Apple Inc. (Petitioner)
`v.
`Chestnut Hill Sound Inc. (Patent Owner)
`Petitioner Demonstratives
`Case No. IPR2016-00794
`U.S. Patent No. 8,090,309
`
`Before Hon. Rama G. Elluru, David C. Mckone, and John F. Horvath
`Administrative Patent Judges
`
`1
`
`APPLE 1018
`Apple v. Chestnut Hills Sound
`IPR2016-00794
`
`1
`
`

`

`Table of Contents
`
`Topic
`
`Introduction
`
`Disputed Issues for Independent Claims
`
`First Issue: Claim 9 is Obvious
`
`Second Issue: Motivation to Combine
`
`Third Issue: Alleged Secondary Considerations
`
`Reference
`
`Slide No.
`
`3
`
`12
`
`14
`
`20
`
`31
`
`45
`
`2
`
`2
`
`

`

`Introduction
`
`Introduction
`
`3
`
`3
`
`

`

`Introduction
`
`“Patent Owner touts the subject matter in its ’309 patent as ‘allowing a user to
`select and play co-housed or directly connected media and … allowing a user
`to select and play remote media.’” Reply (Paper 20) at 1 (quoting POR (Paper 16) at 7).
`
`“In essence, Patent Owner claims it revolutionized the audio world by
`placing a local media player and a remote media player in the same device.”
`Reply (Paper 20) at 1 (emphasis added).
`
`“However, as explained in the Petition and undisputed by Patent Owner,
`numerous devices integrating different types of media players, including
`local and remote media players, existed at the time of the '309 patent[.]”
`Reply (Paper 20) at 1 (emphasis added) (citing Petition (Paper 2), 10-11; Klemets (Ex. 1009), Abstract; Barton
`(Ex. 1011), Abstract, 2:21-36; Baumgartner (Ex. 1007), 6:1-3 and 20-22 and FIG. 19).
`
`4
`
`4
`
`

`

`Introduction
`
`“Despite Patent Owner’s lofty claims that the ’309 patent “changed the way
`users interacted with their multimedia content,” it only argues that a single
`element of the independent claims (a “processor unit”)… and an element
`common to dependent claims 6 and 14 (that the “media source is a server”)…
`was not proved up by the Petition.” Reply (Paper 20) at 2-3 (emphasis added) (citing POR (Paper
`16), 10-13).
`
`5
`
`5
`
`

`

`Introduction
`
`“Recognizing its position of weakness, Patent Owner attacks Petitioner’s
`evidence that a POSITA would have been motivated to combine the AbiEzzi
`and Baumgartner references.” Reply (Paper 20) at 2.
`
`“Patent Owner does not challenge the sufficiency of Petitioner’s reasons
`to combine themselves, but instead only argues (incorrectly) that they are
`unsupported by evidence.” Reply (Paper 20) at 2 (emphasis added).
`
`“In doing so, Patent Owner ignores evidence cited to support Petitioner's
`stated reasons to combine[.]” Reply (Paper 20) at 2 (emphasis added).
`
`6
`
`6
`
`

`

`Introduction
`
`“[T]he Petition’s stated reasons to combine are supported by uncontroverted
`evidence (the Baumgartner, Klemets, and Barton references and Dr.
`Mercer’s testimony).” Reply (Paper 20) at 3.
`
`“Thus, we determine, at this point in the proceeding, that Petitioner’s
`asserted reason for combining the references is supported by evidence
`of record.” Institution Decision (Paper 9) at 21 (emphasis added) (citing Petition (Paper 2) at 11, Mercer (Ex.
`1003), ¶ 27; Baumgartner (Ex. 1007), 6:1-3, 20-22; Barton (Ex. 1011), Abstract).
`
`7
`
`7
`
`

`

`Introduction
`
`“Patent Owner does not dispute that the combination of Baumgartner and
`AbiEzzi teaches all elements of claims 1-5, 7, 8, and 10-13 of the ’309
`patent.” Reply (Paper 20) at 3 (emphasis added).
`
`“Thus, regardless of how the Board resolves the remaining issues … it
`should find claims 1-5, 7, 8, and 10-13 of the ’309 patent unpatentable as
`obvious over the combination of AbiEzzi and Baumgartner.” Reply (Paper 20) at 3
`(emphasis added).
`
`8
`
`8
`
`

