UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`CHESTNUT HILL SOUND INC.,
`Patent Owner
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`Case IPR2016-00794
`Patent 8,090,309
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
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`TABLE OF CONTENTS
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`I. 
`II. 
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`Introduction ...................................................................................................... 1 
`It is undisputed that the prior art teaches nearly all of the Challenged Claims
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`3 
`III.  The combination of AbiEzzi and Baumgartner renders claim 9 obvious ....... 4 
`A. 
`The combination of AbiEzzi and Baumgartner teaches claim 9 ........... 4 
`B. 
`Patent Owner improperly attempts to rewrite claim 9 to require
`"additional, unrecited components" and functionality .................................... 6 
`IV.  The combination of AbiEzzi and Baumgartner teaches that “the remote
`media source is a server” ........................................................................................... 8 
`A. 
`The media server and jukebox of AbiEzzi together teach all elements
`of independent claims 6 and 14 ....................................................................... 8 
`B. 
`The media source of AbiEzzi is a server ............................................. 10 
`C. 
`Patent Owner's claim differentiation arguments are misplaced .......... 12 
`V.  A POSITA would have been motivated to combine AbiEzzi and
`Baumgartner as described in the Petition and accompanying evidence .................. 13 
`A. 
`Patent Owner does not dispute Petitioner's stated reasons to combine
`on the merits .................................................................................................. 13 
`B. 
`Patent Owner fails to address evidence from the Barton, Klemets and
`Baumgartner references offered in support of the stated reasons to combine
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`17 
`C. 
`Patent Owner improperly dismisses Dr. Mercer’s testimony
`supporting Petitioner's stated reasons to combine ......................................... 18 
`D. 
`Patent Owner’s reliance on the Arendi and ActiveVideo cases is
`misplaced ....................................................................................................... 19 
`E. 
`Patent Owner’s attempts to cast doubt on the authenticity of Dr.
`Mercer’s opinions are without merit ............................................................. 20 
`VI.  Patent Owner's evidence of alleged “secondary considerations” is lacking . 21 
`A. 
`Patent Owner’s alleged awards and critical praise are unrelated to the
`Challenged Claims ......................................................................................... 21 
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
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`B. 
`Petitioner’s later Ko filing is unrelated to the Challenged Claims ..... 24 
`Patent Owner did not even attempt to show nexus to the Challenged
`C. 
`Claims ............................................................................................................ 25 
`VII.  CONCLUSION ............................................................................................. 26 
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
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`EXHIBIT LIST
`APPLE-1001 U.S. Patent No. 8,090,309 to Krampf et al. (“the ’309 Patent”)
`APPLE-1002 Prosecution History of the ’309 Patent (“the Prosecution
`History”)
`APPLE-1003 Declaration of Professor Ray Mercer (“Mercer”)
`APPLE-1004 Curriculum Vitae of Professor Ray Mercer
`APPLE-1005 US Publication No. 2005/0132405 (“AbiEzzi”)
`APPLE-1006 US Patent No. 6,563,769 (“Van Der Meulen” or “VDM”)
`APPLE-1007 US Patent No. 8,156,528 (“Baumgartner”)
`APPLE-1008 US Patent No. 6,728,729 (“Jawa”)
`APPLE-1009 US Publication No. 2003/0236906 (“Klemets”)
`APPLE-1010 US Publication No. 2002/0129693 (“Wilks”)
`APPLE-1011 US Patent No. 8,577,205 (“Barton”)
`APPLE-1012 US Patent No. 7,542,814 (“Barr”)
`APPLE-1013 US Publication No. 2002/0093593 (“Perkes”)
`APPLE-1014 US Patent No. 5,666,422 (“Harrison”)
`APPLE-1015 US Patent No. 6,897,905 (“Kaminosono”)
`APPLE-1016 US Publication No. 2002/0080166 (“Sweatt”)
`APPLE-1017
`IPR2015-01465, Paper 39 (PTAB January 10, 2017)
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
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`I.
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`Introduction
`In its Patent Owner Response ("POR"), Patent Owner touts the subject
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`matter in its ’309 patent as “allowing a user to select and play co-housed or directly
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`connected media and … allowing a user to select and play remote media." POR, 7.
