Filed on behalf of: Unified Patents Inc.
`By: Philip Andrew Riley
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail:
`Qurio904-IPR@finnegan.com
`
`
`
`
`
`
`
`
`
`
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Avenue, NW, Floor 10
`Washington, DC 20009
`Telephone: 202-805-8931
`E-mail:
`jonathan@unifiedpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner
`____________
`
`IPR2016-00998
`Patent 7,787,904
`Personal Area Network Having Media Player and
`Mobile Device Controlling the Same
`__________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,787,904
`
`

`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`INTRODUCTION ......................................................................................... ..1
`
`II. MANDATORY NOTICES ............................................................................. 1
`
`MANDATORY NOTICES ........................................................................... ..1
`
`A.
`A.
`
`B.
`
`B.
`
`C.
`C.
`
`Real Party-in-Interest ............................................................................ 1
`Real Party—in—Interest .......................................................................... ..1
`
`Related Matters ...................................................................................... 1
`
`Related Matters .................................................................................... ..1
`
`Lead and Backup Counsel, and Service Information ............................ 1
`Lead and Backup Counsel, and Service Information .......................... ..1
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 2
`REQUIREMENTS FOR INTER PARTES REVIEW .................................... ..2
`
`III.
`
`IV. OVERVIEW OF THE 904 PATENT .............................................................. 3
`
`OVERVIEW OF THE 904 PATENT ............................................................ ..3
`
`IV.
`
`A.
`
`A.
`
`B.
`
`B.
`
`C.
`
`C.
`
`D.
`
`D.
`
`SUMMARY OF THE 904 PATENT .................................................... 3
`
`SUMMARY OF THE 904 PATENT .................................................. ..3
`
`LEVEL OF ORDINARY SKILL .......................................................... 4
`
`LEVEL OF ORDINARY SKILL ........................................................ ..4
`
`STATE OF THE PRIOR ART BEFORE THE 904 PATENT ............. 5
`
`STATE OF THE PRIOR ART BEFORE THE 904 PATENT ........... ..5
`
`SUMMARY OF THE PROSECUTION FILE HISTORY ................... 8
`
`SUMMARY OF THE PROSECUTION FILE HISTORY ................. ..8
`
`V.
`
`PROPOSED CLAIM CONSTRUCTION ....................................................... 8
`
`PROPOSED CLAIM CONSTRUCTION ..................................................... ..8
`
`VI.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 904 PATENT IS UNPATENTABLE ....................... 9
`
`ONE CLAIM OF THE 904 PATENT IS UNPATENTABLE ..................... ..9
`
`A.
`
`A.
`
`B.
`
`B.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART .......... 9
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ........ ..9
`
`SUMMARY OF INVALIDITY POSITIONS .................................... 14
`
`SUMMARY OF INVALIDITY POSITIONS .................................. .. 14
`
`VII.
`
`DETAILED EXPLANATION OF GROUNDS FOR
`
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CHALLENGED CLAIMS ................................ 15
`
`UNPATENTABILITY OF CHALLENGED CLAIMS .............................. .. 15
`
`A.
`
`GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS
`
`A. GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER DE VET IN VIEW OF VIDAL ............................................... 15
`
`OVER DE VET IN VIEW OF VIDAL ............................................. ..15
`
`B.
`
`GROUND 2: THE CHALLENGED CLAIMS ARE OBVIOUS
`
`B. GROUND 2: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER MORSE AND HOLLOWAY ................................................. 30
`
`OVER MORSE AND HOLLOWAY ............................................... ..30
`
`C.
