Trials@uspto.gov
`571-272-7822
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`Paper 9
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`Entered: April 4, 2016
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`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 B2
`____________
`
`
`
`
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`IPR2015-02005
`Patent 7,787,904 B2
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`I. INTRODUCTION
`DIRECTV, LLC (“Petitioner”) filed a substitute Petition for inter
`partes review of claims 1–3, 10, 12, and 15–18 of U.S. Patent
`No. 7,787,904 B2 (Ex. 1001, “the ’904 patent”). Paper 3 (“Pet.”). Patent
`Owner, Qurio Holdings, Inc., filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . the information presented
`in the petition . . . and any response . . . 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).
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one of claims 1–3, 10, 12, and 15–18 (“the challenged claims”).
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2; Paper 6 (Patent Owner’s Mandatory
`Notices). We also note that two additional requests for inter partes reviews of
`the ’904 patent have been filed—Unified Patents Inc. v. Qurio Holdings, Inc.,
`Case IPR2015-01991 (PTAB September 28, 2015) (Paper 2) and DISH
`Network L.L.C. v. Qurio Holdings, Inc., Case IPR2016-00007 (PTAB October
`2, 2015) (Paper 1).
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`B. The ’904 Patent
`The ’904 patent relates to techniques for using a mobile device to control
`content played by multiple media players. Ex. 1001, Abs., 1:6–7, 1:26– 27.
`According to the ’904 patent, these techniques address the problem of
`ascertaining and selecting media content available on numerous media devices
`(such as computers, televisions with digital video recorders, MP3 players) at
`various locations (such as one’s home, office, or automobile). Id. at 1:12– 22.
`Figure 1, reproduced below, shows an exemplary system 10. Id. at 2:58–59.
`
`
`System 10 includes two wireless personal networks (“WPANs”) 12 and 14,
`each having a media device 16 or 18, respectively. Id. at 2:64–3:3. The range
`of each WPAN depends on the range of the wireless communication interface
`associated with its media device. Id. According to the ’904 patent, the wireless
`communication interface “may operate according to a wireless communication
`standard such as . . . the Bluetooth wireless communication standard, the Zigbee
`wireless communication standard, the Wireless Fidelity (WiFi) wireless
`communication standard, or IEEE 802.11 wireless communication standards.”
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`Id. at 3:40–47. Each media device includes a media player and content that can
`be played by the media player. Id. at 3:4–6.
`System 10 also includes a mobile device 20 that includes a wireless
`communication interface and “operates to control the content played by the
`media players of the media devices 16 and 18.” Id. at 3:6–8. The ’904 patent
`provides examples of mobile device 20—a mobile phone, a Personal Digital
`Assistant (“PDA”), or “a stand-alone device similar to a remote control.” Id. at
`4:3–7.
`As shown in Figure 1, mobile device 20 is within the range of WPAN 12
`having media device 16. Id. at Fig. 1. According to the ’904 patent, the first
`time mobile device 20 enters WPAN 12, the mobile device communicates with
`media device 16 to obtain metadata defining the content and stores the
`metadata. Id. at 3:8–12. The ’904 patent describes the metadata as “any
`information describing the content stored at media device 16.” Id. at 3:13–14.
`In some embodiments, metadata may include “a file name, file type, and an
`identifier of the WPANs” and be stored in a media database on a control system
`of the mobile device 20. Id. at 4:7–9, 4:21–22, 4:30–33.
`After the mobile device stores the metadata about content on the media
`device and when the mobile device is within the WPAN associated with the
`media device, “a user associated with the mobile device 20 may select desired
`content to be played using the stored metadata” or “mobile device 20 may
`automatically select desired content to be played using the stored metadata.”
`Id. at 3:15–18. Then the mobile device communicates with media device 16 to
`play the selected content. Id. at 3:8–20.
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`C. Illustrative Claim
`Claims 1 and 16 of the challenged claims in the ’904 patent are
`independent. Claim 1 is illustrative of the claimed subject matter:
`1. 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.
`Ex. 1001, 8:37–55.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–3, 10, 12, and 15–18 of the ’904 patent
`are unpatentable under 35 U.S.C. § 1031 based on the following specific
`grounds (Pet. 17–60):
`
`
`
`
`1 Section 3(c) of the Leahy-Smith America Invents Act (“AIA”) amended
`35 U.S.C. § 103. Pub. L. No. 112-29, 125 Stat. 284, 287–288 (2011). Because
`the ’904 patent has a filing date before March 16, 2013 (effective date of
`section 3), the pre-AIA version of § 103 applies in this proceeding. See id.