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`But, it makes no assertions of novelty or inventiveness in playing co-housed or
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`directly connected media or in operating as a remote controller for selecting and
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`playing remote media. In essence, Patent Owner claims it revolutionized the audio
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`world by placing a local media player and a remote media player in the same
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`device. But see KSR v. Teleflex, 127 S. Ct. 1727, 1740 (2007). However, as
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`explained in the Petition and undisputed by Patent Owner, numerous devices
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`integrating different types of media players, including local and remote media
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`players, existed at the time of the '309 patent and are described in the Petition. See,
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`e.g., Petition, 10-11 (citing Klemets, Abstract; Barton, Abstract, 2:21-36;
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`Baumgartner, 6:1-3 and 20-22 and FIG. 19).
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`In fact, the ’309 patent failed to claim this supposedly revolutionary new
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`kind of media player, but instead claimed a method of retrieving media metadata
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`from a remote source; one that is agnostic to details of the hardware and rendered
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`obvious by the combination of AbiEzzi and Baumgartner. Despite Patent Owner’s
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`lofty claims that the ’309 patent “changed the way users interacted with their
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`multimedia content,” it only argues that a single element of the independent claims
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
`(a “processor unit”) was not proved up by the Petition. POR, 10-13. And in this
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`single argument, Patent Owner argues not that the combination fails to teach the
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`plain language of the independent claims, but that the Petition fails to address what
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`Patent Owner describes as “additional, unrecited components” of the claim. This
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`argument is plainly grasping at straws, as it attempts to add limitations to the claim
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`that do not appear in the claim language and contradicts the specification’s own
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`broad definition of “processor unit.” If Patent Owner intended the claim to require
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`these “additional, unrecited components” it should have recited them in the claim.
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`Recognizing its position of weakness, Patent Owner attacks Petitioner’s
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`evidence that a POSITA would have been motivated to combine the AbiEzzi and
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`Baumgartner references. Notably, Patent Owner does not challenge the sufficiency
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`of Petitioner’s reasons to combine themselves, but instead only argues (incorrectly)
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`that they are unsupported by evidence. In doing so, Patent Owner ignores evidence
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`cited to support Petitioner's stated reasons to combine (the Baumgartner, Barton,
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`and Klemets references), leaving Petitioner’s reasons to combine undisputed on the
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`merits, and supported by uncontroverted evidence. See, e.g., Petition, 10-11
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`(citing Baumgartner, 6:1-3 and 20-22 and FIG. 19; Klemets, Abstract; Barton,
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`Abstract).
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`The POR creates a sideshow attempting to distract the Board from the merits
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`of the case. However, Patent Owner cannot escape two simple facts:
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
`The combination of AbiEzzi and Baumgartner teaches all elements of
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`1)
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`the Challenged Claims of the ’309 patent; and
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`2)
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`A POSITA would have combined AbiEzzi and Baumgartner for the
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`reasons stated in the Petition.
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`II.
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`It is undisputed that the prior art teaches nearly all of the Challenged
`Claims
`Patent Owner does not dispute that the combination of Baumgartner and
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`AbiEzzi teaches all elements of claims 1-5, 7, 8, and 10-13 of the ’309 patent, and
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`only argues that the combination of AbiEzzi and Baumgartner fails to teach an
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`element of independent claim 9 (“a processor unit”) and an element common to
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`dependent claims 6 and 14 (that the “media source is a server). See POR, 4, 11,
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`13. Further, as described above, Patent Owner does not dispute the Petition’s
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`stated reasons to combine AbiEzzi and Baumgartner on the merits, and instead
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`erroneously attacks them as unsupported by evidence. However, as described in
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`greater detail below, the Petition’s stated reasons to combine are supported by
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`uncontroverted evidence (the Baumgartner, Klemets, and Barton references and
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`Dr. Mercer’s testimony). See, e.g., Petition, 10-11.
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`Thus, regardless of how the Board resolves the remaining issues addressed
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`in the present Reply, it should find claims 1-5, 7, 8, and 10-13 of the ’309 patent
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`unpatentable as obvious over the combination of AbiEzzi and Baumgartner.
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`Attorney Docket No: 39521-0016IP2
`III. The combination of AbiEzzi and Baumgartner renders claim 9 obvious
`A. The combination of AbiEzzi and Baumgartner teaches claim 9
`The basis for all arguments presented in the Petition is that it would have
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`been obvious to integrate the “first mode” functionality taught by Baumgartner and
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`the “second mode” functionality taught by AbiEzzi into “a unified device.”
