Paper No.
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`
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`Filed on behalf of Chestnut Hill Sound Inc.
`By: Hamad H. Hamad
`John Austin Curry (pro hac vice pending)
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`Alexis (Steinberg) Mosser
`CALDWELL CASSADY CURRY, P.C.
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: 214.888.4848
`Facsimile: 214.888.4849
`hhamad@caldwellcc.com
`acurry@caldwellcc.com
`amosser@caldwellcc.com
`chillsound@caldwellcc.com
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`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 No. 8,090,309
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`PATENT OWNER’S RESPONSE
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`Filed on behalf of Chestnut Hill Sound Inc.
`By: Hamad H. Hamad
`John Austin Curry (pro hac vice pending)
`
`
`Alexis (Steinberg) Mosser
`CALDWELL CASSADY CURRY, P.C.
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: 214.888.4848
`Facsimile: 214.888.4849
`hhamad@caldwellcc.com
`acurry@caldwellcc.com
`amosser@caldwellcc.com
`chillsound@caldwellcc.com
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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 No. 8,090,309
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`
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`PATENT OWNER’S RESPONSE
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`Case IPR2016-00794
`Patent No. 8,090,309
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`TABLE OF CONTENTS
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`Introduction: Chestnut Hill Changes the Way We Listen ........................... 1
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`Petitioner Failed to Meet Its Twin Burdens of Proof and Production .......... 5
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`I.
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`II.
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`III. The Claimed Invention .................................................................................. 7
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`A. The First Mode ...................................................................................... 7
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`B. The Second Mode .................................................................................. 8
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`IV. Neither AbiEzzi nor Baumgartner Discloses the Elements of ʼ309
`to Reach Obviousness ................................................................................... 9
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`A. Undisclosed Limitations of Claim 9 Prevent an Obviousness
`Determination ...................................................................................... 10
`
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`B. AbiEzzi Does Not Disclose a Media Source That Is a Server ............ 13
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`V. Motivation to Combine Absent from Evidence .......................................... 17
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`A. Petitioner Fails to Offer any Evidence of Motivation to Combine ..... 18
`
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`VI. Petitioner Failed to Evaluate Secondary Considerations Which
`Foreclose an Obviousness Determination ................................................... 24
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`A. The System Embodying George Was Commercially Successful
`and Praised by Others .......................................................................... 26
`
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`B. Petitioner’s Similar But Later Filing Is Evidence of Multiple
`Secondary Factors ............................................................................... 28
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`VII. Petitioner’s Expert’s Testimony Should Be Given Little Weight .............. 32
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`A. Declaration and Petition Are Substantively Identical ......................... 32
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`B. Declaration Unsupported by Citations to Facts .................................. 34
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`C. Expert Did Not Write and Does Not Know His Testimony ............... 36
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`VIII. Conclusion ................................................................................................... 38
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`Case IPR2016-00794
`Patent No. 8,090,309
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`TABLE OF AUTHORITIES
`
`Cases
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.
` 694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 18
`
`Apple Inc. v. Samsung Elecs. Co.
` No. 2015-1171, 2016 WL 5864573 (Fed. Cir. Oct. 7, 2016) ............................... 24
`
`Arendi S.A.R.L. v. Apple Inc.
` 832 F.3d 1355 (Fed. Cir. 2016) ..................................................................... 13, 24
`
`Comark Commc’ns, Inc. v. Harris Corp.
` 156 F.3d 1182 (Fed. Cir. 1998) ..................................................................... 16, 17
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`Fujitsu Semiconductor Ltd., et al. v. Zond, LLC
` IPR2014-00821, 2015 WL 5722806 (PTAB Sept. 25, 2015) .............................. 18
`
`Graham v. John Deere Co. of Kansas City
` 383 U.S. 1 (1966) .................................................................................................. 10
`
`In re Kubin
` 561 F.3d 1351 (Fed. Cir. 2009) ............................................................................ 35
`
`In re Magnum Oil Tools Int'l, Ltd.