`§ 3(n)(1), 125 Stat. at 293.
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`References
`De Vet2 and Vidal3
`Morse4 and Holloway5
`NetRemote6 and RX30007
`
`
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`1–3, 10, 12, and 15–18
`1–3, 10, 12, and 15–18
`1–3, 10, 12, and 15–18
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015)
`(“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”), cert. granted, sub nom., Cuozzo Speed Techs. LLC v. Lee,
`
`
`2 De Vet et al. “A personal digital assistant as an advanced remote control for
`audio/visual equipment” from the Second Workshop on Human Computer
`Interaction with Mobile Devices, 1999 (Ex. 1003, “De Vet” or “the De Vet
`paper”).
`3 US 2003/0193426 A1, pub. Oct. 16, 2003 (Ex. 1004, “Vidal”).
`4 US 2005/0057538 A1, pub. Mar. 17, 2005 (Ex. 1005, “Morse”).
`5 US 2006/0041655 A1, pub. Feb. 23, 2006 (Ex. 1006, “Holloway”).
`6 NetRemote LE Installation Guide (Ex. 1008, “Installation Guide”);
`NetRemote LE Network Configuration Guide (Ex. 1009, “Configuration
`Guide”); NetRemote LE Setup Guide (Ex. 1010, “Setup Guide”); and
`October 13, 2004 Internet Archive Capture of
`http://www.promixis.com/products.php?section=netremote (Ex. 1011,
`“NetRemote Webpage”) (collectively, “NetRemote” or “the NetRemote
`documents”). Pet. 49.
`7 User’s Guide for HP iPAQ rx3000 series Mobile Media Companion,
`Document Part Number 364351-002, August 2004 (Ex. 1012, “RX3000” or
`“the RX3000 reference”).
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`136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed
`to be given their ordinary and customary meaning as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Further, “[t]he PTO should also consult the patent’s prosecution
`history in proceedings in which the patent has been brought back to the
`agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015).
`Petitioner and Patent Owner propose constructions for some claim
`limitations. Pet. 11; Prelim. Resp. 9–13. We determine that no terms require
`express construction for this decision other than “media database.”
`Independent claim 1 recites “a media database,” as does independent
`claim 16. Dependent claims 2, 3, 10, 13, 17, 18, and 20 each recites
`additional limitations regarding “the media database.” Petitioner does not
`propose an express construction for “media database.” Pet. 11. Patent Owner
`contends the broadest reasonable construction of “media database” consistent
`with the Specification of the ’904 patent is “an organized collection of
`information describing media content residing at the media device.” Prelim.
`Resp. 13 (citing Ex. 1001, 4:27–33, Fig. 5).
`The ’904 patent does not set forth a special definition for “media
`database.” The plain language of the claims describes types of information
`stored in the media database—“information describing the content residing at
`the media device” (independent claims 1, 16) and “last-played time-stamps for
`the content residing at . . . the media devices” (claims 13, 20). The plain
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`language of the claims also describes how the information in the media
`database is used—selecting content at the media device to be played
`(independent claims 1, 16; claims 2, 10, 13, 17, 18, 20). The plain language
`of the claims also specifies that the media database is on the mobile device
`(independent claims 1, 16).
`Similarly, the written description of the ’904 patent describes types of
`information stored in the media database—metadata or information describing
`the content stored at a media device (Ex. 1001, 3:13–14, 4:30–36) and “last-
`played time-stamps for the content” (id. 4:36–38). The written description
`also describes how the information in the media database is used—to select
`content to be played. Id. at 4:38–48.
`The written description of the ’904 patent illustrates “an exemplary
`embodiment” of the media database in Figure 5, reproduced below.
`
`
`As shown in Figure 5, the media database includes certain types of information
`for each content file stored on the media device—an identifier assigned to each
`media file, the file name, the file type, a last-played time-stamp, and the server
`name, which is “an identifier for the WPANs . . . in which the content is
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`located.” Id. at 5:22–37. The written description also indicates how data is
`added to the media database (id. at 5:26–37) and how the data is used to “enable
`the user associated with the mobile device” to browse and select content to be
`played by the media player (id. at 5:40–45).