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`Petition, 9 (citing Mercer, ¶25; Baumgartner, 1:24-27, 6:1-3, 22:50-60; AbiEzzi,
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`Abstract, ¶0024). In this unified device, the Petition explains that the “first mode”
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`functionality of Baumgartner and “second mode” functionality of AbiEzzi could be
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`implemented as “computer-executable instructions … executed by a personal
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`computer” using a “microprocessor,” as taught by AbiEzzi. See Petition, 26. The
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`Petition thus contemplates that the “unified device” of the combination of AbiEzzi
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`and Baumgartner includes “a processor unit,” as in claim 9, implementing both the
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`first mode functionality taught by Baumgartner and the second mode functionality
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`taught by AbiEzzi. See id. at 9-11, 26. Further, the Petition provides a detailed
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`analysis of the reasons a POSITA would have been motivated to perform this
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`combination, as well as multiple examples of such combined devices from the
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`prior art. See Petition, 9-11 (citing Mercer, ¶27; Klemets, Abstract (a device for
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`playing local and remote content); Barton, Abstract (a combination DVD/PVR);
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`Baumgartner, 6:1-3, 6:20-22, FIG. 19 (a set-top box with an integrated PVR and
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`VCR).
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`Patent Owner’s argument against reliance on AbiEzzi’s processor, alone, in
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`the unified device to meet the processor limitation of claim 9 is baseless. For
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`example, contrary to the Patent Owner’s assertions, there can be no dispute that
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`Baumgartner discloses a processor operating in the first mode. In asserting
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`otherwise, the Patent Owner flatly ignores the Petition’s repeated citations to
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`Baumgartner showing that its system, like AbiEzzi’s, is implemented using a
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`“processor.” See id. at 11 (citing Baumgartner, FIG. 8 and 13:19-38 (showing and
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`describing a “processor 812” used to implement the PVR functionality)). Patent
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`Owner likewise wholly ignores the analysis of claim 9 in Dr. Mercer’s declaration
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`to assert “a review of the [sic] Mercer’s Declaration reveals that the processor
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`element recited by claim 9 is not addressed or mentioned at all.” POR, 11
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`(ignoring Mercer, ¶98).
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`Even still, the ‘309 patent only addresses the high level functionality of
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`having a first mode and having a second mode, and provides little detail
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`concerning how to implement it. For example, the ‘309 patent is devoid of details,
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`such as method flow charts or particulars of algorithms, that would be necessary to
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`support claims to a novel processing method or algorithm. Similarly, the ‘309
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`patent appends no importance to the hardware details of its processor. Notably, the
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`‘309 patent’s processor 115 is represented in all the figures as merely a simple box,
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`and the ‘309 patent includes no assertion that its processor 115 is novel or even
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`some particular type of processor. See ‘309 patent, FIGS. 3 and 12, 7:22-30. In
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`fact, the ‘309 patent explains that its processor can be “any [] form of information
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`processing device.” Id. That the ‘309 appends no special importance to its
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`processor is unsurprising, given that, contrary to Patent Owner’s unsupported
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`assertions, processors that enable operating with both remote and local media
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`sources were widely known at the time. See, e.g., Klemets, Abstract and [0104]-
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`[0105] (describing a device, implemented with a processor, operable to stream
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`content from a remote server and play stored recordings from local storage).
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`Either processor, Baumgartner’s or AbiEzzi’s, is a “form of information processing
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`device.” Thus, either processor, used to perform the method advanced by the
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`Petition as obvious over AbiEzzi and Baumgartner could suffice to meet the
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`claimed “processor unit.” Yet, citing to both Baumgartner’s and AbiEzzi’s
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`processor for the processor limitation of claim 9, as Patent Owner suggests is
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`required, would be inconsistent with the express language of the claim. Claim 9
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`recites “a processor,” i.e., a single processor.