` 829 F.3d 1364 (Fed. Cir. 2016) ....................................................................... 5, 38
`
`InfoBionic, Inc. v. Braemar Manufacturing, LLC
` IPR2015-01704 (Feb. 26, 2016), Paper 11 ........................................................... 33
`
`Int'l Bus. Machines Corp. v. Intellectual Ventures I LLC
` IPR2015-00304, 2015 WL 3543113 (PTAB June 2, 2015) .......................... 16, 17
`
`KSR Int’l Co. v. Teleflex Inc.
` 550 U.S. 398 (2007) ......................................................................................... 6, 10
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`Nike, Inc. v. Adidas AG
` 812 F.3d 1326 (Fed. Cir. 2016) ............................................................................ 31
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`Procter & Gamble Co. v. Teva Pharm. USA, Inc.
` 566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 5
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`Rohm & Haas Co. v. Brotech Corp.
` 127 F.3d 1089 (Fed. Cir. 1997) ............................................................................ 36
`
`Tandon Corp. v. United States Int’l Trade Comm'n
` 831 F.2d 1017 (Fed. Cir. 1987) ............................................................................ 17
`
`Thorner v. Sony Computer Entertainment America LLC
` 669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 17
`
`Statutes
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`35 U.S.C. § 103 (2006) .............................................................................................. 9
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`35 U.S.C. § 103(a) ..................................................................................................... 6
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`37 C.F.R § 1.56 ........................................................................................................ 31
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`37 C.F.R § 42.1(d) ..................................................................................................... 5
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`37 C.F.R § 42.65 ...................................................................................................... 35
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`37 C.F.R. § 42.65(a) ................................................................................................. 33
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`Rules
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`Fed. R. Evid. 705 ..................................................................................................... 35
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`Other Authorities
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`CFR Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and
`Regulations 48763 ................................................................................................ 36
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`U.S. Const. Art. 1, Sec. 8, Cl. 8 ............................................................................... 38
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`I.
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`Introduction: Chestnut Hill Changes the Way We Listen
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`In 2004, Chestnut Hill Sound Inc. (“Patent Owner”) began developing a
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`system for the playback of digital audio content. That effort culminated in the
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`launch of an iPod audio system, GeorgeTM, embodied in part by Patent Owner’s
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`U.S. Patent No. 8,090,309 (“the ʼ309 Patent”, Ex. 1001). George was
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`commercially very successful, and was widely distributed through Petitioner’s
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`stores and other retailers like Best Buy. George was featured at the Macworld
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`tradeshow, won a Best of Show award there, a “Play of the Year” award from
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`Macworld Magazine, and PC Magazine’s Editor’s Choice Award, all shortly after
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`its launch in 2007. Ex. 2015 and 2016, Chestnut Hill Sound Inc. v. Apple Inc., Pl.
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`First Amnd. Complaint, No. 15-261-RGA (D. Del) Exs.1 and 2, respectively (press
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`releases from Petitioner describing the awards received by the George system).
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`The features embodied by the ʼ309 patent are primarily based on research
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`and development from the GeorgeTM project. The ʼ309 Patent discloses and claims
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`a media device that operates in two modes, and a method of using the disclosed
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`two-mode media device. In the first mode, the media device operates as a media
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`player, with a display presenting data about media files or media streams (media
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`metadata) that a user can select and play from a media source that is co-housed
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`with or directly connected to the media device. In the second mode, the media
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`1
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`device operates as a remote controller of a remote media source. That remote
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`control is implemented through bi-directional messaging. The media device
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`obtains media metadata, displays media content information, and generates the
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`appropriate control signals to cause the remote media source to send selected
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`media to an output device separate from the media device.
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`In addition to allowing selection and playback of co-housed or directly
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`connected media in the first mode and remotely stored media in the second mode,
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`the invention’s use of media metadata to select and play media offers the
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`advantages of faster and more flexible access to the media. Further, the remote
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`media source can be controlled without the media device having a catalog or
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`archive of all available media.