`

`Introduction
`
`“Patent Owner cannot escape [that]:
`1) The combination of AbiEzzi and Baumgartner teaches
`all elements of the Challenged Claims of the ’309
`patent; and
`
`2) A POSITA would have combined AbiEzzi and
`Baumgartner for the reasons stated in the Petition.”
`
`Reply (Paper 20) at 2-3 (emphasis added).
`
`9
`
`9
`
`

`

`Introduction
`
`“[In addition], Patent Owner argues that awards and critical praise received by
`its ‘George’ system are evidence of ‘secondary considerations of non-
`obviousness.’” Reply (Paper 20) at 22 (emphasis added) (quoting POR (Paper 16) at 24).
`
`“But Patent Owner fails to provide any evidence or argument showing
`what aspects of the Challenged Claims (if any) are embodied by the
`George system, or any evidence showing that any awards or critical praise
`received by the George system were due to a particular novel claim limitation.”
`Reply (Paper 20) at 22-23 (emphasis added) (citing Gnosis at 38).
`
`“Without the threshold showing of a nexus, Patent Owner’s purported
`evidence of secondary considerations cannot be probative of
`nonobviousness.” Reply (Paper 20) at 23 (emphasis added) (citing Gnosis at 42).
`
`10
`
`10
`
`

`

`Instituted Grounds
`
`• Claims 1–14 are obvious under 35 U.S.C. § 103(a) over
`Baumgartner and AbiEzzi
`• Baumgartner (Ex. 1007)
`• AbiEzzi (Ex. 1005)
`
`11
`
`11
`
`

`

`Disputed Issues for the Independent
`Claims
`
`12
`
`12
`
`

`

`Disputed Issues for the Independent Claims
`
`First Issue
`• “The combination of AbiEzzi and Baumgartner renders claim 9
`obvious.” Reply (Paper 20) at 4.
`
`Second Issue
`• “A POSITA would have been motivated to combine AbiEzzi and
`Baumgartner as described in the Petition and accompanying
`evidence.” Reply (Paper 20) at 13.
`
`Third Issue
`• “Patent Owner's evidence of alleged “secondary considerations”
`is lacking.” Reply (Paper 20) at 21.
`
`13
`
`13
`
`

`

`First Issue: Claim 9 is obvious over
`AbiEzzi and Baumgartner
`
`14
`
`14
`
`

`

`First Issue: AbiEzzi and Baumgartner teach a “processor
`unit”
`
`Patent Owner argues:
`“Claim 9 recites ‘a processor unit adapted to execute computer
`instructions stored in the memory and causing the media device to
`operate in said first mode or said second mode[.]’” POR (Paper 16) at 10
`(emphasis added).
`
`“[N]either the Petition nor the Petitioner's Expert point to any evidence
`that the cited references teach the additional, unrecited components
`needed for switching between the first and second modes.”
`
`POR (Paper 16) at 12 (emphasis added).
`
`15
`
`15
`
`

`

`First Issue: AbiEzzi and Baumgartner teach a “processor
`unit”
`Response to: “additional, unrecited components”
`
`“Patent Owner improperly attempts to rewrite claim 9 to require ‘additional,
`unrecited components’ and functionality.” Reply (Paper 20) at 6 (emphasis added).
`
`“Patent Owner is trying to read limitations into claim 9 that, under the broadest
`reasonable interpretation, do not exist.” Reply (Paper 20) at 7.
`
`“Patent Owner also fails to provide any explanation or evidence from the ’309
`specification showing of what “unrecited” components could be required by
`the claim.” Reply (Paper 20) at 7.
`
`16
`
`16
`
`

`

`First Issue: AbiEzzi and Baumgartner teach a “processor
`unit”
`Response to: “additional, unrecited components”
`“The ’309 specification defines the term “processor” broadly, thereby
`contradicting any assertion by Patent Owner that claim 9 requires anything
`other than a generic processor.” Reply (Paper 20) at 7 (citing ‘309 patent (Ex. 1001), 7:22-30).
`
`‘309 patent (Ex. 1001), 7:22-30.
`
`17
`
`17
`
`