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`B. Patent Owner improperly attempts to rewrite claim 9 to require
`"additional, unrecited components" and functionality
`Patent Owner further argues that “a processor alone is not sufficient to
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`accomplish the two-mode operation recited in claim 9,” and that AbiEzzi and
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`Baumgartner fail to teach the “additional, unrecited components needed for
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`switching between the first and second mode.” POR, 12. Yet, for Patent Owner to
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`allege that some concocted “additional, unrecited components” are embedded in
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`the recitation of “a processor” in claim 9 is inconsistent with the ‘309 patent.
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`Foremost, Patent Owner is trying to read limitations into claim 9 that, under
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`the broadest reasonable interpretation, do not exist. Even Patent Owner admits that
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`these additional components are “unrecited” in claim 9. Moreover, Patent Owner
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`does not identify what “additional, unrecited components” it alleges are required
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`by claim 9, and only vaguely alludes, without citation to a technical expert or some
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`other source, to “some further hardware or mechanical requirements [that] could
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`be implicated.” See id. (emphasis added). The Patent Owner also fails to provide
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`any explanation or evidence from the ’309 specification showing of what
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`“unrecited” components could be required by the claim. See id. at 12. Patent
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`Owner thus attempts to improperly read unspecific, unknowable “unrecited”
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`limitations into claim 9. See Phillps v. AWH Corp., 415 F. 3d 1303, 1320 (Fed.
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`Cir. 2005) (cautioning against reading limitations in from the specification). Yet,
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`if Patent Owner wished to claim these supposed “additional, unrecited
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`components,” these limitations should have been expressly included in the claim.
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`Further, the ’309 specification defines the term “processor” broadly, thereby
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`contradicting any assertion by Patent Owner that claim 9 requires anything other
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`than a generic processor. ’309 patent, 7:22-30 (“a ‘processor’ can be implemented
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`in any convenient way” including as a “a programmable microprocessor” or “any
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`Case IPR2016-00794
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`other form of information processing device.”). Thus, the ’309 patent contemplated
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`that the claimed functionality could be implemented using a “programmable
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`microprocessor. . . or any other form of information processing device” such as
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`that taught by AbiEzzi.
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`In addition, in order for claim 9 to require Patent Owner’s “additional,
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`unrecited components,” the ’309 patent must include an enabling disclosure of
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`such components. Patent Owner has not identified any disclosure in the ’309
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`patent discussing the “additional, unrecited components,” because none exists.
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`IV. The combination of AbiEzzi and Baumgartner teaches that “the remote
`media source is a server”
`Patent Owner’s argument that the combination of AbiEzzi and Baumgartner
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`does not teach dependent claims 6 and 14 relies on a mischaracterization of the
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`Petition in conjunction with an impermissibly (under the broadest reasonable
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`interpretation standard) narrow interpretation of the term “server.”
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`A. The media server and jukebox of AbiEzzi together teach all
`elements of independent claims 6 and 14
`The Petition unambiguously identifies AbiEzzi’s media server and DVD
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`jukebox, together, as teaching the media source recited in the independent claim.
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`See Petition, 12-13; see also Mercer, ¶36. This characterization of AbiEzzi is
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`supported by Dr. Mercer’s testimony in his declaration and during deposition that a
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`POSITA would understand that the media server and DVD jukebox “can be
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`viewed as one unit rather than two separate, disjoint, distinct units.” Ex. 2007,
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`78:5-9; 77:18-78:18, 79:3-17; Mercer, ¶36. Thus, the media server and DVD
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`jukebox must be evaluated together in determining whether AbiEzzi discloses a
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`“remote media source [that] is a server.”
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`In the POR, Patent Owner again attempts to improperly read limitations into
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`the claim to distinguish the claimed server from the disclosure of AbiEzzi. Patent
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`Owner argues that the DVD jukebox of AbiEzzi alone must be the claimed server
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`because “media content is unquestionably stored” there. POR, 14. However, the
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`claims of the ’309 patent say nothing about either the media source or server being
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`limited, under broadest reasonable interpretation, to the component that “stores”
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`the media. Patent Owner provides no explanation as to why the claim should be
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`limited in this way. See ’309 patent, claims 1 and 6, claims 9 and 14.
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`Patent Owner also argues that the DVD jukebox and media server of
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`AbiEzzi together cannot teach the serve of claims 6 and 14, because they are
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`“separate entities.” POR, 16. However, again, the claims in question do not state
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`that the media source or the server, must be a single “entity,” or that the aspect
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`storing the media and the aspect providing the network interface need be in the
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`same housing. In fact, the ’309 specification supports a broad reading of the term
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`“server” encompassing configurations like AbiEzzi’s, for example, describing a
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`“remote device [that] may serve up content from an attached portable music player
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`such as an iPod.” See ’309 patent, 8:11-26.