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`The system and method of the ʼ309 patent changed the way users interacted
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`with their multimedia content by addressing several problems that existed in the
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`field. Previously users could dock their music players into amplifier or speaker
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`systems, but those units had “a limited range of players they [could] accept as
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`input.” Ex. 1001, the ʼ309 patent at 1:47. Because of rapid advances in the field of
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`portable music players, existing systems were also “made obsolete in relatively
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`short order by the introduction to the market of a new music player or other
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`device.” Id. at 1:50-51. The Patent Owner recognized a need “for an
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`entertainment platform which is not so readily obsolesced”, with less “limited
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`2
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`external control of the player”, where the player need not be “left connected in a
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`fixed location” preventing the user from “sit[ting] some distance away…or
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`mov[ing] around.” Id. at 1:53-54, 1:57-58, 1:66-2:1. The Patent Owner
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`recognized that the existing state of the art systems hampered the desired
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`flexibility, because of the “considerable challenge to providing remote selection of
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`content while minimizing latency in the process.” Id. at 2:7-8. The ʼ309 patent
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`represents an answer to the need for “faster and more flexible access to the content
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`of a portable digital music player”. Id. at 2:23-24.
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`Petitioner challenges the validity of the claims of the ʼ309 patent on
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`obviousness grounds in view of the references U.S. Patent App. Pub. No.
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`2005/0132405 to AbiEzzi, et al. (Ex. 1005, hereinafter “AbiEzzi”) and U.S. Patent
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`No. 8,156,528 to Baumgartner et al. (Ex. 1007, “Baumgartner”). But a review of
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`the Petition for Inter Partes Review (IPR2016-00794, Paper No. 2, hereinafter “the
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`Petition”) reveals that the Petitioner failed to meet its burdens of proof and
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`production of evidence of invalidity. The asserted references do not indicate that
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`the claims of the ʼ309 patent are obvious. The Petitioner’s Expert offers only
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`factually unsupported conclusions regarding the motivation to combine the
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`references. Neither the Petition nor the Petitioner’s Expert offers evidence of a
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`motivation to combine which existed contemporaneously with the priority date of
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`the ʼ309 patent application. Additionally, the evidence of secondary
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`3
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`considerations reveals that even after the priority date of the ʼ309 patent the
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`Petitioner acknowledged, in its own patent filings, a long-felt need for the
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`invention embodied by the ʼ309 patent. Finally, the largely unsubstantiated
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`opinions proffered by the Petitioner’s Expert should be accorded little or no weight
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`because they are not based on facts and thus do not qualify as evidence.
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`Petitioner’s Expert’s opinions are largely verbatim parroting of arguments in the
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`Petition.
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`The Petitioner has failed to meet its burden to provide factual underpinnings
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`to a determination that the challenged claims of the ʼ309 patent are obvious.
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`Petitioner did not demonstrate that the cited references teach all the elements and
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`limitations of the challenged claims of the ʼ309 patent such to render the claims
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`obvious. The cited references, even arguendo taken in combination, fail to teach
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`critical elements of the ʼ309 patent, such as a processor enabled to operate in both
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`the first and second modes, or a media source which is a server. The Petitioner
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`failed to proffer factually supported expert testimony and instead offered only
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`conclusory testimony regarding a motivation to combine the references, a known
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`method by which to combine them, and a statement of the likely success of such a
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`combination. Finally, Petitioner’s Expert Declaration is duplicative of its Petition,
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`calling into question the authorship of the Declaration, and in any event, because
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`the Declaration and Petition simply mimic each other’s conclusions, the
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`4
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`Declaration provides little if any evidentiary support for the arguments set forth in
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`the Petition. The Expert Declaration should therefore be afforded little weight.
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`Accordingly, the Board should determine that Petitioner has failed to carry
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`its burden to demonstrate that any challenged claim of the ʼ309 patent is invalid.
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`II.