`
`GROUND 3: THE CHALLENGED CLAIMS ARE OBVIOUS
`
`C. GROUND 3: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER NETREMOTE AND RX3000 ................................................ 46
`
`OVER NETREMOTE AND RX3000 .............................................. ..46
`
`ii
`
`

`
`VIII. CONCLUSION .............................................................................................. 58
`
`VIII. CONCLUSION ............................................................................................ ..58
`
`
`
`
`
`iii
`
`iii
`
`

`
`LIST OF EXHIBITS
`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 7,787,904 B2 to Qurio Holdings, Inc. (“the 904
`Patent”)
`Ex. 1002 File History of U.S. Patent No. 7,787,904 B2
`Ex. 1003 De Vet et al, “A personal digital assistant as an advanced remote
`control for audio/video equipment” from the Second Workshop on
`Human Computer Interaction with Mobile Devices, 1999 (“De Vet”)
`Ex. 1004 U.S. Patent Application Publication No. 2003/0193426 (“Vidal”)
`Ex. 1005 U.S. Patent Application Publication No. 2005/0057538 (“Morse”)
`Ex. 1006 U.S. Patent Application Publication No. 2006/0041655 (“Holloway”)
`Ex. 1007 (Reserved)
`Ex. 1008 NetRemote LE Installation Guide (“Installation Guide”)
`Ex. 1009 NetRemote LE Network Configuration Guide (“Configuration
`Guide”)
`Ex. 1010 NetRemote LE Setup Guide (“Setup Guide”)
`Ex. 1011 October 13, 2004 Internet Archive Capture of
`http://www.promixis.com/products.php?section=netremote
`(“NetRemote Webpage”)
`Ex. 1012 User’s Guide for HP iPAQ rx3000 series Mobile Media Companion,
`Document Part Number 364351-002, August 2004 (“RX3000”)
`Ex. 1013 Declaration of Tal Lavian, Ph.D.
`Ex. 1014 Declaration of John de Vet
`Ex. 1015 Declaration of Ron Bessems
`Ex. 1016 Declaration of Lisa Gade
`Ex. 1017 Declaration of Christopher Butler
`Ex. 1018 Declaration of Mark Dunlop, Ph.D.
`Ex. 1019 Declaration of Sara Hare
`Ex. 1020 U.S. Pub. No. 2001/0033244 A1 to Harris et al.
`Ex. 1021 U.S. Patent No. 4,746,919 to Reitmeier
`Ex. 1022 U.S. Pub. No. 2003/0115351 to Giobbi
`Ex. 1023 U.S. Patent No. 7,571,014 to Lambourne et al.
`Ex. 1024 Peter Tarasewich, Wireless Devices for Mobile Commerce: User
`Interface Design and Usability, in Mobile Commerce: Technology,
`Theory, and Applications 26-50 (2002).
`Ex. 1025 Brad A. Myers, Using handhelds for wireless remote control of PCs
`and appliances 17 Interacting with Computers 251-264 (2005)
`Ex. 1026 Labeled Claim Language of Claims 1-20 of U.S. Pat. No. 7,787,904
`
`iv
`
`

`
`Interroato Res onses Ex. 1028 Declaration of Charles A. Elderin, Ph.D.
`
`B2
`Ex. 1027 Unified Patents Voluntary Interrogatory Responses
`Ex. 1027 Unified Patents Volunt
`Ex. 1028 Declaration of Charles A. Eldering, Ph.D.
`
`
`
`
`v
`
`

`
`
`
`I.
`
`Inter Partes Review
`U.S. Patent No. 7,787,904
`
`INTRODUCTION
`Unified Patents Inc. (“Unified”) requests inter partes review of claims 1-3,
`
`10, 12, and 15-18 (“Challenged Claims”) of U.S. Pat. No. 7,787,904 B2 (the “904
`
`Patent,” Ex. 1001), assigned to Qurio Holdings, Inc. Unified also requests party
`
`joinder with IPR2015-02005 in its concurrently filed motion.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8 (b)(1), Petitioner certifies that Unified is the
`
`real party-in-interest, and further certifies that no other party exercised control or
`
`could exercise control over Unified’s participation in this proceeding, the filing of
`
`this petition, or the conduct of any ensuing trial. In this regard, Unified has
`
`submitted voluntary discovery. See Ex. 1027.
`
`B. Related Matters
`The 904 Patent is asserted in an on-going lawsuit in Qurio Holdings, Inc. v.