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`B. The media source of AbiEzzi is a server
`The Petition explains that that the media source of AbiEzzi (the media server
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`and DVD jukebox together) is a server because it includes a “media server 100
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`[that] functions as a proxy for the jukebox 80 to allow the jukebox to be discovered
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`and controlled by other devices connected to the home network 70[.]” Petition, 12-
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`13 (citing AbiEzzi, ¶0022). Patent Owner’s observation that AbiEzzi already
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`includes a device it calls a media “server” is not dispositive. AbiEzzi’s “media
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`server 100” is incomplete and not a server, because it does not include storage for
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`the media it serves up. Rather, “media server 100 controls the DVD jukebox 80 to
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`read the contents on the DVD” and “transmits the contents to the media client.”
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`Petition, 20 (citing AbiEzzi, ¶22). Thus, AbiEzzi’s media source, DVD jukebox
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`80 and media server 100, collectively function as a server by serving media to the
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`media client in response to requests like the examples in the ‘309 patent. See
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`Petition, 12-13, 16-19; Mercer, ¶¶42-48. Dr. Mercer confirmed this interpretation
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`during his deposition, stating that AbiEzzi “is teaching that the combination of the
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`media server 100 and the jukebox 80 perform the function of a server together
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`because that's what causes access to the material on the jukebox.” Ex. 2007, 78:5-
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`9; see also 77:18-78-18, 79:3-17. Thus, AbiEzzi teaches that the “media source is
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`a server” as recited in claims 6 and 14.
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`In its counterargument, Patent Owner again treats the DVD jukebox of
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`AbiEzzi alone as the media source. POR, 16. Building on this
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`mischaracterization, Patent Owner argues that the Petition only “identifies a media
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`source” (i.e., the DVD jukebox) “connected to a server” (i.e., the media server)
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`rather than a media source that is a server. Id. However, despite Patent Owner’s
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`assertion that the Petition “makes no argument that the media server itself is a
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`media source,” the Petition in fact unambiguously characterizes the media server
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`and the DVD jukebox of AbiEzzi together as the claimed media source, and
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`explains that this media source collectively functions as a server by serving media
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`to the media client in response to requests. See, e.g., Petition, 12-13; see also
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`Mercer, ¶36; Ex. 2007, 78:5-9; 77:18-78:18, 79:3-17. FIG. 2 from AbiEzzi, as
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`annotated in the Petition, illustrates this characterization:
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`Petition, 13 (showing AbiEzzi, Detail of FIG. 2 (annotations in Petition))
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`C. Patent Owner's claim differentiation arguments are misplaced
`Patent Owner argues that “under the doctrine of claim differentiation,
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`because claims 6 and 14 affirmatively claim a media source that ‘is a server,’ the
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`scope of claims 1 and 9, respectively, includes media sources that are not servers.”
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`POR, 16. Patent Owner cautions that “[i]f claims 6 and 14 are interpreted such that
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`the media source is not required to be a server, then the resulting absence of
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`difference in meaning and scope would render the claims superfluous because
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`claims 1 and 9 already cover embodiments where the media source is not required
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`to be a server.” Id.
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`Patent Owner appears to be attributing this “straw man” argument to
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`Petitioner, when in fact Petitioner has never argued that “the media source” of
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`claims 6 and 14 “is not required to be a server.” See id. Patent Owner concocts
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`this hypothetical based on its own mischaracterization of the Petition, which Patent
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`Owner somehow imagines relies on only the DVD jukebox of AbiEzzi (which it
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`argues alone is not a server) as the claimed media source. In actuality, the Petition
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`relies on the DVD jukebox and media server together. See id.; See Petition, 12-13;
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`see also Mercer, ¶36; Ex. 2007, 79:10-17. This entire claim differentiation issue,
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`thus, is a non-issue, and springs forth from Patent Owner’s own misinterpretation
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`of AbiEzzi, not Petitioner’s.