`During examination, the Applicant argued that prior art references
`“fail[ed] to teach or suggest a mobile device comprising a control system
`adapted to store the information describing the content residing at the media
`device in a media database of the mobile device.” Ex. 1002, 136. Rather,
`according to the Applicant, the prior art reference described storing the content
`guide (the recited “media database”) on the content receiver itself, not on the
`mobile device (the recited “mobile device”), as required by claim 1.
`Id. at 137–38. The Examiner issued a Notice of Allowability after the
`Applicant presented that argument among others, and the ’904 patent issued in
`due course. Id. at 149 (Notice of Allowability), 158 (Issue Notification).
`We recognize that the Patent Owner’s proposed construction has merit
`because the ordinary meaning of the term database in the context of the
`’904 patent is a collection of stored, interrelated data organized to serve an
`application. See Ex. 3001 (defining “database”).8 Patent Owner’s proposed
`construction also reflects the plain language of the claims and is consistent
`with the written description the ’904 patent. See, e.g., Ex. 1001, 8:49–50
`(claim 1 reciting “store the information describing the content residing at the
`
`
`8 IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 268
`(7th ed. 2000) (defining “database” as “(1)(A) (data management) (software) A
`collection of logically related data stored together in one or more computerized
`files. Note: Each data item is identified by one or more keys. . . (4) A collection
`of interrelated data, often with controlled redundancy, organized according to a
`schema to serve one or more applications. . .”).
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`media device in the media database”); id. at 5:22–37 (preferred embodiment
`of a media database). Therefore, for purposes of this decision, we adopt
`Patent Owner’s proposed construction that “a media database” means “an
`organized collection of information describing media content residing at the
`media device.”
`
`B. Asserted Ground of Obviousness over De Vet and Vidal
`Petitioner contends that claims 1–3, 10, 12, and 15–18 of the ’904 patent
`are unpatentable under 35 U.S.C. § 103 as obvious over De Vet and Vidal.
`Pet. 17–32; id. at 17 (“Ground 1: the challenged claims are obvious over De Vet
`in view of Vidal”) (capitalization changed). Petitioner supports its contentions
`with citations to the references and with declaration testimony of Tal Lavian,
`Ph.D. (Ex. 1013). Id. Patent Owner opposes. Prelim. Resp. 14–20.
` A claim is unpatentable as obvious “if the differences between the
`subject matter sought to be patented and the prior art are such that the subject
`matter as a whole would have been obvious at the time the invention was made
`to a person having ordinary skill in the art.” 35 U.S.C. § 103. “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *4 (Fed. Cir. Mar. 1,
`2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
`identify “with particularity . . . the evidence that supports the grounds for the
`challenge to each claim”)).
`
`1. Prior Art Status of De Vet
`According to Petitioner, the De Vet paper is prior art to the challenged
`claims under 35 U.S.C. § 102(b) because it was published in 1999. Pet. 11.
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`Section 102 states: “A person shall be entitled to a patent unless . . .
`(b) the invention was . . . described in a printed publication . . . more than one
`year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b).
`“The statutory phrase ‘printed publication’ has been interpreted to give effect
`to ongoing advances in the technologies of data storage, retrieval, and
`dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a
`printed publication under 35 U.S.C. § 102(b) may be an electronic
`publication, such as the De Vet paper is purported to be. See In re Wyer, 655
`F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is
`considered to be a “printed publication” “upon a satisfactory showing that
`such document has been disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject matter or art,
`exercising reasonable diligence, can locate it and recognize and comprehend
`therefrom the essentials of the claimed invention without need of further
`research or experimentation”). The determination of whether a particular
`reference qualifies as a prior art printed publication “involves a case-by-case
`inquiry into the facts and circumstances surrounding the reference’s disclosure
`to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). The key inquiry is whether the reference was made “sufficiently
`accessible to the public interested in the art” before the critical date. In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).
