UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DIRECTV, LLC
`Petitioner
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`v.
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`QURIO HOLDINGS, INC.
`Patent Owner
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`CASE: IPR2015-02005
`Patent No. 7,787,904 B2
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`SUBSTITUTE PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,787,904 B2
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`Paper 3
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DIRECTV, LLC
`Petitioner
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`v.
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`QURIO HOLDINGS, INC.
`Patent Owner
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`CASE: IPR2015-02005
`Patent No. 7,787,904 B2
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`SUBSTITUTE PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,787,904 B2
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`Paper 3
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST .......................................................................................................... i
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`IV. OVERVIEW OF THE 904 PATENT ............................................................. 5
`A.
`SUMMARY OF THE 904 PATENT ................................................... 5
`B.
`LEVEL OF ORDINARY SKILL ......................................................... 7
`C.
`STATE OF THE PRIOR ART BEFORE THE 904 PATENT ............ 7
`D.
`SUMMARY OF THE PROSECUTION FILE HISTORY ................ 10
`PROPOSED CLAIM CONSTRUCTION .................................................... 11
`V.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 904 PATENT IS UNPATENTABLE .................... 11
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 11
`B.
`SUMMARY OF INVALIDITY POSITIONS ................................... 16
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CHALLENGED CLAIMS ............................... 17
`A. GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER DE VET IN VIEW OF VIDAL .............................................. 17
`B. GROUND 2: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER MORSE AND HOLLOWAY ................................................ 33
`C. GROUND 3: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER NETREMOTE AND RX3000 ............................................... 49
`VIII. CONCLUSION ............................................................................................. 60
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`-i-
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`Petition for Inter Partes Review of U.S. Patent 7,787,904 B2
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 7,787,904 B2 to Qurio Holdings, Inc. (“the 904
`Patent”)
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`Ex. 1002
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`File History of U.S. Patent No. 7,787,904 B2
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`Ex. 1003 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 (“De Vet”)
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`Ex. 1004 U.S. Patent Application Publication No. 2003/0193426 (“Vidal”)
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`Ex. 1005 U.S. Patent Application Publication No. 2005/0057538 (“Morse”)
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`Ex. 1006 U.S. Patent Application Publication No. 2006/0041655 (“Holloway”)
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`Ex. 1007
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`(Reserved)
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`Ex. 1008 NetRemote LE Installation Guide (“Installation Guide”)
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`Ex. 1009 NetRemote LE Network Configuration Guide (“Configuration
`Guide”)
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`Ex. 1010 NetRemote LE Setup Guide (“Setup Guide”)
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`Ex. 1011 October 13, 2004 Internet Archive Capture of
`http://www.promixis.com/products.php?section=netremote
`(“NetRemote Webpage”)
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`Ex. 1012 User’s Guide for HP iPAQ rx3000 series Mobile Media Companion,
`Document Part Number 364351-002, August 2004 (“RX3000”)
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`Ex. 1013 Declaration of Tal Lavian, Ph.D. (“Lavian Decl.”)
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`Ex. 1014 Declaration of John de Vet
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`Ex. 1015 Declaration of Ron Bessems
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`Ex. 1016 Declaration of Lisa Gade
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`-ii-
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`Petition for Inter Partes Review of U.S. Patent 7,787,904 B2
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`EXHIBIT LIST
`(continued)
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`Ex. 1017 Declaration of Christopher Butler
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`Ex. 1018 Declaration of Mark Dunlop, Ph.D.
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`Ex. 1019 Declaration of Sara Hare
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`Ex. 1020 U.S. Pub. No. 2001/0033244 A1 to Harris et al.
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`Ex. 1021 U.S. Patent No. 4,746,919 to Reitmeier
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`Ex. 1022 U.S. Pub. No. 2003/0115351 to Giobbi
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`Ex. 1023 U.S. Patent No. 7,571,014 to Lambourne et al.