`

`First Issue: AbiEzzi and Baumgartner teach a “processor
`unit”
`Response to: “additional, unrecited components”
`“[C]ontrary to the Patent Owner’s assertions, there can be no dispute
`that Baumgartner discloses a processor operating in the first mode.” Reply
`(Paper 20) at 5.
`
`“Patent Owner flatly ignores the Petition’s repeated citations to
`Baumgartner showing that its system, like AbiEzzi’s, is implemented
`using a “processor.” See [Petition] at 11 (citing Baumgartner, FIG. 8 and
`13:19-38 (showing and describing a “processor 812” used to implement
`the PVR functionality)).” Reply (Paper 20) at 5.
`
`Baumgartner (Ex. 1007), 13:19-31.
`
`18
`
`18
`
`

`

`First Issue: AbiEzzi and Baumgartner teach a “processor
`unit”
`
`Response to: The combination’s
`“processor unit”
`“[T]he ‘309 patent explains that its processor can be “any [] form of
`information processing device.” Reply (Paper 20) at 5 (citing ‘309 patent, FIGS. 3 and
`12, 7:22-30).
`
`“Either processor, Baumgartner’s or AbiEzzi’s, is a “form of information
`processing device.” Thus, either processor, used to perform the method
`advanced by the Petition as obvious over AbiEzzi and Baumgartner
`could suffice to meet the claimed “processor unit.”” Reply (Paper 20) at 5.
`
`“[C]iting to both Baumgartner’s and AbiEzzi’s processor for the processor
`limitation of claim 9, as Patent Owner suggests is required, would be
`inconsistent with the express language of the claim. Claim 9 recites “a
`processor,” i.e., a single processor.” Reply (Paper 20) at 5.
`
`19
`
`19
`
`

`

`Second Issue: A POSITA would have been
`motivated to combine AbiEzzi and
`Baumgartner as described in the Petition
`
`20
`
`20
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Patent Owner argues:
`
`“Petitioner Fails to Offer any Evidence
`of Motivation to Combine”
`POR (Paper 16) at 18 (emphasis added).
`
`21
`
`21
`
`

`

`Second Issue: The combination of AbiEzzi and Baumgartner
`
`“[I]t would have been obvious to one of skill in the art to combine the devices of
`AbiEzzi and Baumgartner to produce a unified device that is[:]”
`
`“(i) operable in a first mode
`allowing a user to select
`locally-stored video content
`for playback on a connected
`display device (as described
`in Baumgartner); and”
`
`Petition (Paper 2) at 9
`(citing AbiEzzi (Ex. 1005), Abstract, ¶
`0024).
`
`Detail of AbiEzzi (Ex. 1005) FIG. 27, annotated
`(from Petition (Paper 2) at 24).
`
`22
`
`22
`
`