`In support of its assertion that the De Vet paper is prior art, Petitioner
`provides a declaration by Mr. John De Vet, who is a co-author of the De Vet
`paper, describing submission and presentation of the paper at a technology
`conference in 1999, and access by the public to a copy of the paper on a web
`site. Id.; Ex. 1014 ¶¶ 5–7, 12. Petitioner also provides evidence in support of
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`Mr. De Vet’s testimony. See, e.g., Ex. 1014, Attachment C, p. 3 of 4
`(purportedly a web page presenting a draft timetable of the conference
`showing planned presentation of the De Vet paper). Petitioner also filed a
`declaration by Mark Dunlop, Ph.D., a “co-organizer” of the technology
`conference at which the De Vet paper was presented. Pet. 12;
`Ex. 1018 ¶¶ 20–21. Mr. De Vet’s declaration purportedly describes public
`access to the De Vet paper on a website and presentation of the paper at the
`conference. Pet. 12; Ex. 1018 ¶¶ 20–21. Petitioner also provides evidence in
`support of Dr. Dunlop’s testimony. See, e.g., Ex. 1018, Attachment C
`(purportedly a web page from an Internet archive showing the De Vet paper in
`1999).
`In addition, Petitioner provides a declaration by Mr. Christopher Butler,
`the office manager at the Internet Archive, testifying to publication of the
`De Vet paper on the Internet on March 14, 2003. Pet. 12, Ex. 1017, 1.
`Petitioner provides evidence in support of Mr. Butler’s testimony. See, e.g.,
`Ex. 1017, 78–82 (purportedly showing publication of the De Vet paper on the
`Internet on March 14, 2003). Petitioner further provides evidence purportedly
`of another publication citing the De Vet paper before the filing of the
`’904 patent. Pet. 12, Ex. 1024, 13.
`At this preliminary stage of the proceeding, Patent Owner has not
`contested that the De Vet paper is prior art to the challenged claims. Based on
`Petitioner’s evidence, we are persuaded that Petitioner has shown sufficiently
`for purposes of this decision that the De Vet paper is a printed publication and
`prior art to the challenged claims.
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`2. Summary of De Vet
`De Vet describes using a handheld personal digital assistant (“PDA”) as a
`catalogue and a remote control to browse, select, and play music from audio
`files in MP3 format on a personal computer (“PC”), which De Vet calls “a
`personal CD jukebox” or “a jukebox system.” Ex. 1003, 87–88. The PDA
`displays a list of attributes, such as music style, artist name, release year, and
`album name, of the music available on the PC. Id. at 87. The user selects
`music from the list for the PC to play. Id. at 88.
`According to De Vet, the music catalogue on the PDA is created by
`downloading information about the music from the Internet or by manually
`typing the information using a keyboard of the PC. Id. at 88. The catalogue is
`updated by the jukebox system sending the identification information of the
`available music to the PDA. Id. The catalogue is updated when the PDA is
`connected to the PC. Id.
`The PDA communicates to the PC via a wireless infrared link. Id. (“The
`technology involved includes . . . infrared communication between the PDA to
`PC via an IrDA (Infrared Data Assocation) link.”). De Vet’s Figure 2,
`reproduced below, shows a simulated set-up of a PDA and PC. Id.
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`As depicted in Figure 2, De Vet’s jukebox system includes an IrDA transceiver
`on top of the left speaker of the PC and the PDA seated in its cradle.
`De Vet also describes controlling multiple devices and using the PDA to
`store a catalog of video discs or videotapes, or to function as an electronic
`program guide for television. Id. at 89 (identifying “[c]ontrol multiple devices
`and a variety of content” as an application of the technology).
`
`3. Summary of Vidal
`Petitioner asserts Vidal, which is a United States patent application
`publication, is prior art to the challenged claims under 35 U.S.C. § 102(b).
`Pet. 12. Vidal, titled “Apparatus and Method to Facilitate Universal Remote
`Control,” was published October 16, 2003. Ex. 1004, [43], [54].
`Vidal describes a universal remote control that communicates with
`“appliances” such as 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.
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`Ex. 1004 ¶¶ 2, 33. Vidal’s remote control “discovers” these appliances using
`“an automatic discovery mechanism across the wireless communication
`channel,” which “can be an infrared channel or a radio frequency channel
`such as a Bluetooth™ communication channel.” Id. ¶ 35.
`Vidal describes using the remote control to control applications,
`including controlling operation of a video tape player to show a movie. Id.
`¶¶ 40–42 (describing control functions “rewind, pause, play, stop/eject, and
`fast-forward”); id. ¶ 59 (describing controlling an appliance). Among other
`capabilities, Vidal’s remote control displays information received from the
`application, such as the title of a movie playing. Id.