`
`DIRECTV, LLC, 3:15-cv-01986 (N.D. Cal), transferred from 14-cv-07502 (N.D.
`
`Ill. Sept. 26, 2015). The 904 Patent is also asserted in Qurio Holdings, Inc. v. Dish
`
`Network Corp. 15-cv-00930 (N.D. Cal.), and Qurio Holdings, Inc. v. Comcast
`
`Cable Communications LLC, 15-cv-03334 (E.D. Pa.).
`
`C. Lead and Backup Counsel, and Service Information
`Unified designates P. Andrew Riley (Reg. No. 66,290) as lead counsel and
`
`Christopher C. Johns (Reg. No. 68,664) as backup counsel. They can be reached at
`
`1
`
`

`
`
`
`Inter Partes Review
`U.S. Patent No. 7,787,904
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 901 New York Avenue,
`
`NW, Washington, DC 20001-4413 (phone: 202.408.4000; fax: 202.408.4400).
`
`Unified also designates as backup counsel Jonathan Stroud (Reg. No. 72,518), who
`
`can be reached at Unified Patents Inc., 1875 Connecticut Ave. NW, Floor 10,
`
`Washington, D.C., 20009 (phone: 202-805-8931; fax: 650-887-0349; e-mail:
`
`jonathan@unifiedpatents.com). Petitioner consents to e-mail service at Qurio904-
`
`IPR@finnegan.com.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with 37 C.F.R. §§ 42.104, 42.105 and 42.15 and
`
`should be accorded a filing date as the date of filing of this Petition pursuant to 37
`
`C.F.R. § 42.106.
`
`Unified certifies that the 904 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR on the grounds identified
`
`herein. 37 C.F.R. § 42.104(a). Petitioner has the standing, or meets all
`
`requirements, to file under 35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1) and 325(e)(1)
`
`and 37 C.F.R. §§ 42.73(d)(1), 42.101 and 42.102.
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and 42.22, Unified requests cancellation
`
`of Challenged Claims of the 904 Patent based on the grounds and evidence
`
`presented.
`
`2
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`

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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`IV. OVERVIEW OF THE 904 PATENT
`The 904 Patent issued on Aug. 31, 2010 from an application filed on Nov. 9,
`
`2005, which is the earliest priority date of the 904 Patent.
`
`SUMMARY OF THE 904 PATENT
`
`A.
`The 904 Patent describes a mobile device that wirelessly communicates with
`
`media devices to select content to be played by the media devices (i.e. a “smart
`
`remote”). See, e.g., Ex. 1001, Abstract; 3:4-8, 41-47; 4:15-20, 38-40; Figs. 2-4 and
`
`6. Fig. 6 is shown below to illustrate various features disclosed in the 904 Patent.
`
`
`
`The mobile device, such as a mobile phone, a PDA, or “a stand-alone device
`
`similar to a remote control,” has a control system and a wireless communication
`
`interface for communicating (e.g., via a WPAN such as Bluetooth or WiFi) with
`
`the media devices. Ex. 1001, 1:29-30; 4:4-7, 15-20. The control system of the
`
`mobile device includes a media client and a media database of information about
`
`the media content. Id. at 4:21-23; 5:22-26; Figs. 3, 5. The media client of the
`
`3
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`

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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`mobile device wirelessly interacts with a media server (associated with a media
`
`device) to obtain data describing the content in a content database (also associated
`
`with the media device), such as filename, file type, or genre. Id. at 4:25-33; 5:22-
`
`26; 6:19-20; Fig. 3; Fig. 5. The media database of the mobile device stores the
`
`metadata, which a user can browse to select content for play. Id. at 4:30-31, 38-40.
`
`The media client in the mobile device directs the media server associated
`
`with the media device to play content, and the media server directs a media player
`
`(also associated with the media device) to play the content from the content
`
`database. Ex. 1001, 6:33-40, Fig. 4, Fig. 6. PCs, DVRs, audio players (e.g., MP3
`
`players), and digital picture frames are examples of media devices. Id. at 3:26-31.