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`Petitioner Failed to Meet Its Twin Burdens of Proof and Production
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`As its sole argument before the Board, the Petitioner asserts that Claims 1
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`through 14 are obvious over AbiEzzi in view of Baumgartner. The Petitioner has
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`failed to meet its burden to establish by a preponderance of the evidence that the
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`ʼ309 patent is obvious in light of the cited references. The burden rests solely on
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`the Petitioner to demonstrate by a preponderance of evidence, 37 C.F.R § 42.1(d),
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`“that a skilled artisan would have had reason to combine the teaching of the prior
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`art reference to achieve the claimed invention, and that the skilled artisan would
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`have had a reasonable expectation of success from doing so.” Procter & Gamble
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`Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (emphasis
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`added). The burden of both proof and production remains with the Petitioner for
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`the duration of the Inter Partes Review proceedings. In re Magnum Oil Tools Int'l,
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`Ltd., 829 F.3d 1364, 1375-1376 (Fed. Cir. 2016) (determining that the Board’s
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`application of a shift of the burden of production on the issue of obviousness to the
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`patentee after the institution decision was incorrect). Here, the Petitioner has failed
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`to provide an expert opinion, properly supported by citations to facts, that there
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`was reason for a skilled artisan to combine the references, or that there was a
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`reasonable expectation of success from doing so.
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`An assertion of invalidity based upon obviousness more generally requires
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`that the Petitioner establish that “the differences between the subject matter sought
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`to be patented and the prior art are such that the subject matter as a whole would
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`have been obvious at the time the invention was made to a person having ordinary
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`skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). The
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`Board must beware “hindsight bias and must be cautious of arguments reliant upon
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`ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`There are only three brief paragraphs of expert testimony from Petitioner’s Expert
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`relating to the combination of the references, and virtually no factual citations
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`regarding any known methods to combine. Ex. 1003, Mercer’s Dec. at ¶¶ 25-27.
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`The expert testimony proffered by Petitioner amounts to no more than ex post
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`reasoning, with no evidence that the invention would have been obvious at the time
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`of invention. In the absence of clear expert testimony, supported by valid factual
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`citations, the Board should decline to accept Petitioner’s thinly veiled attempts to
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`invalidate the challenged claims of an innovative and commercially successful
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`invention, and find that the claims of the ʼ309 patent are not invalid.
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`6
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`III. The Claimed Invention
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`The ʼ309 Patent is directed to a media device which operates in multiple
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`ways to control a variety of media sources. Two of these operating modes are the
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`subject of the claims. (See e.g., Ex. 1001, the ʼ309 patent at 3:21-31, 8:58-9:8,
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`3:64-4:7, 8:11-42, 18:33- 38). The claimed modes offer faster and more flexible
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`access to media through a device that operates in one mode as a media player,
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`allowing a user to select and play co-housed or directly connected media and
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`operates in a second mode as a remote controller allowing a user to select and play
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`remote media. (See e.g., Id. at 2:2-22, 17:57-61, 17:31-36, 8:33-37).
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`A. The First Mode
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`In the first mode, the media device operates as a media player, enabling
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`users to access media from a media source that is cohoused with or directly
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`connected to the media device. (See e.g., id. at Figs. 1, 8, 3:21-31, 8:58-9:2, 7:44-
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`8:2 18:33-38; see also id. at 14:61-67). In this first mode, control is achieved
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`through an interactive display of the media device that presents media metadata
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`which is associated with media content. The metadata includes information that
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`describes the selectable media available for playback. (Id.; see also id. at 9:24-32).
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`Using this first mode, users can view, on the media device, information about the
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`media cohoused with or directly connected to the media device, and using the
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`media device users can select, based upon the displayed media metadata, media to
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`7
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`be played. (Id.). The media device responds to such a user selection with an
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`indication of what was selected and plays the selected media on the media device.
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`(Id.).
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`B.