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`Petitioner’s application of AbiEzzi’s disclosure to the claim language
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`presents no such issue. As described in the Petition, the combination of AbiEzzi
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`and Baumgartner teaches a media source that is a server. See, e.g., Petition, 12-
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`13; see also Mercer, ¶36; Ex. 2007, 79:10-17. By definition, media sources must
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`exist that meet the requirements of both independent claims 1 and 9, and their
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`respective dependent claims 6 and 14. See 37 CFR 1.75(c). The media source
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`taught by the combination of AbiEzzi and Baumgartner is one such media source.
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`V. A POSITA would have been motivated to combine AbiEzzi and
`Baumgartner as described in the Petition and accompanying evidence
`A. Patent Owner does not dispute Petitioner's stated reasons to
`combine on the merits
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`Case IPR2016-00794
`Attorney Docket No: 39521-0016IP2
`Patent Owner states that the “Petition and the supporting Declaration fail to
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`offer credible evidence that a POSITA would have been motivated to combine the
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`asserted references.” POR, 18. Patent Owner ignores the citations to
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`Baumgartner, Klemets and Barton, and then proceeds only to attack Dr. Mercer’s
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`declaration (improperly, as discussed below) without ever addressing the substance
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`of the reasons to combine stated in the Petition.
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`In making their argument, Patent Owner ignores the Petition’s description of
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`similarities between Baumgartner’s PVR and AbiEzzi’s DVD jukebox, and its
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`corresponding explanation that “[o]ne of skill in the art would have modified the
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`device of AbiEzzi operable to access a DVD jukebox over a network to include the
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`PVR functionality of Baumgartner because such a modification amounts to simply
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`combining prior art elements from the same field, according to known methods to
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`yield predictable results.” Petition, 9-10. Patent Owner also ignores that the
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`Petition provides a motivation to combine, explaining that a POSITA “would have
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`been motivated to make such a modification in order to eliminate the need to have
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`two separate devices to perform the functions of AbiEzzi and Baumgartner,
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`thereby reducing the amount of equipment a user needs to configure and maintain,
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`reducing the space the equipment consumes in/on the user’s television furniture,
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`facilitating using the devices with a common remote control, and enabling one set
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`of connections to the television.” Petition, 10 (emphasis added). These
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`motivations are supported with testimony by Dr. Mercer and citations to Barton,
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`and are based in fundamental consumer electronics axioms, like miniaturization
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`and featurization of devices and the consumer demands for universal remote
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`controls. Id. (citing Mercer, ¶26 and Barton, 2:21-36). The Petition also explains
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`that a POSITA “would also have been motivated to consolidate the similar video
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`playback functionality of AbiEzzi and Baumgartner in a single device to allow the
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`user to navigate a single interface to access both local recorded programs and
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`remote DVDs from the jukebox, thereby producing a more unified and user-
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`friendly viewing experience.” Petition, 10 (emphasis added). Again, this
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`motivation is supported by testimony from Dr. Mercer. Id. (citing Mercer, ¶26).
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`The advantages of including this type of functionality in a single device were
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`recognized and well-known in the art before the filing of the ’309 patent. See, e.g.,
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`Barton, 2:29-33 (“It would be advantageous to provide a digital video recorder
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`system with an integrated DVD recording device that gives a user the ability to
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`record and play back TV broadcast programs and digital video in a set-top box.”).
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`Patent Owner further ignores that the Petition explains the results of the
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`combination of AbiEzzi and Baumgartner and how the results would have been
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`predictable to a POSITA because “media devices allowing for playback of media
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`from both local and remote sources” as well as “combination devices with players
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`for more than one type of media” were known in the art as of the effective filing
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`date of the ’309 patent. Petition, 10 (citing Mercer, ¶27; Klemets, Abstract (plays
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`local and remote content); Barton, Abstract (combination DVD/PVR);
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`Baumgartner, 6:1-3, 6:20-22, FIG. 19 (combination VCR/PVR). Finally, the
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`Petition notes that “since AbiEzzi’s media client provides, at the user’s television,
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`the functionality of its networked DVD jukebox player, combining it with
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`Baumgartner’s PVR produces an analogue to [a] combination DVD/PVR device, a
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`device well known in the art.” Petition, 11 (citing Mercer, ¶27; Barton, Abstract).