`
`Each media device includes the content database (e.g., a hard drive or RAM), a
`
`wireless communication interface for communicating with the mobile device (e.g.,
`
`via Bluetooth or WiFi), and a control system. Id. at 3:32-35, 54-57. The control
`
`system includes the media player and the media server. Id. at 3:48-49.
`
`LEVEL OF ORDINARY SKILL
`
`B.
`A person of ordinary skill in the art (POSITA) as of the earliest date for
`
`which the 904 Patent can claim priority (Nov. 2005) would have possessed at least
`
`a bachelor’s degree in computer science and/or electrical engineering and two
`
`years of experience in internet, networking, or related software technologies, as
`
`4
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`well as familiarity with mobile wireless devices and communications. Ex. 10131 at
`
`¶ 33. Such a person would have familiarity with communications between wireless
`
`clients and hosts, as well as various wireless standards such as Wi-Fi or Bluetooth.
`
`Id.
`
`STATE OF THE PRIOR ART BEFORE THE 904 PATENT
`
`C.
`The purported technology claimed in the 904 Patent was old and well-known
`
`long before Nov. 9, 2005. See e.g., Ex. 1013 at ¶¶ 35, 152. For example, wireless
`
`remote controls for media players were introduced before 1950. Id. at ¶40. Mobile
`
`devices such as PDAs and cellular telephones were available in the 1990’s Id. at ¶¶
`
`43-44. Wireless communication between devices via Wi-Fi, infrared, and
`
`Bluetooth were all in the prior art. Id. at ¶¶ 45-48; see Ex. 1001 at 4:15-20.
`
`The concept of retrieving information from a device and controlling the
`
`device remotely based on that information (including outputting content based on
`
`that information) was also well-known in the public domain. For decades, UNIX
`
`terminals could connect to a computer over a network to retrieve information about
`
`files stored by the computer (such a file listing) in response to a user command. Ex.
`
`1013 at ¶¶ 50-51. The terminal user could perform an operation on those files, such
`
`
`1 Unified’s Expert adopts the positions taken by Tal Lavian, Ph.D. in IPR2015-
`
`02005.
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`5
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`as sending the file to a printer connected to the computer. Id. Similar concepts–
`
`such as networked arrangements to browse and control the playback of digital
`
`content on remotely controlled devices–were disclosed for wireless remote control
`
`devices well before the 904 Patent’s priority date. See Ex. 1013 at ¶¶ 53-59. For
`
`example, in 1986, the prior art included a system in which a device to be controlled
`
`(e.g., TV, VCR) wirelessly transmitted information to a touch-screen remote
`
`control to identify functions of on-screen buttons. See Ex. 1021 (Patent No.
`
`4,746,919 (filed Mar. 28, 1986)); Ex. 1013 at ¶ 52. In 2001, the prior art disclosed
`
`a Bluetooth remote control that received media information (e.g., track listing on a
`
`CD) from a control station for display on a screen on the remote control for a user
`
`to select media
`
`to play. Ex. 1020 (Patent Application Publication No.
`
`2001/0033244, published Oct. 25, 2001) at ¶¶ 70-74; Figs. 14, 15; Ex. 1013 at ¶
`
`52; see Ex. 1002 at 46-61 (October 2005 prior art explaining “Bluetooth Remote
`
`Control is a remote controller for your PC” and showing control of iTunes from the
`
`mobile device); Ex. 1013 at ¶¶ 40-42, 52-58.
`
`U.S. Patent Publication No. 2003/0115351 (published Jun. 19, 2003)
`
`disclosed remote media clients connected to a centralized digital content server and
`
`controlled by a wireless (e.g., Bluetooth) remote control with a screen for
`
`displaying and selecting content available on the server for streaming to a remote
`
`media client for playback. See, e.g., Ex. 1022 at ¶¶ 0009-12; Ex. 1013 at ¶53.