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`The Second Mode
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`In the second mode, the media device operates as a remote controller,
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`enabling users to play music in multiple locations throughout their house, and to
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`control that playback from multiple locations. (See e.g., id. at 4:3-8). This control
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`is implemented by connecting the media device to a remote media source (e.g., a
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`personal computer with an iTunes library) via a network interface, such as a WiFi
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`connection. (Id. at Figs. 1, 2a, 2b, 13, 3:21-31, 8:11-34, 8:37-42, 1:59-63). Over
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`this connection to the remote media source, the media device can transmit and
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`receive messages, including a transmitted request for media metadata that
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`describes the selectable media available at the remote media source. (See e.g., id. at
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`18:7-11, 17:31-46). The media device receives, from the remote media source,
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`media metadata indicating the media files and media streams that are available at
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`the remote media source. (See e.g., id. at 18:7-11, 17:36-46). Using this media
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`metadata, the media device displays to the user the options for media available at
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`the remote media source, permitting the user, through the media device, to view
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`and select media available at the remote media source. (See e.g., id. at 17:49-55).
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`In response to a user selection of displayed media metadata through the media
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`8
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`device, the media device generates a signal and sends a corresponding signal that
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`includes the selected media metadata to the remote media source, relaying the
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`user’s selection to the remote media source. (See e.g., id. at 17:50-55, 18:27-33).
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`The remote media source responds to that signal sent in this remote controller
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`mode by both accessing the identified media and sending the accessed media (the
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`media that was identified by the user selection) to an output device separate from
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`the media device for playback. (See e.g., id. at 18:27-33; 8:11-42).
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`IV. Neither AbiEzzi nor Baumgartner Discloses the Elements of ʼ309 to
`Reach Obviousness
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`The Petition fails to establish that the combination of AbiEzzi and
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`Baumgartner discloses every element of the challenged claims of the ʼ309 patent.
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`A patent is only invalid for obviousness when “the differences between the subject
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`matter sought to be patented and the prior art are such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. §
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`103 (2006). The failure of even the combination of AbiEzzi and Baumgartner to
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`disclose several critical limitations of the challenged claims demonstrates that the
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`challenged claims were non-obvious at the time of filing. Specifically, the cited
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`references do not disclose (at least) a processor which enables the system to switch
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`from the first to second mode, nor do they disclose that a media source that is also
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`a server.
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`A finding of obviousness is a legal conclusion based on several underlying
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`facts including: (1) the scope of content of the prior art; (2) the difference between
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`the prior art and asserted claims; (3) the level of ordinary skill in the relevant art;
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`and (4) the objective evidence of non-obviousness. Graham v. John Deere Co. of
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`Kansas City, 383 U.S. 1, 17–18 (1966). When evaluating obviousness, the Board
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`must avoid “hindsight bias and must be cautious of arguments reliant upon ex post
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`reasoning.” KSR Int'l Co., 550 U.S. at 421.
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`A. Undisclosed Limitations of Claim 9 Prevent an Obviousness
`Determination
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`
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`The Petitioner failed to establish that the asserted references disclose
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`material elements of Claim 9, thus precluding a finding that the claim 9 invention
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`is obvious in view of the prior art. Specifically, Claim 9 recites “a processor unit
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`adapted to execute computer instructions stored in the memory and causing the
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`media device to operate in said first mode or said second mode…”
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`The flexibility offered by the ʼ309 patent to switch between the first and
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`second mode, enabling the media device disclosed in ʼ309 to operate with both
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`remote and local media sources, allowed the ʼ309 system to overcome various
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`problems and capability restrictions that existed at the time of its invention. As
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`10
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`described in the ʼ309 patent, existing systems had a “limited range of players [the
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`existing systems could] accept as input.” Ex. 1001, the ʼ309 patent at 1:47.
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`Previous attempts to integrate existing systems were met with problems such as
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`“incompatibility of various devices, proprietary frequencies and protocols,
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`inelegant user integration, slow content access times or even high price.” ʼ309 at
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`2:63-66. A critical aspect of integrating various multimedia systems operating
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`independently under a first and second mode, as taught by the ʼ309 patent, is the
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`development of a processor which would enable the system to operate in both the
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`first and second mode.