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`Ex. 1024
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`Peter Tarasewich, Wireless Devices for Mobile Commerce: User
`Interface Design and Usability, in Mobile Commerce: Technology,
`Theory, and Applications 26-50 (2002).
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`Ex. 1025 Brad A. Myers, Using handhelds for wireless remote control of PCs
`and appliances 17 Interacting with Computers 251-264 (2005)
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`Ex. 1026
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`Labeled Claim Language of Claims 1-20 of U.S. Pat. No. 7,787,904
`B2
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`-iii-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, DIRECTV, LLC
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`(“Petitioner”) petitions for inter partes review (“IPR”) of claims 1-3, 10, 12, and
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`15-18 (“Challenged Claims”) of U.S. Pat. No. 7,787,904 B2 (“the 904 Patent,” Ex.
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`5
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`1001), assigned to Qurio Holdings, Inc. The 904 Patent describes a mobile device
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`that wirelessly communicates with media devices to select content to be played by
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`the media devices (i.e. a “smart remote”). Pursuant to 35 U.S.C. § 314(a), this
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`Petition shows the reasonable likelihood that Petitioner will prevail with respect to
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`at least one of the Challenged Claims, which are unpatentable under pre-AIA 35
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`U.S.C. § 102 and/or § 103 based on specific grounds listed below. In addition, this
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`Petition demonstrates invalidity of each challenged claim by a preponderance of
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`the evidence in compliance with 35 U.S.C. § 316(e). The Office is respectfully
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`requested to institute an IPR trial and to cancel the Challenged Claims.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`Real Party in Interest: Petitioner DIRECTV, LLC hereby identifies all real
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`15
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`parties in interest of this IPR as follows. Petitioner DIRECTV, LLC identifies
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`Petitioner DIRECTV, LLC and AT&T Services, Inc. as real parties in interest of
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`this IPR. Out of an abundance of caution, DIRECTV, LLC also identifies AT&T
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`Inc. as a real party in interest only for the purpose of this proceeding based on
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`recent decisions of the Patent Trial and Appeal Board, and only to the extent that
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`Patent Owner contends that this separate legal entity should be named a real party
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`in interest in this IPR. AT&T Inc. is and always has been a holding company that
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`is a legally and factually distinct entity from its subsidiaries. AT&T Inc. does not
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`provide any of the products and services at issue in the underlying patent
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`infringement lawsuit. Also, out of an abundance of caution, DIRECTV, LLC also
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`identifies the following companies as real parties in interest only for the purpose of
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`this proceeding based on recent decisions of the Patent Trial and Appeal Board,
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`and only to the extent that Patent Owner contends that each separate legal entity
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`should be named a real party in interest in this IPR: DIRECTV Enterprises, LLC;
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`DIRECTV Holdings LLC; The DIRECTV Group, Inc.; and DIRECTV Group
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`Holdings LLC. Each of these entities maintains its own independent status,
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`identity, and structure.
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`Related Matters: The 904 Patent and U.S. Patent Nos. 8,102,863 and
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`8,879,567 are asserted against Petitioner in an on-going lawsuit in Qurio Holdings,
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`Inc. v. DIRECTV, LLC, 3:15-cv-01986 (N.D. Cal), transferred from 14-cv-07502
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`(N.D. Ill. Sept. 26, 2015). Petitioner is also pursuing IPR of U.S. Patent Nos.
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`8,102,863 and 8,879,567. The 904 Patent is also asserted in Qurio Holdings, Inc. v.
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`Dish Network Corp. 15-cv-00930 (N.D. Cal.), and Qurio Holdings, Inc. v. Comcast
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`Cable Communications LLC, 15-cv-03334 (E.D. Pa.). On September 28, 2015,
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`Unified Patents Inc. filed an unrelated IPR petition challenging claims 1-5, 7-10,
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`12, and 14-18 of the 904 Patent, assigned Case No. IPR2015-01991.
