UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2013-00350
`Patent 8,401,682
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`DECLARATION OF DR. ROBERT L. STEVENSON
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`1
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`BOSE 2026
`SDI TECHNOLOGIES, INC. V BOSE CORPORATION
`IPR2013-00350
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`SDI Technologies, Inc.
`Petitioner
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`v.
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`Bose Corporation
`Patent Owner
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`IPR2016-01179 Ex. 2011
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2013-00350
`Patent 8,401,682
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`DECLARATION OF DR. ROBERT L. STEVENSON
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`1
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`BOSE 2026
`SDI TECHNOLOGIES, INC. V BOSE CORPORATION
`IPR2013-00350
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`SDI Technologies, Inc.
`Petitioner
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`v.
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`Bose Corporation
`Patent Owner
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`TABLE OF CONTENTS
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`I.
`II.
`III.
`IV.
`V.
`VI.
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`VII.
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`BACKGROUND AND EXPERIENCE .......................................................................... 3
`INDEPENDENT EXPERT ........................................................................................... 7
`MATERIALS CONSIDERED ....................................................................................... 7
`APPLICABLE STANDARDS ....................................................................................... 8
`’682 PATENT ............................................................................................................ 10
`ANALYSIS OF GROUND I IN PETITION AS INFORMED AND NARROWED
`BY THE BOARD’S DECISION ................................................................................. 11
`ANALYSIS OF GROUND IV IN PETITION AS INFORMED AND
`NARROWED BY THE BOARD’S DECISION ........................................................... 20
`VIII. ANALYSIS OF GROUND III IN PETITION AS INFORMED AND NARROWED
`BY THE BOARD’S DECISION ................................................................................. 25
`ANALYSIS OF GROUND VI IN PETITION AS INFORMED AND
`NARROWED BY THE BOARD’S DECISION ........................................................... 34
`AUDIO SIGNAL PROCESSING CIRCUITRY IN THE ’682 PATENT ....................... 35
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`IX.
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`X.
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`2
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`I.
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`BACKGROUND AND EXPERIENCE
`1.
`My name is Robert Louis Stevenson. I understand that the Patent Trial and
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`Appeal Board (“Board”) issued a decision (“Decision”) instituting trial with respect to claims
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`1-21, 24, 27-28, 30-48, 51, 54, 62-63, 67-70, 73-74, and 76 of U.S. Patent No. 8,401,682
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`(“the ‘682 patent”) based on a Petition requesting inter partes review filed by SDI
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`Technologies, Inc. I have been retained in this matter by Fish & Richardson P.C. to provide
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`various opinions regarding that Petition and the Board’s Decision.
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`2.
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`I earned my Ph.D. (1990) from Purdue University in Electrical Engineering
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`and earned my B.S. degree (1986) in Electrical Engineering from the University of
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`Delaware. My Ph.D. research related to communications and signal processing.
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`3.
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`I am presently a Professor in the Department of Electrical Engineering and in
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`the Department of Computer Science and Engineering at the University of Notre Dame. I
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`have served concurrently as a Professor in the Department of Computer Science and
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`Engineering at the University of Notre Dame since January 2003. I first joined the faculty at
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`the University of Notre Dame as an Assistant Professor in the Department of Electrical
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`Engineering in 1990. In August 1996, I received tenure and became an Associate
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`Professor and in August 2002, I became a Professor in the Department of Electrical
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`Engineering. I continue to serve in that capacity.
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`4.
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`Since 2013 I have served as an Associate Chair of the Department of
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`Electrical Engineering. I also serve as the Director of Undergraduate Studies in Electrical
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`Engineering. In this role I oversee the department's undergraduate program in Electrical
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`Engineering.
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`5.
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`I spent the summer of 1992 at the Air Force Research Lab in Rome, New
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`York and I spent the summer of 1993 at the Intel® Corporation in Hillsboro, Oregon. Several
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`leading computing companies, including Intel®, Sun Microsystems®, Apple® Computer, and
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`Microsoft®, have supported my research at Notre Dame. During the past 20 years, I have
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`published over 100 technical papers related to the field of digital signal processing and
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`digital systems.
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`6.