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`The Petitioner asserts that AbiEzzi discloses the processor element of claim
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`9 because allegedly “AbiEzzi describes its invention “in the general context of
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`computer executable instructions, such as program modules, being executed by a
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`personal computer” or “other computer system configurations, including hand-held
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`devices, multi-processor systems, microprocessor-based or programmable
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`consumer electronics, network PCs, minicomputers, mainframe computers, and the
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`like.” Pet. at 26 (quoting AbiEzzi, ¶ 0011) (emphasis added). The Petition cites to
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`paragraph 0011 of AbiEzzi in support of this allegation. No citation is made to the
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`Mercer’s Declaration in the Petition, and a review of the Mercer’s Declaration
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`reveals that the processor element recited by claim 9 is not addressed or mentioned
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`at all.
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`AbiEzzi is only alleged by Petitioner to disclose elements of the second
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`mode of operation of the challenged claims of the ʼ309 patent. Pet. at 9 (noting
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`that the first mode of the ʼ309 patent is “as described in Baumgartner” and the
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`second mode is “as described in AbiEzzi”). Thus, at minimum, the Petition fails to
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`establish by a preponderance of the evidence that the identified processor from
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`AbiEzzi is enabled to perform the operations required for the first mode of the ʼ309
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`patent. Although a processor is required to meet the recited limitation of claim 9, a
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`processor alone is not sufficient to accomplish the two-mode operation recited in
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`claim 9. Further, neither the Petition nor the Petitioner’s Expert point to any
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`evidence that the cited references teach the additional, unrecited components
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`needed for switching between the first and second modes. There is no evidence
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`that the mere existence of a processor would have been sufficient to switch
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`between modes in the alleged configuration proposed by the Petitioner’s Expert’s
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`Declaration, some further hardware or mechanical requirements could be
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`implicated.
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`Further, the Petition fails to allege that Baumgartner discloses a processor
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`unit at all. Baumgartner is the reference relied upon to disclose the first mode. Pet.
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`at 9. Consequently, the Petition does not even allege, much less demonstrate by
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`preponderance of the evidence, that Baumgartner discloses a processor that causes
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`the media device to operate in the first mode. Furthermore, under the limitations
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`of claim 9, the processor must be adapted to enable the media device to operate in
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`both the first and second modes. Any attempts by Petitioner to assert that it would
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`have been common sense to supply a processor adapted to cause the media device
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`to operate in both modes should be rejected. “Common sense is typically invoked
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`to provide a known motivation to combine, not to supply a missing claim
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`limitation.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016)
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`(reversing a PTAB decision which impermissibly applied common sense to supply
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`a missing limitation in obviousness analysis).
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`B. AbiEzzi Does Not Disclose a Media Source That Is a Server
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`Claims 6 and 14, dependent on independent claims 1 and 9 respectively,
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`recite a media source wherein the “media source is a server.” The Petition relies
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`upon AbiEzzi to disclose the element of a media source that is a server for both
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`claim 6 and claim 14. Pet. at 25, 30.1 Although the ʼ309 claims recite that the
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`media source is a server, the Petition points only to AbiEzzi’s ability for the server
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`to access the media source as allegedly disclosing this element. In fact, the
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`Petition cites to portions of AbiEzzi that consistently treat the server and the media
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`1 The analysis of claim 6 in the Petition, found on page 25, redirects to the analysis
`performed on claim 1, “See [1.3], supra the media source includes a “media server”.”
`The analysis of claim 14, found on page 30, merely cites back to the previous
`analysis of claim 6: “See [6.0], supra.” Thus, the analysis of the elements of the
`media source as a server is addressed only in the analysis of claim 1.
`13
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`source as distinct, exclusive elements. Examples cited by the Petition indicating
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`that the media source and the server are separate entities, include: “AbiEzzi
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`teaches that a “media server 100 functions as a proxy for the jukebox 80 to allow
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`the jukebox to be discovered…” (Pet. at 12 (quoting AbiEzzi, ¶ 0022)), teaching
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`“that the “media server maintains a “title directory for the titles stored on the
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`jukebox,”” (Pet. at 17 (quoting AbiEzzi, ¶ 0022)), and that “the media server
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`“receiv[es] a request…from [the] media client on the home network” (Pet. at 17
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`(quoting AbiEzzi, claims 1 and 11)).