`
`6
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`In another sophisticated example, over a year before the 904 Patent’s
`
`application, a patent application was filed for a system in which a wireless (e.g.,
`
`WiFi) remote control displayed a plurality of zones, each having one or more
`
`media players, along with a selection of tracks available to play on the media
`
`players. See Ex. 1023 (patent filing in June 2004); Ex. 1013 at ¶ 54. The remote
`
`control allowed a user to select tracks to play at the media players individually
`
`(e.g., each device plays a different track at a different volume) or synchronously
`
`(e.g., each device plays the same track), using track information displayed on the
`
`remote control. Ex. 1023 at Fig. 3B, 3C; Ex. 1013 at ¶ 54.
`
`These technologies were so common that by July 2004, one author wrote an
`
`entire article about using handhelds that displayed functions and media information
`
`on-screen as wireless remote controls. Ex. 1025; see Ex. 1013 at ¶¶ 55-58.
`
`Accordingly, the concept of remotely controlling media files on media
`
`devices by selecting from options stored in a mobile device (and displayed on a
`
`screen) was old and well known. Long before the priority date of the 904 Patent, a
`
`POSITA would not have recognized any novelty in the claimed features. Ex. 1013
`
`at ¶ 513. Thus, the Challenged Claims are nothing more than belated attempts to
`
`claim what was already known in the industry. Yet, none of the references relied
`
`on for proposed grounds of rejection in this Petition were identified by or
`
`considered by the Office during the prosecution of the 904 Patent.
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`7
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`SUMMARY OF THE PROSECUTION FILE HISTORY
`
`D.
`During the original prosecution, the claims of the 904 Patent were rejected
`
`twice in two non-final Office Actions using the same base reference, which related
`
`to controlling user access of content at a mobile terminal. Ex. 1002 at 85-92 (first
`
`non-final action); 101-105 (response to first non-final action); 116-130 (second
`
`non-final action); 134-143 (response
`
`to second non-final action). Then,
`
`surprisingly, the claims were allowed without having been amended and without
`
`any record suggesting the reasons for allowance. See Ex.1002 at 146-152.
`
`As shown by the cited prior art references in this Petition, the Examiner
`
`relied on an incomplete record of relevant prior art during the examination and did
`
`not know that the subject matter of the issued claims in the 904 Patent was well
`
`known before its filing date and thus was not patentable.
`
`V.
`
`PROPOSED CLAIM CONSTRUCTION
`
`Petitioner proposes construction of one claim term below pursuant to the
`
`broadest reasonable interpretation (BRI) standard for inter partes review. The
`
`proposed BRI claim constructions are offered only to comply with 37 C.F.R. §§
`
`42.100(b) and 42.104(b)(3) and for the sole purpose of this Petition, and thus do
`
`not necessarily reflect appropriate claim constructions to be used in litigation and
`
`other proceedings where a different claim construction standard applies. The term
`
`of “Mobile Device” in each of the Challenged Claims is construed under BRI to
`
`8
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`mean “[A] mobile phone, Personal Digital Assistant (PDA), or the like [or] a
`
`stand-alone device similar to a remote control.” Ex. 1001 at 4:4-7; Ex. 1013 at ¶¶
`
`77-78. All other claim terms in the Challenged Claims are construed to have their
`
`respective plain and ordinary meaning under BRI.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 904 PATENT IS UNPATENTABLE
`
`The Challenged Claims are unpatentable under 35 U.S.C. § 103(a) for
`
`merely reciting known, predictable and/or obvious combinations of the prior art.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`De Vet (Ex. 1003): De Vet is prior art under §102(b) because it was
`
`published in 1999. Ex. 1014 at ¶¶ 6-7, 12 (declaration by co-author describing
`
`submission and presentation of De Vet at technology conference in 1999, and
`
`access by public to a copy on a website); Ex. 1018 at ¶¶ 20-21 (declaration by
`
`conference co-organizer describing public access to De Vet on website and
`
`presentation at conference); Ex. 1017 at Ex. A, p. 78-82 (internet archive
`
`declaration of Christopher Butler showing publication on internet on March 14,
`
`2003). Other printed papers and publications cited this paper well before the filing
`
`of the 904 Patent. See, e.g., Ex. 1024 at 13. De Vet discloses using a handheld
`
`PDA device as a catalogue and remote control to browse, select, and play music
`
`tracks in a virtual CD jukebox (i.e., a CD collection in MP3 format on a PC)
`
`organizing the tracks available for playback by CD. Ex. 1003 at 87-88. The PDA
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`U.S. Patent No. 7,787,904
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`displays attributes such as genre, artist, release year, and album. Id. at 87-88. The
`
`PDA communicates with the PC via a wireless infrared link. Id. at 88. Connecting
`
`the PDA to the PC results in an update of the catalogue, which is stored and
`
`available for viewing even when the PDA is out of range of the PC. Id. at 88-89.