`

`Second Issue: The combination of AbiEzzi and Baumgartner
`
`“[I]t would have been obvious to one of skill in the art to combine the devices
`of AbiEzzi and Baumgartner to produce a unified device that is[:]”
`
`(ii) operable in a second
`mode to allow the user to
`select video content
`stored on a remote DVD
`jukebox for playback on
`the connected display
`device (as described in
`AbiEzzi).”
`Petition (Paper 2) at 9 (citing
`Baumgartner (Ex. 1007), 1:24-27,
`6:1-3, 22:50-60).
`
`Baumgartner (Ex. 1007), Detail of FIG. 27
`(cited by Petition (Paper 2) at 9,12,14,15).
`
`23
`
`23
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`“A POSITA would have been motivated to [combine AbiEzzi and Baumgartner]
`in order to[:]” Reply (Paper 20) at 14.
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`“eliminate the need to have two separate devices” Mercer (Ex. 1003) ¶ 26; Petition
`(Paper 2) at 10.
`“reduc[e] the amount of equipment a user needs to configure and maintain”
`Id.
`“reduc[e] the space the equipment consumes in/on the user’s television
`furniture” Id.
`“facilitate[e] using the devices with a common remote control, and enabling
`one set of connections to the television” Id.
`“allow the user to navigate a single interface to access both local recorded
`programs and remote DVDs from the jukebox” Id.
`“produc[e] a more unified and user-friendly viewing experience” Id.
`
`24
`
`24
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`
`“[T]he Petition cites three prior art examples of such integrated devices as
`evidence that such known methods existed.”
`
`Reply (Paper 20) at 16 (citing Petition (Paper 2), 10-11, Klemets (Ex. 1009), Abstract; Barton (Ex. 1011), Abstract,
`2:21-36; Baumgartner (Ex. 1007), 6:1-3, 6:20-22, FIG. 19).
`
`Baumgartner
`
`Baumgartner (Ex. 1007), FIG. 19
`
`Baumgartner (Ex. 1007), 6:1-3.
`
`Baumgartner (Ex. 1007), 6:20-22.
`
`25
`
`25
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`
`“[T]he Petition cites three prior art examples of such integrated devices as
`evidence that such known methods existed.”
`Reply (Paper 20) at 16 (citing Petition (Paper 2), 10-11, Klemets (Ex. 1009), Abstract; Barton (Ex. 1011), Abstract,
`2:21-36; Baumgartner (Ex. 1007), 6:1-3, 6:20-22, FIG. 19).
`
`Barton
`
`Barton (Ex. 1011), 2:29-32.
`
`Barton (Ex. 1011), Abstract.
`
`26
`
`26
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`“[T]he Petition cites three prior art examples of such integrated devices as
`evidence that such known methods existed.”
`
`Reply (Paper 20) at 16 (citing Petition (Paper 2), 10-11, Klemets (Ex. 1009), Abstract; Barton (Ex. 1011), Abstract,
`2:21-36; Baumgartner (Ex. 1007), 6:1-3, 6:20-22, FIG. 19).
`
`Klemets
`
`Klemets (Ex. 1009), Abstract.
`
`27
`
`27
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`“Petitioner concludes that because “AbiEzzi’s media client provides, at the
`user’s television, the functionality of its networked DVD jukebox player,
`combining it with Baumgartner’s PVR produces an analogue to [a]
`combination DVD/PVR device,” a device Petitioner asserts was well known in
`the art. Pet. 11 (citing Ex. 1003, ¶ 27; Ex. 1011 (“Barton”), Abstract).”
`Institution Decision at 21 (emphasis added).
`
`“Thus, we determine, at this point in the proceeding, that Petitioner’s
`asserted reason for combining the references is supported by evidence
`of record.”
`Institution Decision at 21 (emphasis added) (citing Petition (Paper 2) at 11, Mercer (Ex. 1003), ¶ 27; Baumgartner
`(Ex. 1007), 6:1-3, 20-22; Barton (Ex. 1011), Abstract).
`
`28
`
`28
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`
`“Patent Owner ignores the citations to Baumgartner, Klemets and
`Barton, and then proceeds only to attack Dr. Mercer’s declaration
`(improperly, as discussed below) without ever addressing the substance of
`the reasons to combine[.]” Reply (Paper 20) at 14 (emphasis added).
`
`“Patent Owner focuses on paragraphs 25-27 of Dr. Mercer’s declaration
`testimony, serially analyzing them in isolation from one another, and
`concludes that each paragraph, individually, fails to fully support Petitioner’s
`stated reasons to combine.” Reply (Paper 20) at 18 (emphasis added).
`
`“This approach is clearly flawed because each paragraph discusses a
`different aspect of the motivation to combine analysis.” Reply (Paper 20) at 18.
`
`29
`
`29
`
`

`

`Second Issue: A POSITA would have been motivated to
`combine AbiEzzi and Baumgartner
`Response to: motivation to combine evidence
`
`“When taken as a whole, these paragraphs describe (i) how a POSITA would
`combine the disclosures of AbiEzzi and Baumgartner to produce a ‘unified
`device’ (see Mercer, ¶25); (ii) reasons why a POSITA would have been
`motivated to combine the references (¶26); and (iii) that the result of the
`combination would have been predictable to a POSITA due to such “unified
`devices” being well known in the art (¶27).” Reply (Paper 20) at 18.
`
`“Patent Owner further attempts to minimize citations to the Barton and
`Klemets references as showing only a “general knowledge of playback
`devices,” when in fact these references show that those of skill in the art
`were motivated to, and, in fact, did, produce “unified devices” integrating
`functionality similar to that taught by AbiEzzi and Baumgartner. See Mercer,
`¶27 (citing Barton, Abstract; Klemets, Abstract).” Reply (Paper 20) at 18 (emphasis added).
`
`30
`
`30
`
`

`

`Third Issue: Patent Owner's evidence of
`alleged “secondary considerations” is lacking
`
`31
`
`31
`
`