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`Notice of Counsel and Service Information: Pursuant to 37 C.F.R.
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`§§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Petitioner appoints Thomas N. Millikan
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`(Reg. No. 72,316) as its lead counsel, and Kevin J. Patariu (Reg. No. 63,210),
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`Joseph P. Reid (Reg. No. 72,317), Bing Ai (Reg. No. 43,312), and Stephen A.
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`Brookman (Reg. No. 65,152) as its back-up counsel. The above attorneys are all at
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`the mailing address of Perkins Coie LLP, 11988 El Camino Real, Suite 350, San
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`Diego, CA 92130, contact numbers of 858-720-5700 (phone) and 858-720-5799
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`(fax), and the following email for service and all communications:
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`DIRECTV-Qurio-Service-IPR@perkinscoie.com
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`Petitioner hereby consents to electronic service under 37 C.F.R. § 42.6(e). Pursuant
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`to 37 C.F.R. § 42.10(b), a Power of Attorney executed by Petitioner for appointing
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`the above designated counsel is concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all requirements under 37 C.F.R. §§ 42.104,
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`42.105 and 42.15 and thus should be accorded a filing date as the date of filing of
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`this Petition pursuant to 37 C.F.R. § 42.106.
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`Ground for Standing: Pursuant to § 42.104(a), Petitioner hereby certifies
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`that the 904 Patent is available for IPR and that the Petitioner is not barred or
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`estopped from requesting IPR challenging claims of the 904 Patent on the grounds
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`identified herein. Specifically, Petitioner has the standing, or meets all
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`requirements, to file this Petition under 35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1)
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`and 325(e)(1) and 37 C.F.R. §§ 42.73(d)(1), 42.101 and 42.102.
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`Identification of the Challenge: Pursuant to 37 C.F.R. §§ 42.104(b) and
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`42.22, the precise relief requested is that the Board cancel the Challenged Claims
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`of the 904 Patent because they are invalid on the grounds and evidence presented
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`and relied upon in this Petition: De Vet, Vidal, Morse, Holloway, Installation
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`Guide, Configuration Guide, Setup Guide, NetRemote Webpage, and RX3000,
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`attached as Exhibits and discussed in more detail in Section V.A.
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`Supporting Evidence Relied Upon for the Challenge: The supporting
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`evidence includes what is in the Exhibit List or what is referred in the papers filed
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`with this Petition, including but not limited to the Declaration of Tal Lavian, Ph.D.
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`(Ex. 1013) supporting the invalidity grounds, the Declaration of John de Vet (Ex.
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`1014) regarding the de Vet reference in Ex. 1003, the Declaration of Mark Dunlop,
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`Ph.D. (Ex. 1018) regarding the de Vet reference in Ex. 1003, the Declaration of
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`Ron Bessems (Ex. 1015) regarding the NetRemote references in Exs. 1008-1011,
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`the Declaration of Lisa Gade (Ex. 1016) regarding the RX3000 reference in Ex.
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`1012, the Declaration of Christopher Butler (Ex. 1017) regarding various Internet
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`Archive references, including Ex. 1003 and Exs. 1008-11, and the Declaration of
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`Sara Hare (Ex. 1019) regarding the collection of Exhibits and Appendices are filed
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`herewith.
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`Statutory Grounds of Challenge: This IPR is governed by pre-AIA 35 U.S.C.
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`§§ 102 and 103 that were in effect before Mar. 16, 2013 and 35 U.S.C. §§ 311 to
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`319 and 325 that took effect on Sep. 16, 2012.
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`Rule of Claim Construction: A claim in an unexpired patent such as the 904
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`Patent “shall be given its broadest reasonable construction in light of the
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`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see In re
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`Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1280 (Fed. Cir. 2015).