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`In addition, Patent Owner ignores the Petition’s evidence that known
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`methods existed in the art for producing integrated devices like that of the
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`combination of AbiEzzi and Baumgartner. In addition to Dr. Mercer’s testimony,
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`the Petition cites three prior art examples of such integrated devices as evidence
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`that such known methods existed. See Petition, 10-11 (citing Klemets, Abstract;
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`Barton, Abstract; Baumgartner, 6:1-3, 6:20-22, FIG. 19). Additionally, contrary to
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`Patent Owner’s assertions, “[t]he test for obviousness is not whether the elements
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`of a secondary reference may be bodily incorporated into the structure of the
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`primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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`Patent Owner does not address any of these stated reasons to combine or the
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`accompanying analysis in its POR. Patent Owner had the opportunity to present a
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`counterargument as to why a POSITA would not combine the references. It has
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`presented no such argument. Patent Owner had the opportunity to produce
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`evidence (expert testimony, supporting references, etc.) that a POSITA would not
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`combine the references. It has presented no such evidence.
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`Patent Owner's entire argument regarding the expert declaration (discussed
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`below) is an attempt to distract the Board from the simple fact that it cannot
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`dispute the reasons to combine AbiEzzi and Baumgartner on the merits, because a
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`POSITA would, in fact, have been motivated by these stated reasons to combine
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`the references.
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`B. Patent Owner fails to address evidence from the Barton, Klemets
`and Baumgartner references offered in support of the stated reasons to
`combine
`Patent Owner states that “Petitioner’s Expert testimony regarding motivation
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`to combine is limited to three paragraphs of his declaration, paragraphs 25, 26, and
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`27 captioned ‘A POSITA would have combined AbiEzzi and Baumgartner.’”
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`POR, 19. Patent Owner concludes that this testimony “represents the extent of
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`Petitioner’s evidence regarding the motivation to combine the references.” Id.
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`Patent Owner then proceeds to attack these sections of Dr. Mercer’s declaration.
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`But the Petition cites additional evidence in support of its stated reasons to
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`combine in the form of disclosure from the Barton, Klemets, and Baumgartner
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`references. See Petition, 10-11 (citing Barton, Abstract, 2:21-36; Klemets,
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`Abstract; Baumgartner, 6:1-3, 6:20-22, FIG. 19). Patent Owner fails to address
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`this evidence whatsoever, and does not challenge its support for the stated reasons
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`to combine in the Petition. Accordingly, the stated reasons to combine AbiEzzi
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`and Baumgartner are not only supported by Dr. Mercer’s testimony, but also by the
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`uncontroverted evidence from the Barton, Klemets, and Baumgartner references.
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`C. Patent Owner improperly dismisses Dr. Mercer’s testimony
`supporting Petitioner's stated reasons to combine
`Patent Owner focuses on paragraphs 25-27 of Dr. Mercer’s declaration
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`testimony, serially analyzing them in isolation from one another, and concludes
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`that each paragraph, individually, fails to fully support Petitioner’s stated reasons
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`to combine. See id. at 20-24.
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`This approach is clearly flawed because each paragraph discusses a different
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`aspect of the motivation to combine analysis. When taken as a whole, these
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`paragraphs describe (i) how a POSITA would combine the disclosures of AbiEzzi
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`and Baumgartner to produce a “unified device” (see Mercer, ¶25); (ii) reasons why
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`a POSITA would have been motivated to combine the references (¶26); and (iii)
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`that the result of the combination would have been predictable to a POSITA due to
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`such “unified devices” being well known in the art (¶27). Patent Owner further
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`attempts to minimize citations to the Barton and Klemets references as showing
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`only a “general knowledge of playback devices,” when in fact these references
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`show that those of skill in the art were motivated to, and, in fact, did, produce
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`“unified devices” integrating functionality similar to that taught by AbiEzzi and
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`Baumgartner. See Mercer, ¶27 (citing Barton, Abstract; Klemets, Abstract).
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`Accordingly, Patent Owner’s analysis of Dr. Mercer’s declaration is flawed,
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`and the Board should decline Patent Owner’s invitation to improperly dismiss Dr.
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`Mercer’s testimony regarding the reasons to combine AbiEzzi and Baumgartner.
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`D. Patent Owner’s reliance on the Arendi and ActiveVideo cases is
`misplaced
`Patent Owner further tries to d