`

`Third Issue: Alleged Secondary Considerations
`Patent Owner argues:
`“Patent Owner re-offers evidence of … secondary considerations[.]
`Each of these secondary considerations is related to and supports a
`[finding] that the challenged claims of the '309 patent are not obvious.”
`POR (Paper 16) at 25.
`
`“[Petitioner’s Ko Patent] discloses [] substantially the same invention as
`is claimed in claims 1 and 9 of the '309 patent.”
`POR (Paper 16) at 29.
`
`32
`
`32
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Patent Owner’s evidence
`“[A]ll evidence of secondary considerations must be shown to have a
`causal relationship, termed a “nexus,” to the claims in question.”
`
`Reply (Paper 20) at 22 (emphasis added) (internal quotations omitted) (citing Gnosis SPA v. S. Ala. Med. Sci.
`Found., IPR2013-00116, Paper No. 68 at 38-39 (PTAB June 20, 2014); In re GPAC Inc., 57 F.3d 1573, 1580
`(Fed. Cir. 1995); Merck v. Teva Pharm., 395 F.3d 1364, 1376 (Fed. Cir. 2005)).
`
`“To establish nexus, Patent Owner must show a relationship to ‘a novel
`element in the claim, not to something in the prior art.’”
`
`Reply (Paper 20) at 22 (emphasis added) (citing Gnosis at 38).
`
`“Patent Owner bears the burden of establishing this nexus.”
`
`Reply (Paper 20) at 22 (emphasis added) (citing CaptionCall v. Ultratec, IPR2013-00540, Paper No. 78, at 50
`(PTAB Mar. 3, 2015).
`
`33
`
`33
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Patent Owner’s evidence
`
`“Patent Owner argues that awards and critical praise received by its
`‘George’ system are evidence of ‘secondary considerations of non-
`obviousness.’” Reply (Paper 20) at 22.
`
`“But Patent Owner fails to provide any evidence or argument showing
`what aspects of the Challenged Claims (if any) are embodied by the
`George system, or any evidence showing that any awards or critical
`praise received by the George system were due to a particular novel
`claim limitation.” Reply (Paper 20) at 22-23 (emphasis added) (citing Gnosis at 38).
`
`34
`
`34
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Patent Owner’s evidence
`“Patent Owner’s analysis on this point is limited to conclusory statements that the
`George system is ‘related’ to or ‘embod[ies] in part’ the Challenged Claims, with
`no explanation of how it is related to the claims or which aspects of the claims it
`‘embodies.’” Reply (Paper 20) at 23 (citing, e.g., POR (Paper 16) at 25-26).
`
`POR (Paper 16)
`at 27.
`
`POR (Paper 16)
`at 25.
`
`POR (Paper 16)
`at 26.
`
`35
`
`35
`
`

`

`Third Issue: Alleged Secondary Considerations
`
`36
`
`36
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Patent Owner’s evidence
`“In fact, the cited documents describe only high level functionality of the George
`system.” Reply (Paper 20) at 23.
`
`Ex. 2015 at 1.
`
`Ex. 2015 at 2.
`
`Ex. 2008 at 7.
`
`37
`
`37
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Patent Owner’s evidence
`
`“Without the threshold showing of a nexus, Patent
`Owner’s purported evidence of secondary considerations
`cannot be probative of nonobviousness.”
`Reply (Paper 20) at 23 (emphasis added) (citing Gnosis at 42).
`
`38
`
`38
`
`

`

`Third Issue: Alleged Secondary Considerations
`Response to: Ko Patent
`“Patent Owner provides no analysis showing that the Ko patent describes
`‘substantially the same invention as is claimed in claims 1 and 9 of the ʼ309
`patent,’ as Patent Owner asserts, or how, if this is true, the Ko patent issued
`over the ‘309 patent. See Ex. 2006, Face (citing publication “2008/0163049” to
`“Krampf,” which is the publication corresponding to the ’309 patent).”
`Reply (Paper 20) at 24.
`
`Ex. 2006 (Ko), Face
`
`39
`
`39
`
`

`

`Dependent Claim Issue: Claims 6 and 14:
`AbiEzzi and Baumgartner teach that that ‘the
`remote media source is a server”
`
`40
`
`40
`
`

`

`Claims 6 and 14: AbiEzzi and Baumgartner teach that that
`‘the remote media source is a server”
`Patent Owner argues:
`“AbiEzzi Does Not Disclose a Media Source That Is a Server”
`
`POR (Paper 16) at 13.
`
`41
`
`41
`
`