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`Unpatentability of Each Claim: Pursuant to 37 C.F.R. § 42.104 (b)(4),
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`Section VI provides an explanation of how the Challenged Claims are unpatentable
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`under 35 U.S.C. § 103, including the identification of where each element of the
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`claim is found in the cited prior art of patents or printed publications.
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`IV. OVERVIEW OF THE 904 PATENT
`The 904 Patent issued on Aug. 31, 2010 from an application filed on Nov. 9,
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`2005, which is the earliest priority date of the 904 Patent.
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`SUMMARY OF THE 904 PATENT
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`A.
`The 904 Patent describes a mobile device that wirelessly communicates with
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`media devices to select content to be played by the media devices (i.e. a “smart
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`remote”). See, e.g., Ex. 1001, Abstract; 3:4-8, 41-47; 4:15-20, 38-40; Figs. 2-4 and
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`6. Fig. 6 is shown below to illustrate various features disclosed in the 904 Patent.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`The mobile device, such as a mobile phone, a PDA, or “a stand-alone device
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`similar to a remote control,” has a control system and a wireless communication
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`interface for communicating (e.g., via a WPAN such as Bluetooth or WiFi) with
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`the media devices. Ex. 1001, 1:29-30; 4:4-7, 15-20. The control system of the
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`mobile device includes a media client and a media database of information about
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`the media content. Id. at 4:21-23; 5:22-26; Figs. 3, 5. The media client of the
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`mobile device wirelessly interacts with a media server (associated with a media
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`device) to obtain data describing the content in a content database (also associated
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`with the media device), such as filename, file type, or genre. Id. at 4:25-33; 5:22-
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`26; 6:19-20; Fig. 3; Fig. 5. The media database of the mobile device stores the
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`metadata, which a user can browse to select content for play. Id. at 4:30-31, 38-40.
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`The media client in the mobile device directs the media server associated
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`with the media device to play content, and the media server directs a media player
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`(also associated with the media device) to play the content from the content
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`database. Ex. 1001, 6:33-40, Fig. 4, Fig. 6. PCs, DVRs, audio players (e.g., MP3
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`players), and digital picture frames are examples of media devices. Id. at 3:26-31.
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`Each media device includes the content database (e.g., a hard drive or RAM), a
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`wireless communication interface for communicating with the mobile device (e.g.,
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`via Bluetooth or WiFi), and a control system. Id. at 3:32-35, 54-57. The control
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`system includes the media player and the media server. Id. at 3:48-49.
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`LEVEL OF ORDINARY SKILL
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`B.
`A person of ordinary skill in the art (POSITA) as of the earliest date for
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`which the 904 Patent can claim priority (Nov. 2005) would have possessed at least
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`a bachelor’s degree in computer science and/or electrical engineering and two
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`years of experience in internet, networking, or related software technologies, as
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`well as familiarity with mobile wireless devices and communications. Lavian Decl.
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`at ¶ 33. Such a person would have familiarity with communications between
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`wireless clients and hosts, as well as various wireless standards such as Wi-Fi or
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`Bluetooth. Id.
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`STATE OF THE PRIOR ART BEFORE THE 904 PATENT
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`C.
`The purported technology claimed in the 904 Patent was old and well-known
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`long before Nov. 9, 2005. See e.g., Lavian Decl. at ¶¶ 35, 152. For example,
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`wireless remote controls for media players were introduced before 1950. Id. at ¶40.
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`Mobile devices such as PDAs and cellular telephones were available in the 1990’s.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`Id. at ¶¶ 43-44. Wireless communication between devices via Wi-Fi, infrared, and
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`Bluetooth were all in the prior art. Id. at ¶¶ 45-48; see Ex. 1001 at 4:15-20.
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`The concept of retrieving information from a device and controlling the
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`device remotely based on that information (including outputting content based on
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`that information) was also well-known in the public domain. For decades, UNIX
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`terminals could connect to a computer over a network to retrieve information about
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`files stored by the computer (such a file listing) in response to a user command.