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`I am a member of the Institute of Electronics and Electrical Engineers, The
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`International Society for Optical Engineering, and the Society for Imaging Science and
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`Technology. I am a member of the academic honor societies Eta Kappa Nu, Tau Beta Pi,
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`and Phi Kappa Phi.
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`7.
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`For the past 20 years my work has focused on the design of techniques,
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`hardware, and software for the processing of digital signals using digital computing devices.
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`These technologies are at the foundation of all modern audio systems. As an academic
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`researcher I attempt to develop novel ideas for systems, then publish and present those
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`ideas to the technical community. My success as an academic is directly related to the
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`insights and techniques that provide the basis for new generations of products. My early
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`work on digital techniques for printing and image capture devices led to significant
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`interaction with companies developing desktop computer products in the early 1990's as
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`they tried to incorporate those ideas into their products.
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`8.
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`My interaction with Apple's Imaging Group focused on various imaging
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`devices such as digital cameras, scanners, and printers and how to best support those
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`devices on desktop computers. At Intel, I worked in Intel's Architecture Lab at the time the
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`MMX multimedia instructions were being incorporated into the Pentium processor. My work
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`there dealt with developing compression techniques for CD-ROM's and network
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`communications that were well matched to the Pentium architecture. I also gave a series of
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`talks on how advanced communication and signal processing techniques could be better
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`supported on the Pentium platform. Similarly, my interaction with Sun Microsystem's group
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`examined how advanced signal processing techniques could be best implemented using
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`Sun's new Visual Instruction Set on the Sparc architecture.
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`9.
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`I have also received significant support for my research from several U.S.
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`Department of Defense Agencies. The Air Force Research Laboratory has funded my work
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`to develop advanced parallel processing algorithms that exploited an ad-hoc network of
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`mixed computers to achieve significant computational advantages over their previously
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`implemented techniques. Other Department of Defense agencies have supported my work
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`in image and video enhancement.
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`10. Over the past 23 years I have taught numerous courses at both the
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`undergraduate and graduate levels in circuits, electronics, digital signal processing, random
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`processes and image processing. Last semester I taught "Advanced Digital Signal
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`Processing" to first year graduate students in Electrical Engineering. The course focused
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`on digital systems and their implementation for digital signals such as audio signals. I have
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`taught this material numerous times over the past 23 years to both graduate and
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`undergraduate Electrical Engineering students. This semester I am teaching "Multimedia
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`Signal and Systems" to 3rd and 4th year undergraduate students. The course focuses on
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`multimedia signals such as MP3 music files and the systems that are designed for the
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`capture, storage and playback. I first introduced and developed this course in 2012 and it
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`has since become a foundational course in a Multimedia concentration at Notre Dame.
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`11.
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`In the course of my teaching experience, I have both participated in and
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`supervised students in completing a number of projects related to audio systems. These
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`projects include design of a set of 5.1 channel speakers (twice), design of digital filters for
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`detecting the spectral content of audio signals (several times), and design of special audio
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`effects, such as echo and room enhancement effects.
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`12.
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`I have published over 150 papers in international journals and international
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`conferences.
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`13.
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`I am an inventor of U.S. Patent No. 6,081,552, “Video Coding Using a
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`Maximum A Posteriori Loop Filter,” June 27, 2000.
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`14. My Curriculum Vitae is attached to this declaration as Exhibit A.
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`II.
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`INDEPENDENT EXPERT
`15.
`I am being compensated at my usual rate of $600/hour for each hour of work
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`in connection with this matter. My compensation is not contingent on any of the opinions I
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`provide or the outcome of this matter.
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`III.
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`MATERIALS CONSIDERED
`16.
`I have reviewed the ‘682 patent and its prosecution history, SDI’s Petition with
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`respect to Grounds I, III, IV, and VI and the exhibits relating to those grounds, Bose’s
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`Preliminary Response, the Board’s Decision instituting trial and cited exhibits, the final
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`deposition transcript of Dr. Lippman’s March 10, 2014 deposition and the exhibits thereto,
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`and the additional materials set forth below.
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`17.