`
`De Vet also discloses controlling multiple devices and using the PDA to store a
`
`catalog of video discs or videotapes, or to function as an electronic program guide
`
`for television. Id. at 89.
`
`Vidal (Ex. 1004): Vidal was a U.S. patent application published on Oct. 16,
`
`2003, and thus is prior art under §102(b). Vidal discloses a touch-screen universal
`
`remote control that wirelessly communicates with and controls a plurality of
`
`appliances (e.g., TV, stereo, computer, DVD player, MP3 player). Ex. 1004 at
`
`Abstract, ¶¶ 0019, 0033, Figs. 1, 2. The remote control automatically discovers
`
`appliances through the wireless communication interface (e.g., Bluetooth or other
`
`RF or infrared link) and provides a user with options to choose an appliance. Id. at
`
`¶¶ 0035-38, 0052, 0055, Figs. 2, 5. Upon selection of an appliance, the remote
`
`control requests a menu description from the appliance. Id. at ¶¶ 0036, 0053, 0057,
`
`Fig. 6. The appliance responds with the menu description, which is a specification
`
`that the remote control interprets to configure the user interface screen to display a
`
`menu of options (e.g., play, stop, fast-forward) for a user to operate the appliance
`
`with the remote control. Id. at ¶¶ 0020, 0036, 0041-42, 0053, 0057, Fig. 3. Data
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`10
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`Inter Partes Review
`U.S. Patent No. 7,787,904
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`sent from the appliance to the remote control for display may also include the title
`
`of a movie being played and progress within the movie. Id. at ¶¶ 0041-42, 0059,
`
`Fig. 3.
`
`Morse (Ex. 1005): Morse was a patent application filed on Sept. 2, 2003 and
`
`published on Mar. 17, 2005. Morse is prior art under at least §§102(a) and 102(e).
`
`Morse describes a playback unit that communicates content data (e.g., audio track
`
`titles, album names, and video clip titles) about digital media files stored on a
`
`media content storage device. Ex. 1005 at ¶¶ 0029, 0035-36, 0054-55; Fig. 2. The
`
`content data is communicated to a remote control device that displays it to a user.
`
`Id. The displayed information is used to browse the content data on the remote
`
`control and select media for playback at a playback device (e.g., a TV or stereo
`
`system). Id. A single remote control can communicate with more than one
`
`playback unit. Id. at ¶¶ 0040, 0043, 0048, Fig. 10.
`
`Holloway (Ex. 1006): Holloway is prior art under at least § 102(e) because it
`
`is a Feb. 23, 2006 publication of an application filed on Jan. 5, 2005, and claims
`
`priority to a provisional application filed on May 6, 2004. Holloway discloses a
`
`wireless remote control for controlling a host A/V system using Bluetooth bi-
`
`directional communication. Ex. 1006 at Abstract, ¶¶ 0081, 0116, 0363-65. The host
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`A/V system is an assembly of various A/V elements in a single chassis, such as a
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`CD player, an MP3 player, and a hard drive. Id. at ¶¶ 0052, 0059, 0063, Figs. 1-7.