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`Lavian Decl. at ¶¶ 50-51. The terminal user could perform an operation on those
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`files, such as sending the file to a printer connected to the computer. Id.
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`Similar concepts – such as networked arrangements to browse and control
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`the playback of digital content on remotely controlled devices – were disclosed for
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`wireless remote control devices well before the 904 Patent’s priority date. See
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`Lavian Decl. at ¶¶ 53-59. For example, in 1986, the prior art included a system in
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`which a device to be controlled (e.g., TV, VCR) wirelessly transmitted information
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`to a touch-screen remote control to identify functions of on-screen buttons. See Ex.
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`1021 (Patent No. 4,746,919 (filed Mar. 28, 1986)); Lavian Decl. at ¶ 52. In 2001,
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`the prior art disclosed a Bluetooth remote control that received media information
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`(e.g., track listing on a CD) from a control station for display on a screen on the
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`remote control for a user to select media to play. Ex. 1020 (Patent Application
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`Publication No. 2001/0033244, published Oct. 25, 2001) at ¶¶ 70-74; Figs. 14, 15;
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`Lavian Decl. at ¶ 52; see Ex. 1002 at 46-61 (October 2005 prior art explaining
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`“Bluetooth Remote Control is a remote controller for your PC” and showing
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`control of iTunes from the mobile device); Lavian Decl. at ¶¶ 40-42, 52-58.
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`U.S. Patent Publication No. 2003/0115351 (published Jun. 19, 2003)
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`disclosed remote media clients connected to a centralized digital content server and
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`controlled by a wireless (e.g., Bluetooth) remote control with a screen for
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`displaying and selecting content available on the server for streaming to a remote
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`media client for playback. See, e.g., Ex. 1022 at ¶¶ 0009-12; Lavian Decl. at ¶53.
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`In another sophisticated example, over a year before the 904 Patent’s
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`application, a patent application was filed for a system in which a wireless (e.g.,
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`WiFi) remote control displayed a plurality of zones, each having one or more
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`media players, along with a selection of tracks available to play on the media
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`players. See Ex. 1023 (patent filing in June 2004); Lavian Decl. at ¶ 54. The
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`remote control allowed a user to select tracks to play at the media players
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`individually (e.g., each device plays a different track at a different volume) or
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`synchronously (e.g., each device plays the same track), using track information
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`displayed on the remote control. Ex. 1023 at Fig. 3B, 3C; Lavian Decl. at ¶ 54.
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`These technologies were so common that by July 2004, one author wrote an
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`entire article about using handhelds that displayed functions and media information
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`on-screen as wireless remote controls. Ex. 1025; see Lavian Decl. at ¶¶ 55-58.
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`Accordingly, the concept of remotely controlling media files on media
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`devices by selecting from options stored in a mobile device (and displayed on a
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`screen) was old and well known. Long before the priority date of the 904 Patent, a
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`POSITA would not have recognized any novelty in the claimed features. Lavian
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`Decl. at ¶ 513. Thus, the Challenged Claims are nothing more than belated
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`attempts to claim what was already known in the industry. Yet, none of the
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`references relied on for proposed grounds of rejection in this Petition were
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`identified by or considered by the Office during the prosecution of the 904 Patent.
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`SUMMARY OF THE PROSECUTION FILE HISTORY
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`D.
`During the original prosecution, the claims of the 904 Patent were rejected
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`twice in two non-final Office Actions using the same base reference, which related
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`to controlling user access of content at a mobile terminal. Ex. 1002 at 85-92 (first
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`non-final action); 101-105 (response to first non-final action); 116-130 (second
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`non-final action); 134-143 (response to second non-final action). Then,
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`surprisingly, the claims were allowed without having been amended and without
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`any record suggesting the reasons for allowance. See Ex.1002 at 146-152.