`

`Claims 6 and 14: AbiEzzi and Baumgartner teach that that
`‘the remote media source is a server”
`Patent Owner argues:
`Response to: AbiEzzi’s Disclosure of a Media
`Petitioner responds:
`Source That Is a Server
`“The Petition explains that that the media source of AbiEzzi (the media
`server and DVD jukebox together) is a server because it includes a
`‘media server 100 [that] functions as a proxy for the jukebox 80 to allow
`the jukebox to be discovered and controlled by other devices connected
`to the home network 70[.]’”
`
`Reply (Paper 20) at 10 (emphasis added) (citing Petition (Paper 2), 12-13; AbiEzzi (Ex. 1005) ¶0022).
`
`AbiEzzi’s “media server 100” is incomplete and not a server, because it
`does not include storage for the media it serves up. Rather, “media
`server 100 controls the DVD jukebox 80 to read the contents on the
`DVD” and “transmits the contents to the media client.”
`
`Reply (Paper 20) at 10 (emphasis added) (citing Petition (Paper 2), 12-13; AbiEzzi (Ex. 1005) ¶0022).
`
`42
`
`42
`
`

`

`Claims 6 and 14: AbiEzzi and Baumgartner teach that that
`‘the remote media source is a server”
`Patent Owner argues:
`Response to: AbiEzzi’s Disclosure of a Media
`Petitioner responds:
`Source That Is a Server
`
`“Dr. Mercer confirmed this interpretation during his deposition[.]”
`
`Reply (Paper 20) at 10 (citing Ex. 2007 (Mercer Transcript), 78:5-9).
`
`“[T]he combination of the media server 100 and the jukebox 80
`perform the function of a server together because that's what causes
`access to the material on the jukebox.”
`
`Ex. 2007 (Mercer Transcript), 78:5-9.
`
`43
`
`43
`
`

`

`Claims 6 and 14: AbiEzzi and Baumgartner teach that that
`‘the remote media source is a server”
`Patent Owner argues:
`Response to: AbiEzzi’s Disclosure of a Media
`Petitioner responds:
`Source That Is a Server
`
`“[T]he Petition in fact
`unambiguously characterizes the
`media server and the DVD
`jukebox of AbiEzzi together as the
`claimed media source, and
`explains that this media source
`collectively functions as a server
`by serving media to the media
`client in response to requests.
`FIG. 2 from AbiEzzi, as annotated
`in the Petition, illustrates this
`characterization:”
`
`Reply (Paper 20) at 11 (citing Petition (Paper 2),
`12-13; Ex, 1003, ¶ 36; Ex. 2007, 78:5-9; 77:18-
`78:18, 79:3-17).
`
`Reply (Paper 20) at 12
`(showing Detail of AbiEzzi (Ex. 1005), FIG. 2 from
`Petition (Paper 2) at 13)
`(red annotations from Petition, yellow highlight added).
`
`44
`
`44
`
`

`

`Reference
`
`Reference Reference
`
`45
`
`45
`
`

`

`Overview of U.S. Patent No. 8,090,309
`(the ’309 patent)
`
`46
`
`46
`
`

`

`Representative Claim 1
`
`Representative Claim 1
`
`FISH.
`
`1. A method of using a media device operable in first and
`second modes, the first mode comprising operation as a sys-
`tem for accessing a media source co-housed with or directly
`connected to said media device, the source configttred to
`stream media files or media streams for output by said media
`deuicfl and the 53301151 1110513 CDmPFiSiflg flF’E’I'iali‘ilfl 0f the
`media device as a remote controller system for controlling
`over a network a media source remote from the media device,
`comprising;
`operating the media device in the first mode. wherein when
`operated in the first mode, the media device performs
`operations of
`displaying user-selectable media metadata on a display
`of the media device, at least one media file or stream
`being associated with each displayed media metadata
`and being available from the media source for playing
`by said media device!
`receiving fromauseraselectionofmediametadata from
`among the displayed media metadata, and indicating
`that said media device should play a media file or
`media stream associated with the selected media
`metadata, and
`outputting the selected media file or media stream; and
`operating the media device in a second mode, wherein
`when operated in the second mode. the media device
`performs operations of
`
`cotmecting the media device with the media source, via
`a network interface.
`transmitting a request, using the network interface, for
`media metadata from the media device to the media
`guurce!
`receiving at the media device, using the network inter-
`face, media metadata fmm the remote media some,
`the media metadata indicating at least we media file
`or media stream available from the media source,
`
`displaying at least one received media metadata on a
`media device display,
`generating a signal in response to a user selection of at
`least one said displayed media metadata, and the
`media device sending 3‘ Correspflflding Signal fmm the
`nemnrk mierfapje m the media Emmet wherein the
`corresponding signal includes at least one media file
`01' "135113 Stream mmadflla identifying at 133315 0113
`media file nr‘media stream available from the media
`SUWCE that: 111 “JUL responds to the COHESPOfldmg
`signal by accessing the identified media file or media
`stream and once accessed, and
`sending the identified media file or media stream to a
`media output device separate from the media device.
`
`47
`
`47
`
`