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`The remote control receives a menu of options and information from the host A/V
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`system for display to a user, such as media titles and “a file system [for the internal
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`hard drive] so that the user can select a file to play back.” Id. at ¶¶ 0132, 0210;
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`Figs. 11A, 11B. One remote can control all hosts in an environment having
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`multiple hosts. Id. at ¶ 0385. To do this, the remote can display hosts with which it
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`can communicate, and a user can select a host to control. Id.
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`NetRemote LE Installation Guide (“Installation Guide”) (Ex.1008),
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`NetRemote LE Network Configuration Guide (“Configuration Guide”) (Ex.1009),
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`NetRemote LE Setup Guide (“Setup Guide”) (Ex. 1010), the NetRemote Webpage
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`(Ex.1011) (collectively, “NetRemote”): The NetRemote documents were each
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`publically available and published online in connection with sales and support of
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`NetRemote software by at least Jan. 20, 2005, and describe different aspects of the
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`installation, setup, and use of the NetRemote software. Ex. 1015 at ¶¶ 11-29; Ex.
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`1017 at Ex. A, pp. 4-21 (showing Installation Guide publicly available on the
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`internet as of January 20, 2005), pp. 22-34 (showing Configuration Guide publicly
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`available on the internet as of January 19, 2005), pp. 23-52 (showing Configuration
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`Guide publicly available on the internet as of January 20, 2005). Accordingly, the
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`NetRemote documents are each prior art printed publications under at least §
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`102(a). The NetRemote references disclose a handheld PDA device configured to
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`provide 2-way wireless (Wi-Fi) remote control functionality of a computer. Ex.
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`1010 at 1,7; Ex. 1011. The PDA receives media information (e.g., by title or album
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`cover) from a computer about the music available for playback on that computer.
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`Id. The user can view and browse this information on the PDA, and send a
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`command to the computer to play the selected music. Id.
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`RX3000 (Ex.1012): The RX3000 is dated Aug. 2004, and is a common
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`manual for several HP PDAs, including the HP iPAQ RX3115 handheld
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`computing device, and the manual was included with the product available for
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`public purchase by at least Sept. 2004 (Ex. 1016 at ¶¶ 6-16). RX3000 is a prior art
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`printed publication under § 102(b). RX3000 discloses a portable handheld
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`computing device that allows the user to view a list of media files stored on a
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`server. Ex.1012 at 121, 182-186. The user can “browse and play music, photos,
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`and video collections over a wireless network” and to “[p]lay and control digital
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`media on PCs connected to your Wi-Fi network.” Id. RX3000 discloses using the
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`device to select a media server from which a user wants to access media, select a
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`media player on which the user wants the media to play, and selecting the media
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`itself for play. Id. at 182-184. RX3000 discloses copying and storing media
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`information to the device for later playback and viewing. Id. at 121, 189-90.
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`None of the prior art references relied upon in this Petition were on record
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`during the original examination of the 904 Patent. See generally, Ex. 1002.
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`SUMMARY OF INVALIDITY POSITIONS
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`B.
`The cited references disclose all elements and combinations recited in the
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`Challenged Claims. Specifically, the cited references disclose mobile devices that
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`receive and store information over a wireless interface about media from media
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`devices. The mobile device displays the information to a user so that a user can
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`browse and select media for playback by the media device, issuing a playback
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`command over a wireless interface. The cited references and other evidence in this
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`Petition establish a reasonable likelihood Petitioner will prevail with respect to its
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`challenge of the patentability of at least one of the Challenged Claims, as explained
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`below. Specifically, the Challenged Claims are rendered obvious by De Vet in
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`view of Vidal, by Morse in view of Holloway, and by the NetRemote references in
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`view of RX3000.
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`Additionally, the Declaration of Charles Eldering, Ph.D., an expert with
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`considerable knowledge and practical experience in this technical field, confirms
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`Petitioner’s invalidity positions and also provides further details as to how the
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`technology in the 904 Patent was well-known and implemented as a matter of
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`routine in the systems and software that were in existence well before the priority
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`date of the 904 Patent. See generally Ex. 1013
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`VII. DETAILED
`OF
`EXPLANATION
`UNPATENTABILITY OF CHALLENGED CLAIMS
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`GROUNDS
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`FOR
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`Petitioner respectfully submits that the need for just resolution of the
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`unpatentability issues urges the full adoption of all proposed invalidity grounds.