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`But this interpretation by Petitioners stretches the concept of both a media
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`source and a server beyond a reasonable interpretation of those terms. In fact, the
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`Petition cites to and quotes portions of AbiEzzi that the media content is
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`unquestionably stored in the DVD jukebox (i.e., the media source). Pet. at 8
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`(quoting AbiEzzi Abstract, ¶ 0024). And while the Petition cites to portions of
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`AbiEzzi that disclose a server, the cited portions illustrate that the server is a
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`separate entity that is connected to the media source, not the same entity as the
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`media source. See id. The Petition selectively excerpts from Figure 2 of AbiEzzi,
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`and arbitrarily annotates the figure to include a box (not disclosed or taught in
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`AbiEzzi) around both the jukebox and the server. See, e.g., Pet. at 13. However,
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`the actual Figure 2 from AbiEzzi (included in whole and annotated below in red)
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`shows the media server as distinct from the jukebox.
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`As is apparent from Figure 2 of AbiEzzi, and labeled above, the Media Server
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`(100) is its own distinct element. The Jukebox (80) is connected to but not the
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`same as the media server. Although Petitioner drew a box around the media server
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`and the jukebox in Figure 2 of AbiEzzi and labeled it “media source remote from
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`the media device”, this does not make it so.
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`Although the Petition attempts to shoehorn these two components of
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`AbiEzzi into the same claim element, the Petitioner’s own expert testified that the
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`media source and the media server appeared to be two separate entities: “…when I
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`look at this figure, there's a strong indication that the media server is [element] 100
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`and that the jukebox (DVD) is element 80, and those are separate entities in
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`separate boxes…”2 Ex. 2007, Mercer Dep. Tr. at 73:7-10, and later “So there’s a
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`very indication actually that’s opposite that. That describes two separate entities,
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`and those entities, one of those is the media server and the other one is the jukebox
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`that we’re talking about.” Ex. 2007, Mercer Dep. Tr. at 77:1-5. And a review of
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`AbiEzzi supports this statement by Petitioner’s Expert. AbiEzzi does not identify a
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`media source that is a server; instead, it identifies a media source connected to a
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`server. Additionally, Petitioner makes no argument that the media server itself is a
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`media source, and these two elements should be treated distinctly. Indeed, under
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`the doctrine of claim differentiation, because claims 6 and 14 affirmatively claim a
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`media source that “is a server,” the scope of claims 1 and 9, respectively, includes
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`media sources that are not servers. See Comark Commc’ns, Inc. v. Harris Corp.,
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`156 F.3d 1182, 1187 (Fed. Cir. 1998); Int'l Bus. Machines Corp. v. Intellectual
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`2 Although Mercer attempts to backtrack on his initial testimony regarding the media
`server and media source of AbiEzzi as two separate entities, there is no testimony in
`either the Petition or his Declaration supporting the idea that these elements should
`be considered as one.
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`Ventures I LLC, IPR2015-00304, 2015 WL 3543113, at *5 (PTAB June 2, 2015)
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`(applying claim differentiation to presume that an independent claim does not
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`contain a limitation recited in its dependent claim). The Petition does not advance
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`any argument that explicit disclaimer or disavowal applies to these claims, and thus
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`the claims must be given their full scope. See Thorner v. Sony Computer
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`Entertainment America LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). If claims 6
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`and 14 are interpreted such that the media source is not required to be a server,
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`then the resulting absence of difference in meaning and scope would render the
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`claims superfluous because claims 1 and 9 already cover embodiments where the
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`media source is not required to be a server. See, e.g., Comark, 156 F.3d at 1187;
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`Tandon Corp. v. United States Int’l Trade Comm'n, 831 F.2d 1017, 1023 (Fed
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