`
`4. Analysis
`Petitioner provides, with support of Dr. Lavian, analysis purporting to
`explain how the combination of De Vet and Vidal would have conveyed to
`one of ordinary skill in the art the limitations recited in the challenged claims.
`Pet. 17–18, 20–32. Also with support of its declarant, Petitioner provides
`reasons why one of ordinary skill in the art would have combined the
`teachings of the references. See, e.g., id. at 18–20.
`
`i. Independent Claim 1
`In general, regarding independent claim 1, Petitioner relies on De Vet’s
`PDA for the mobile device’s recited limitations. See, e.g., id. at 17 (“De Vet
`teaches and renders obvious every limitation of the Challenged Claims.”).
`Petitioner relies on Vidal “for additional technical teachings, for example, a
`design choice of using Bluetooth communication to select and control devices
`and facilitate secure communications.” Id. at 17–18.
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`“a wireless communication interface”
`(a)
`Claim 1 also requires that the mobile device include “a wireless
`communication interface for communicating with the plurality of media
`devices.” For this limitation, Petitioner, with support of Dr. Lavian, contends
`De Vet describes using a handheld PDA to browse and select music to play
`from a music collection stored on a PC “via infrared.” Id. at 20; see also id.
`at 17 (describing Petitioner’s general contentions regarding De Vet).
`According to Dr. Lavian, “the PC has an IrDA transceiver to communicate
`with the IrDA transceiver in the PDA.” Ex. 1013 ¶ 84. Thus, Dr. Lavian
`concludes De Vet describes that the “PDA communicates with the PC via a
`wireless infrared link.” Id.
`Patent Owner disagrees. Prelim. Resp. 17 (“De Vet . . . does not
`disclose or suggest that the connection is made using an IrDA link as
`Petitioner contends.”). For support, Patent Owner relies on De Vet’s Figure 2
`showing the PDA connected to the PC using a physical, wired connection
`from the PDA’s cradle to the PC and relies on De Vet’s description of
`“[c]onnecting the PDA to the PC would then result in an update of the
`catalogue.” Id. Patent Owner contends that De Vet’s use of the term
`“connecting” to describe updating the catalog should be differentiated from
`De Vet’s use of the term “link” when describing infrared communications. Id.
`Thus, Patent Owner’s position is use of the term “connecting” indicates
`updates to the catalogue are only performed using the wired connection and
`are not performed using the infrared (i.e., wireless) link. Patent Owner also
`contends that De Vet’s statement that “[t]he technology involved includes . . .
`infrared communication between the PDA to PC via an IrDA (Infrared Data
`Assocation) link” indicates that the infrared “communications travel from the
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`PDA to the PC only”; otherwise, De Vet would have stated “between PDA
`and PC.” Id. Patent Owner also contends that “Dr. Lavian admits that the
`term ‘connect’ as used in De Vet refers to a hardwired connection.” Id. at 18
`(citing Ex. 1013 ¶ 215). For these reasons, Patent Owner contends that De
`Vet’s “catalogue updates to the PDA are done via a wired connection, and not
`via a WPAN,” which requires a wireless connection. Id.
`Patent Owner also contends that De Vet’s catalogue is “fixed and
`contained in a data file which can only be altered manually.” Id. at 18
`(quoting Ex. 1003, 88). Thus, for this additional reason, according to Patent
`Owner, De Vet’s catalogue (i.e., “information describing content residing at
`the media device”) is not communicated to the PDA wirelessly (i.e.,
`“communicate with the media device when the mobile device” is within a
`certain wireless personal area network).
`Recognizing that Patent Owner has not yet had an opportunity to submit
`new testimonial evidence,9 we determine that Patent Owner’s contentions are
`not supported sufficiently in the present record. Concerning Patent Owner’s
`contention that De Vet’s “catalogue updates to the PDA are done via a wired
`connection” (Prelim. Resp. 17–18), the testimony of Petitioner’s declarant that
`De Vet’s “PC has an IrDA transceiver to communicate with the IrDA
`transceiver in the PDA” (Ex. 1013 ¶ 84) is supported by De Vet’s Figure 2
`showing a transceiver and De Vet’s description of “infrared communication
`between PDA to PC via an IrDA (Infrared Data Association) link” (Ex. 1003,
`88).
`
`
`9 See 37 C.F.R. § 42.107(c) (“The preliminary response shall not present new
`testimony evidence beyond that already of record, except as authorized by the
`Board.”).