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`An index of claim limitations is included as Ex. 1026.
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`A. GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS
`OVER DE VET IN VIEW OF VIDAL
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`Both De Vet and Vidal describe remote control systems for media players.
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`De Vet discloses using a handheld PDA to browse and select tracks for play in a
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`media collection on a PC via infrared. Ex. 1003 at 88. De Vet discloses that a
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`remote control could be advantageously used to control multiple devices in the
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`same room and access a variety of content on those devices (e.g., collections of
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`videodiscs or an electronic program guide for TV programming). Id. at 89; see Ex.
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`1013 at ¶¶ 160, 177. De Vet teaches and renders obvious every limitation of the
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`Challenged Claims, but Petitioner further cites Vidal in this Ground for additional
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`technical
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`teachings,
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`for example, a design choice of using Bluetooth
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`communication to select and control devices and facilitate secure communications.
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`In the same field of remote control systems for media players as De Vet,
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`Vidal also discloses a touch screen remote control system that wirelessly
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`communicates with multiple devices, using protocols such as Bluetooth. See, e.g.,
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`Ex. 1004 at ¶¶ 0033, 0040, 0047, 0048, 0052, 0055. The wireless communication
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`in Vidal also discloses using the remote control to select and operate a specific
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`device out of several devices. Id. at ¶¶ 0036, 0041, 0053.
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`De Vet and Vidal teach technologies in the same field of remotely
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`controlling devices and both address similar technical problems related to
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`presenting options on a remote controlto a user. Ex. 1013 at ¶¶ 163, 200. De Vet
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`discloses that it would be desirable for a remote control to be used to control
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`multiple devices in the same room. Ex. 1003 at 89; Ex. 1013 at ¶¶ 160, 177. Vidal
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`discloses technologies such as Bluetooth to control multiple devices, including a
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`group of devices in a room or in a domestic dwelling, and including beyond line of
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`sight. See, e.g., Ex. 1004 at ¶¶ 0033, 0040, 0047, 0048, 0052, 0055; Ex. 1013 at ¶¶
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`89, 91, 181, 232; see id. at ¶¶ 45-46.
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`As explained in detail below, the teachings in De Vet and Vidal and their
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`combination demonstrate that the Challenged Claims simply combine prior art
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`elements according to known methods/techniques to yield predictable results or
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`improvements, chosen from a finite number of identified, predictable solutions,
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`with a reasonable expectation of success, or merely use known techniques/features
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`in the same or similar technical fields. See, e.g., Ex. 1013 at ¶¶ 163-165. The
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`teachings in De Vet and Vidal also provide suggestion or motivation to a POSITA
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`to modify or combine prior art to arrive at the claimed invention. A POSITA would
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`have found it obvious to combine the teachings of De Vet and Vidal. For example,
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`a POSITA would have been motivated to improve the general media jukebox and
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`remote control system disclosed in De Vet with the communication methods of the
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`remote control system disclosed by Vidal to enable specific access to and control
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`of multiple media devices in a single room or area, as a particular solution for an
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`application scenario posed in De Vet, specifically, how to allow the remote control
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`to interact with multiple devices in the same room. Ex. 1013 at ¶¶ 171, 178, 179,
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`171-179. For another example, a POSITA would have looked to the Bluetooth
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`wireless communication control described in Vidal to improve the remote control
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`of De Vet, so that the remote control would have more reliable and secure
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`operation (for example, commands directed to a specific device instead of
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`inadvertently controlling all devices
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`in
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`the
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`line of sight of
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`the
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`IR
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`transmitter/receiver) and to improve the range of the operation of the remote
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`control, specifically, to control devices outside of line of sight between devices
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`(because Vidal’s Bluetooth / RF interface does not require line of site for
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`communication). Ex. 1013 at ¶¶ 180, 18