelihood That Claims 1-3, 10, 12,
`and 15-18 Would Have Been Obvious Over the Combination of
`DeVet and Vidal
`
`a)
`The combination of DeVet and Vidal does not render
`obvious independent claims 1 and 16
`
`Claim 1 recites “communicate with the media device when the mobile
`
`device is within a wireless personal area network (WPAN) associated with the
`
`media device to obtain information describing content residing at the media
`
`device.” Claim 16 recites “obtaining information describing content residing at the
`
`media device when the mobile device is within a wireless personal area network
`
`(WPAN) associated with the media device.” Accordingly, claims 1 and 16 require
`
`that the information describing content residing at the media device be obtained by
`
`the mobile device via a WPAN associated with the media device. The
`
`combination of DeVet and Vidal does not render obvious at least these features of
`
`claims 1 and 16.
`
`-16-
`
`

`
`IPR2015-02005
`U.S. Patent 7,787,904
`
`DeVet discloses:
`
`The information needed to create the CD catalogue on the PDA is
`
`simple: for each CD a number of attributes is available: artist, album,
`
`year, and style. This information can be downloaded from the
`
`Internet, for instance via CDDB, a feature that most audio CD players
`
`on the PC now offer (CDDB 1999). Ex. 1003 at 88.
`
`DeVet then discloses “[c]onnecting the PDA to the PC would then result in
`
`an update of the catalogue.” Id. DeVet, however, does not disclose or suggest that
`
`the connection is made using an IrDA link as the Petitioner contends. See Paper 3
`
`at 23. Here, DeVet is clearly referring to a physical wired connection. Figure 2 of
`
`DeVet reproduced above clearly shows the PDA hardwired to the PC via its cradle.
`
`Ex. 1003 at 88. Moreover, DeVet discloses “The technology involved includes []
`
`infrared communication between PDA to PC via an IrDA (Infrared Data
`
`Association) link.” Id. (Emphasis added.) Use of the term “to” in “PDA to PC”
`
`indicates that IR communications travel from the PDA to the PC only. Otherwise,
`
`DeVet would have said “between PDA and PC.” The use of the term “IR
`
`communications” and “link” is distinct from the use of the term “connecting”
`
`above. This indicates that the term “connecting” is used to mean something
`
`different than “link,” such that the former refers to a wired connection while the
`
`latter refers to an IR link. Therefore, DeVet is clear that catalogue updates to the
`
`PDA are done via a wired connection, and not via a WPAN.
`
`-17-
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`

`
`IPR2015-02005
`U.S. Patent 7,787,904
`
`DeVet provides no guidance (or motivation) to a PHOSITA to modify
`
`DeVet to include communicating the catalog to the PDA via a WPAN. DeVet’s
`
`catalogue is “fixed and contained in a data file which can only be altered
`
`manually.” Id. DeVet discloses:
`
`Getting the CD information on the PDA.
`
`This requires an Internet account to automatically download for
`
`instance CDDB information (CDDB 1999). The alternative would be
`
`for the user to manually type in the information. The catalogue in the
`
`current prototype is fixed and contained in a data file which can only
`
`be altered manually. (Emphasis in original.) Id.
`
`Even Petitioner’s expert, Dr. Lavian admits that the term “connect” as used
`
`in DeVet refers to a hardwired connection. Dr. Lavian asserts that the alleged
`
`motivation for modifying DeVet, is “to avoid having the user to connect the device
`
`to the PC via cable in order to discover the media content that can be controlled”
`
`(emphasis added). Ex. 101