`
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`Nor do we agree, on this record, that De Vet’s inartful phrase “between
`PDA to PC” (instead of “between PDA and PC,” as Patent Owner argues)
`means communications only travel from the PDA to the PC and do not travel
`from the PC to the PDA. We note that De Vet refers to an infrared
`“transceiver.” Ex. 1003, 88. A technical dictionary indicates that “transceiver”
`is “[a]lso known as transmitter-receiver” and refers to devices that both transmit
`and receive data. Ex. 3002 (defining “transceiver” and “transceiver data link”).
`De Vet’s use of the term “transceiver” to describe the infrared link further
`undermines Patent Owner’s position.
`We next address Patent Owner’s contention that De Vet’s catalogue is
`“fixed and contained in a data file which can only be altered manually.” Id.
`at 18 (quoting Ex. 1003, 88). De Vet’s full sentence reads: “The catalogue in
`the current prototype is fixed and contained in a data file which can only be
`altered manually.” Ex. 1003, 88 (emphasis added). The fact that De Vet’s
`prototype is limited does not negate the evidence of De Vet’s other catalogue
`descriptions cited by Petitioner and Dr. Lavian.
`Although Patent Owner asserts that paragraph 215 of Dr. Lavian’s
`declaration is an admission “that the term ‘connect’ as used in De Vet refers to
`a hardwired connection” (Prelim. Resp. 18), Dr. Lavian states in paragraph 215
`that “a POSITA would have understood that the catalogue update would occur
`over the IrDA connection, for example, 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.” Ex. 1013 ¶ 215 (emphasis added). Because the test for
`obviousness “is what the combined teachings of the references would have
`suggested to those having ordinary skill in the art,” Dr. Lavian’s testimony
`concerning how one of ordinary skill in the art would have understood the
`
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`reference is the critical issue—not whether Dr. Lavian agreed that “connection”
`means “hardwired.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing
`In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
`(b)
`“content residing at the media device”
`Claim 1 requires that the control system of the mobile device be
`adapted to “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.”
`Petitioner, with support from Dr. Lavian, contends that “De Vet discloses
`infrared communication between the PDA and the PC jukebox,” as discussed
`previously. Pet. 22–23; Ex. 1013 ¶¶ 84, 215. Petitioner also asserts, with
`Dr. Lavian’s support, that one of ordinary skill in the art “would understand
`that such infrared communication would require that the PDA be within the IR
`region of the PC jukebox, i.e. ‘within a wireless personal area network
`(WPAN) associated with the media device,’” as recited in claim 1. Pet. 23
`(citing Ex. 1013 ¶ 212). Petitioner also relies on Dr. Lavian’s testimony for
`the assertion that updates to the PDA’s catalogue “would occur over the IrDA
`connection.” Id. at 23 (citing Ex. 1013 ¶¶ 214–15).
`For the reasons previously discussed, we determine that Patent Owner’s
`contentions concerning De Vet’s IrDA connection are not supported
`sufficiently in the present record. Patent Owner’s arguments regarding Vidal
`(Prelim. Resp. 19–20) do not negate De Vet’s descriptions or Dr. Lavian’s
`testimony concerning what De Vet’s would have suggested to one of ordinary
`skill in the art.
`
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`On the present record, Petitioner has made a sufficient showing that the
`combination of De Vet and Vidal would have conveyed to one of ordinary
`skill in the art the limitations of claim 1.
`
`ii. Reasons to Combine De Vet and Vidal
`“[A] patent composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Rather,
`an asserted ground of obviousness must demonstrate articulated reasoning
`with rational underpinning to support the legal conclusion of obviousness.
`See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006)).
`Petitioner, with support of Dr. Lavian, provides reasons one of ordinary
`skill in the art would have combined the teachings of De Vet and Vidal in the
`manner proposed by Petitioner. See, e.g., Pet. at 18–20. For example,
`Petitioner contends that one of ordinary skill in the art
`would have been motivated to improve the general media
`jukebox and remote control system disclosed in De Vet with
`the communication methods of the remote control system
`disclosed by Vidal to enable specific access to and control of
`multiple media devices in a single room or area, as a particular
`solution for an application scenario posed in De Vet,
`specifically, how to allow the remote control to interact with
`multiple devices in the same room.
`Id. at 19 (citing Ex. 1013 ¶¶ 171–79). Petitioner also contends that one of
`ord