`

`Representative Claim 1
`
`1. A method of using a media device operable in first and second modes, the first
`mode comprising operation as a system for accessing a media source co-housed
`with or directly connected to said media device, the source configured to stream
`media files or media streams for output by said media device, and the second mode
`comprising operation of the media device as a remote controller system for
`controlling over a network a media source remote from the media device,
`comprising:
`
`(Emphasis added)
`
`48
`
`48
`
`

`

`Representative Claim 1
`
`operating the media device in the first mode, wherein when operated in the first mode,
`the media device performs operations of
`displaying user-selectable media metadata on a display of the media device,
`at least one media file or stream being associated with each displayed media metadata
`and being available from the media source for playing by said media device,
`receiving from a user a selection of media metadata from among the
`displayed media metadata, and indicating that said media device should play a media
`file or media stream associated with the selected media metadata, and
`outputting the selected media file or media stream; and
`
`(Emphasis added)
`
`49
`
`49
`
`

`

`Representative Claim 1
`
`operating the media device in a second mode, wherein when operated in the second mode,
`the media device performs operations of
`connecting the media device with the media source, via a network interface,
`transmitting a request, using the network interface, for media metadata from the media
`device to the media source,
`receiving at the media device, using the network interface, media metadata from the
`remote media source, the media metadata indicating at least one media file or media
`stream available from the media source,
`displaying at least one received media metadata on a media device display,
`generating a signal in response to a user selection of at least one said displayed media
`metadata, and the media device sending a corresponding signal from the network interface
`to the media source, wherein the corresponding signal includes at least one media file or
`media stream metadata identifying at least one media file or media stream available from
`the media source that, in turn, responds to the corresponding signal by accessing the
`identified media file or media stream and once accessed, and sending the identified media
`file or media stream to a media output device separate from the media device.
`(Emphasis added)
`
`50
`
`50
`
`

`

`Independent Claim 9
`
`Independent Claim 9
`
`said media device. receiving from a user a selection of
`media metadata front among the displayed media meta-
`data, and indicating that said media device should play a
`media file or media stream associated with the selected
`
`media metadata, and playing said selected media lile or
`media stream, and
`wherein when the media device is operated in the second
`tnode, the media device performs operations of connect-
`ittg via a network interface the media device with the
`remote media source, transmitting using the network
`interface a request for media metadata from the media
`device to the remote media source, receiving at the
`media device, using the network interface, media meta-
`data fi'om the remote media source, the media metadata
`
`ittdicatittg at least one media file or media slreatn avail-
`able from the media source, displaying at least one
`received media metadata on a media device display.
`generating a signal itt response to a user selection of at
`least one said displayed media tttetadata and, using the
`network interface, the media device sending a corre-
`spondittg signal to the media source, wherein the corre-
`sponding signal includes at least one media file or media
`stream metadata identifying at least one media file or
`media stream available from the remote media source
`
`itt ntrn, responds to the corresponding signal by
`that,
`accessing the identified media file or media stream and
`once accessed, and sendittg the identified media file to a
`
`51
`
`9. A media device operable in first and second tttodes, tlte
`first tttode oontprisittg operation as a systettt for accessittg a
`media source co-hottsed with or directly connected to tlte
`media device and configttred to stream media data or send
`media files to the media device and the second tnode com-
`
`prising operation of the media as a remote controller systent
`for a media sottrce remote from the media device, compris-
`
`a. a network interface operationally comtectable to a local
`network;
`b. memory configured to store program instructions attd
`media metadata, at least one ofsaid metadata identifying
`at least one media file ortttedia stream available from the
`
`media source;
`
`media output device separate from the media device. 51
`
`c. a display unit arranged to display a user interface having
`a nttmberofuser selectable items, said items ittc lttd ing at
`least said media file- or media stream-identifying meta-
`data received from the media source: and
`d. a processor unit adapted to exwute computer instruc-
`tions stored in the memory and causittg the media device
`to operate in said first mode or said second mode,
`wherein when the media device is operated iii the first
`mode. the media device performs operations ofdisplay-
`ing user-selectable media metadata on a display of the
`media device, at least one media file or stream being
`associated with each displayed media tttetadata attd
`beittg available from the media source for playing by
`
`51
`
`