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`As shown by the cited prior art references in this Petition, the Examiner
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`relied on an incomplete record of relevant prior art during the examination and did
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`not know that the subject matter of the issued claims in the 904 Patent was well
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`known before its filing date and thus was not patentable.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`V.
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`PROPOSED CLAIM CONSTRUCTION
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`Petitioner proposes construction of one claim term below pursuant to the
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`broadest reasonable interpretation (BRI) standard for inter partes review. The
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`proposed BRI claim constructions are offered only to comply with 37 C.F.R. §§
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`5
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`42.100(b) and 42.104(b)(3) and for the sole purpose of this Petition, and thus do
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`not necessarily reflect appropriate claim constructions to be used in litigation and
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`other proceedings where a different claim construction standard applies. The term
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`of “Mobile Device” in each of the Challenged Claims is construed under BRI to
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`mean “[A] mobile phone, Personal Digital Assistant (PDA), or the like [or] a
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`stand-alone device similar to a remote control.” Ex. 1001 at 4:4-7; Lavian Decl. at
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`¶¶ 77-78. All other claim terms in the Challenged Claims are construed to have
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`their respective plain and ordinary meaning under BRI.
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 904 PATENT IS UNPATENTABLE
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103(a) for
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`merely reciting known, predictable and/or obvious combinations of the prior art.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`A.
`De Vet (Ex. 1003): De Vet is prior art under §102(b) because it was
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`published in 1999. Ex. 1014 at ¶¶ 6-7, 12 (declaration by co-author describing
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`submission and presentation of De Vet at technology conference in 1999, and
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`access by public to a copy on a website); Ex. 1018 at ¶¶ 20-21 (declaration by
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`conference co-organizer describing public access to De Vet on website and
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`presentation at conference); Ex. 1017 at Ex. A, p. 78-82 (internet archive
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`declaration of Christopher Butler showing publication on internet on March 14,
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`2003). Other printed papers and publications cited this paper well before the filing
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`5
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`of the 904 Patent. See, e.g., Ex. 1024 at 13. De Vet discloses using a handheld
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`PDA device as a catalogue and remote control to browse, select, and play music
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`tracks in a virtual CD jukebox (i.e., a CD collection in MP3 format on a PC)
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`organizing the tracks available for playback by CD. Ex. 1003 at 87-88. The PDA
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`displays attributes such as genre, artist, release year, and album. Id. at 87-88. The
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`10
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`PDA communicates with the PC via a wireless infrared link. Id. at 88. Connecting
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`the PDA to the PC results in an update of the catalogue, which is stored and
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`available for viewing even when the PDA is out of range of the PC. Id. at 88-89.
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`De Vet also discloses controlling multiple devices and using the PDA to store a
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`catalog of video discs or videotapes, or to function as an electronic program guide
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`15
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`for television. Id. at 89.
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`Vidal (Ex. 1004): Vidal was a U.S. patent application published on Oct. 16,
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`2003, and thus is prior art under §102(b). Vidal discloses a touch-screen universal
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`remote control that wirelessly communicates with and controls a plurality of
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`appliances (e.g., TV, stereo, computer, DVD player, MP3 player). Ex. 1004 at
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`20
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`Abstract, ¶¶ 0019, 0033, Figs. 1, 2. The remote control automatically discovers
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`appliances through the wireless communication interface (e.g., Bluetooth or other
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`RF or infrared link) and provides a user with options to choose an appliance. Id. at
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`¶¶ 0035-38, 0052, 0055, Figs. 2, 5. Upon selection of an appliance, the remote
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`control requests a menu description from the appliance. Id. at ¶¶ 0036, 0053, 0057,
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`5
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`Fig. 6. The appliance responds with the menu description, which is a specification
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`that the remote control interprets to configure the user interface screen to display a
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`menu of options (e.g., play, stop, fast-forward) for a user to operate the appliance
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`with the remote control. Id. at ¶¶ 0020, 0036, 0041-42, 0053, 0057, Fig. 3. Data
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`sent from the appliance to the remote control for display may also include the title
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`10
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`of a movie being played and progress within the movie. Id. at ¶¶ 0041-42, 0059,
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`Fig. 3.