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`In addition to my own background and experience, I have relied on the
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`following additional materials:
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`Patent Owner
`Exhibit Number
`BOSE 2016
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`BOSE 2017
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`BOSE 2018
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`BOSE 2019
`BOSE 2020
`BOSE 2021
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`Exhibit Description
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`01-15-2014 Hearing Transcript in Bose Corp. v. SDI Technologies,
`Inc., Case No. 13-cv-10277-WGY (D. Mass.) (Dkt. D108)
`01-22-2014 Markman Order in Bose Corp. v. SDI Technologies, Inc.,
`Case No. 13-cv-10277-WGY (D. Mass.) (Dkt. D110)
`01-24-2014 Order for Closure in Bose Corp. v. SDI Technologies, Inc.,
`Case No. 13-cv-10277-WGY (D. Mass.) (Dkt. D111)
`U.S. Patent. 8,364,295 (sister patent to the ‘682 patent)
`1998 Datasheet for TDA7375A Power Amplifier chip
`Kyoya Tsutsui et al., “ATRAC: Adaptive Transform Acoustic Coding
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`BOSE 2022
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`BOSE 2023
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`BOSE 2024
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`BOSE 2025
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`for MiniDisc,” presented at the 93rd AES Convention October 1-4,
`1992, San Francisco, CA
`O’Reilly Online Catalog, reproducing Chapter 6 of “MP3: The
`Definitive Guide,” Scot Hacker, 1st Ed. March 2000 (having production
`numbers SDI_0010825-SDI_0010868)
`Operating Instructions for RM-AV2000 Integrated Remote
`Commander by Sony Corporation (1997)
`U.S. Patent No. 5,644,303, titled “Specialized Shaped Universal
`Remote Commander”
`U.S. Patent No. 5,872,562, titled “Universal Remote Control
`Transmitter With Simplified Device Identification”
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`IV.
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`APPLICABLE STANDARDS
`18.
`I understand that the disclosure and claims of a patent are read and
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`understood from the perspective of a hypothetical person of ordinary skill in the art to which
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`the patent is directed at the time of the invention (“POSITA”). For my analysis, I have been
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`told to assume that the relevant timeframe is October 12, 2000, which is the date that the
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`earliest patent application that led to the ‘682 patent was filed in the Patent Office. I
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`understand that the Patent Owner may claim an earlier invention date.
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`19.
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`It is my understanding that a POSITA is not a genius or expert in the art at
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`hand, and is not necessarily represented by the skill, education, or experience of the
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`inventor. I also understand that this person of ordinary skill in the art has common sense
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`and only ordinary creativity, and is not an automaton.
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`20.
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`I believe a person having the level of ordinary skill in the relevant art at the
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`relevant time frame would have a combination of experience and education in the design
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`and development of audio systems, typically a Bachelor of Science degree in electrical
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`engineering or similar field plus at least three years of experience in designing,
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`implementing, testing, teaching, or otherwise working with audio systems.
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`21.
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`Based on my background and experience, I have a good understanding of the
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`capabilities of a person of ordinary skill in the relevant field and am at least a person of
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`ordinary skill in the art . I have also worked closely with and taught many such persons over
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`the course of my career.
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`22.
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`I understand that the challenged claims are given their broadest reasonable
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`interpretation that is consistent with the patent specification. I understand that the Board
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`has made some preliminary constructions of certain terms in the challenged claims. In
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`forming the below opinions, I have applied the Board’s constructions except where
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`specifically noted otherwise. For example, in one instance noted below, I was asked to
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`apply and did apply Bose’s proposed construction of “computer that is configured to provide
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`audio information from any one of a plurality of sources, including digital music files stored
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`on the computer and a network accessible by the computer.”
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`23.
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`It is my understanding that, when assessing whether a claim is obvious based
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`on a combination of prior art references, the correct vantage point is from that of a person of
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`ordinary skill in the art at the time the invention was made. I further understand that
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`portions of a prior art reference should not be taken out of context and relied upon with the
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`benefit of hindsight to show obviousness. Rather, a reference should be considered in its
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`entirety, and portions arguing against or teaching away from the claimed invention must be
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`considered. I also understand that a prior art reference teaches away when a person of
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`ordinary skill, upon reading the reference, would be led in a direction divergent from the
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`path that was taken by the inventors of the patent. I further understand that a claim
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`composed of several elements is not proved obvious merely by demonstrating that each of
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`its elements was, independently, known in the prior art. I also understand that a claim
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`composed of several elements is not proved obvious merely because it is possible, or
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`feasible, for a person of ordinary skill in the art to combine the elements. I understand that it
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`is impermissible to use the patent as a roadmap to reconstruct the invention from the prior
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`art using the benefit of hindsight. Thus, while I understand that there need not be a specific
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`teaching or suggestion present in the references that motivates one to combine the
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`references, I understand that it can be important to identify a reason that would have
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`prompted a person of ordinary skill in the relevant field to combine the elements in the way
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`the claimed invention does.