`

`Dependent Claims 6 and 14
`
`6. The method of claim 1 wherein the remote media source
`
`is a server
`
`Dependent Claims 6 and 14
`
`is a server.
`
`14. The media device of claim 9 wherein the media source
`
`52
`
`52
`
`

`

`Prior Art Figures
`
`Prior Art Figures
`
`53
`
`53
`
`

`

`AbiEzzi, Detail of FIG. 2 (annotated)
`
`From Petition (Paper 2) at 12
`
`54
`
`54
`
`

`

`Baumgartner, FIG. 19
`
`Cited by Petition (Paper 2) at 11
`
`55
`
`55
`
`

`

`Baumgartner, Detail of FIG. 27 (annotated)
`
`From Petition (Paper 2) at 14
`
`56
`
`56
`
`

`

`How the Prior Art
`Addresses the Claims at Issue
`
`57
`
`57
`
`

`

`Instituted Grounds
`
`• Claims 1–14 are obvious under 35 U.S.C. § 103(a) over
`Baumgartner and AbiEzzi
`• Baumgartner (Ex. 1007)
`• AbiEzzi (Ex. 1005)
`
`58
`
`58
`
`

`

`Overview of AbiEzzi
`
`“AbiEzzi describes a ‘media client’ (media device) that allows a user to
`‘navigate . . . Titles’ loaded in a DVD jukebox accessible by the media client
`over a ‘home network.’” Petition (Paper 2) at 8 (quoting AbiEzzi (Ex. 1005), Abstract).
`
`“The media client provides a
`user interface through which
`“the user can select a title from
`the DVD jukebox for viewing
`on” a display device connected
`to the media client.”
`Petition (Paper 2) at 8 (quoting AbiEzzi (Ex.
`1005), ¶ 0024).
`
`Petition (Paper 2) at 13.
`
`59
`
`59
`
`

`

`Overview of AbiEzzi
`
`“AbiEzzi teaches that a
`“media server 100
`functions as a proxy for the
`jukebox 80 to allow the
`jukebox to be discovered
`and controlled by other
`devices connected to the
`home network 70, such as
`the media clients 86, 88
`[media devices] of the
`televisions 82, 84.” Id. at ¶
`0022 (emphasis added).
`FIG. 2 from AbiEzzi shows
`this configuration:”
`
`Petition (Paper 2) at 12-13.
`
`Petition (Paper 2) at 24.
`
`60
`
`60
`
`

`

`Overview of Baumgartner
`
`“Baumgartner teaches a
`“recording device” (media
`device) that includes a
`“personal video recorder
`(PVR),” which it defines as
`a device that can “record
`programs on hard-disk
`drives” and “play back the
`recorded programs at a
`later time.”
`
`Petition (Paper 2) at 9 (quoting
`Baumgartner (Ex. 1007), 1:24-27, 6:1-3).
`
`Baumgartner (Ex. 1007), FIG. 19
`(cited by Petition (Paper 2) at 11).
`
`61
`
`61
`
`

`

`Overview of Baumgartner
`
`“Baumgartner teaches that the recording device includes a graphical user
`interface that displays ‘a list of recorded programs 2704 that the user may
`select.’” Petition (Paper 2) at 9 (citing Baumgartner, 22:50-51, FIG. 27).
`
`“’The user may view a
`previously recorded
`program by selecting
`the program from’ the
`list of recorded
`programs.”
`
`Petition (Paper 2) at 9 (citing
`Baumgartner (Ex. 1007), 22:59-60).
`
`Baumgartner (Ex. 1007), Detail of FIG. 27
`(cited by Petition (Paper 2) at 9,12,14,15).
`
`62
`
`62
`
`

`

`63
`
`Application to Claim 1 of the ’309 patent
`
`“A method of using a media device operable in first and second modes”
`
`““
`
`The combination of AbiEzzi and Baumgartner teaches a method of using a
`media device operable in first and second modes.” Petition