`
`Morse (Ex. 1005): Morse was a patent application filed on Sept. 2, 2003 and
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`published on Mar. 17, 2005. Morse is prior art under at least §§102(a) and 102(e).
`
`Morse describes a playback unit that communicates content data (e.g., audio track
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`15
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`titles, album names, and video clip titles) about digital media files stored on a
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`media content storage device. Ex. 1005 at ¶¶ 0029, 0035-36, 0054-55; Fig. 2. The
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`content data is communicated to a remote control device that displays it to a user.
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`Id. The displayed information is used to browse the content data on the remote
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`control and select media for playback at a playback device (e.g., a TV or stereo
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`20
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`system). Id. A single remote control can communicate with more than one
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`-13-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`playback unit. Id. at ¶¶ 0040, 0043, 0048, Fig. 10.
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`Holloway (Ex. 1006): Holloway is prior art under at least § 102(e) because
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`it is a Feb. 23, 2006 publication of an application filed on Jan. 5, 2005, and claims
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`priority to a provisional application filed on May 6, 2004. Holloway discloses a
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`5
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`wireless remote control for controlling a host A/V system using Bluetooth bi-
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`directional communication. Ex. 1006 at Abstract, ¶¶ 0081, 0116, 0363-65. The
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`host A/V system is an assembly of various A/V elements in a single chassis, such
`
`as a CD player, an MP3 player, and a hard drive. Id. at ¶¶ 0052, 0059, 0063, Figs.
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`1-7. The remote control receives a menu of options and information from the host
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`10
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`A/V system for display to a user, such as media titles and “a file system [for the
`
`internal hard drive] so that the user can select a file to play back.” Id. at ¶¶ 0132,
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`0210; Figs. 11A, 11B. One remote can control all hosts in an environment having
`
`multiple hosts. Id. at ¶ 0385. To do this, the remote can display hosts with which
`
`it can communicate, and a user can select a host to control. Id.
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`15
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`NetRemote LE Installation Guide (“Installation Guide”) (Ex.1008),
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`NetRemote LE Network Configuration Guide (“Configuration Guide”) (Ex.1009),
`
`NetRemote LE Setup Guide (“Setup Guide”) (Ex. 1010), the NetRemote Webpage
`
`(Ex.1011) (collectively, “NetRemote”): The NetRemote documents were each
`
`publically available and published online in connection with sales and support of
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`20
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`NetRemote software by at least Jan. 20, 2005, and describe different aspects of the
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`-14-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`installation, setup, and use of the NetRemote software. Ex. 1015 at ¶¶ 11-29; Ex.
`
`1017 at Ex. A, pp. 4-21 (showing Installation Guide publicly available on the
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`internet as of January 20, 2005), pp. 22-34 (showing Configuration Guide publicly
`
`available on the internet as of January 19, 2005), pp. 23-52 (showing Configuration
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`5
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`Guide publicly available on the internet as of January 20, 2005). Accordingly, the
`
`NetRemote documents are each prior art printed publications under at least
`
`§ 102(a). The NetRemote references disclose a handheld PDA device configured
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`to provide 2-way wireless (Wi-Fi) remote control functionality of a computer. Ex.
`
`1010 at 1,7; Ex. 1011. The PDA receives media information (e.g., by title or
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`10
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`album cover) from a computer about the music available for playback on that
`
`computer. Id. The user can view and browse this information on the PDA, and
`
`send a command to the computer to play the selected music. Id.
`
`RX3000 (Ex.1012): The RX3000 is dated Aug. 2004, and is a common
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`manual for several HP PDAs, including the HP iPAQ RX3115 handheld
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`15
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`computing device, and the manual was included with the product available for
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`public purchase by at least Sept. 2004 (Ex. 1016 at ¶¶ 6-16). RX3000 is a prior art
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`printed publication under § 102(b). RX3000 discloses a portable handheld
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`computing device that allows the user to view a list of media files stored on a
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`server. Ex.1012 at 121, 182-186. The user can “browse and play music, photos,
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`20
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`and video collections over a wireless network” and to “[p]lay and control digital
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`media on PCs connected to your Wi-Fi network.” Id. RX3000 discloses using the
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`device to select a media server from which a user wants to access media, select a
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`media player on which the user wants the media to play, and selecting the media
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`itself for play. Id. at 182-184. RX3000 discloses copying and storing media
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`5
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`information to the device for later playback and viewing. Id. at 121, 189-90.
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`None of the prior art references relied upon in this Petition were on record
`
`during the original examination of the 904 Patent. See generally, Ex. 1002.
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`SUMMARY OF INVALIDITY POSITIONS
`
`B.
`The cited references disclose all elements and combinations recited in the
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`10
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`Challenged Claims. Specifically, the cited references disclose mobile devices that
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`receive and store information over a wireless interface about media from media
`
`devices. The mobile device displays the information to a user so that a user can
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`browse and select media for playback by the media device, issuing a playback
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`command over a wireless interface. The cited references and other evidence in this
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`15
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`Petition establish a reasonable likelihood Petitioner will prevail with respect to its
`
`challenge of the patentability of at least one of the Challenged Claims, as explained
`
`below. Specifically, the Challenged Claims are rendered obvious by De Vet in
`
`view of Vidal, by Morse in view of Holloway, and by the NetRemote references in
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`view of RX3000.
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`20
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`Additionally, the Declaration of Tal Lavian, Ph.D., an expert with
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`-16-
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`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`considerable knowledge and practical experience in this technical field, confirms
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`Petitioner’s invalidity positions and also provides further details as to how the
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`technology in the 904 Patent was well-known and implemented as a matter of
`
`routine in the systems and software that were in existence well before the priority
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`5
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`date of the 904 Patent. See generally Lavian Decl.
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`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CHALLENGED CLAIMS
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`Petitioner respectfully submits that the need for just resolution of the
`
`unpatentability issues urges the full adoption of all proposed invalidity grounds.
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`10
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`An index of claim limitations is included as Ex. 1026.
`
`A. GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER DE VET IN VIEW OF VIDAL
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`Both De Vet and Vidal describe remote control systems for media players.
`
`De Vet discloses using a handheld PDA to browse and select tracks for play in a
`
`15
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`media collection on a PC via infrared. Ex. 1003 at 88. De Vet discloses that a
`
`remote control could be advantageously used to control multiple devices in the
`
`same room and access a variety of content on those devices (e.g., collections of
`
`videodiscs or an electronic program guide for TV programming). Id. at 89; see
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`Lavian Decl. at ¶¶ 160, 177. De Vet teaches and renders obvious every limitation
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`20
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`of the Challenged Claims, but Petitioner further cites Vidal in this Ground for
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`additional technical teachings, for example, a design choice of using Bluetooth
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`-17-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,787,904 B2
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`communication to select and control devices and facilitate secure communications.
`
`In the same field of remote control systems for media players as De Vet,
`
`Vidal also discloses a touch screen remote control system that wirelessly
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`communicates with multiple devices, using protocols such as Bluetooth. See, e.g.,
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`5
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`Ex. 1004 at ¶¶ 0033, 0040, 0047, 0048, 0052, 0055. The wireless communication
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`in Vidal also discloses using the remote control to select and operate a specific
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`device out of several devices. Id. at ¶¶ 0036, 0041, 0053.
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`De Vet and Vidal teach technologies in the same field of remotely
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`controlling devices and both address similar technical problems related to
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`10
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`presenting options on a remote controlto a user. Lavian Decl. at ¶¶ 163, 200. De
`
`Vet discl
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