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`V.
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`’682 PATENT
`24.
`The ’682 patent describes and claims an audio system that is configured to
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`connect to a computer. One example of a computer that is configured to connect to the
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`audio system of claims 1 and 28 is a desktop personal computer (PC). Another example is a
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`mobile computer, such as a smartphone.
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`25.
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`The audio system includes a sound reproduction system and a remote
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`control. The remote control is configured to transmit at least two types of commands from a
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`user to the sound reproduction system. The first type of command controls a user function
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`of the sound reproduction system (e.g., speaker volume), while the second type of
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`command controls a user function of the computer relating to control of audio information
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`(e.g., selecting and playing a music file). When the remote control transmits the second
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`type of command to the sound reproduction system, control circuitry included in the sound
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`reproduction system transmits a signal to the computer for controlling the designated user
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`function of the computer. The sound reproduction system also includes audio signal
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`processing circuitry, for processing audio signals for reproduction.
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`VI.
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`ANALYSIS OF GROUND I IN PETITION AS INFORMED AND NARROWED BY
`THE BOARD’S DECISION
`26.
`Based on the Board’s Decision, I understand that the Board instituted trial
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`with respect to Ground I in the Petition in so far as Ground I asserts that claims 1-11, 18-21,
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`24, 27, 28, 30-38, 45-48, 51, 54, 73, and 74 of the ‘682 patent would have been obvious
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`over the SMS and Nomad Manual at the relevant time period. Decision at 27-28.
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`27.
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`SMS or Sony Music System ZS-D7 (Ex. 1002) is essentially a boom box
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`device with a built-in radio tuner, CD player, and cassette tape player/recorder. The Sony
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`MiniDisc recorder MZ-R30 is a portable device for recording and playing MiniDiscs, which
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`are referred to in the SMS manual as MDs. Ex. 1002 at 41. The MiniDisc recorder
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`connects to SMS via Sony’s proprietary MD Link Interface. Id. at 42.
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`28.
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`The Nomad is a portable digital audio player that can be used to play music
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`stored in its flash memory, record audio (e.g., interviews and lectures) to its flash memory,
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`and play FM radio. Ex. 1005 at 7. The Nomad includes a 16-letter LCD display for
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`displaying song titles. Id. at 17, 37. The Nomad is connected to a personal computer via a
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`docking station and parallel port cable to “download MP3 files or to upload voice
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`recordings.” Id. at 15. This is performed on the personal computer using the included
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`“NOMAD Manager” software, which allows the user to manage the contents of the Nomad.
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`Id. at 23-26.
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`29. Dr. Lippman states that one would have been motivated to substitute the
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`Nomad for the MiniDisc recorder to “take advantage of the additional music storage space
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`that was available in the MP3 device.” Ex. 1017 at 10-11. I disagree. Even if Dr. Lippman
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`were correct that one would have been motivated to modify the combination of the SMS and
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`MiniDisc recorder to gain additional music storage space, that motivation would not have led
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`a person of ordinary skill to substitute the Nomad for the MiniDisc recorder because the
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`Nomad actually has less storage capacity than the MiniDisc recorder.
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`30.
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`The MiniDisc recorder plays audio recorded on a 64 mm optical or magneto-
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`optical disc called a “MiniDisc,” which stores about 140 megabytes (MB) of data—
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`approximately 1/5 the capacity of a standard compact disc. BOSE 2021 at 2. The MiniDisc
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`uses a compression algorithm called ATRAC (Adaptive Transform Acoustic Coding) to
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`maintain the 74-minute playing time of a standard compact disc, despite the reduced data
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`capacity when compared to a standard compact disc. BOSE 2021 at 2. The MZ-R30
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`manual states that the MiniDisc has a recording and playback time of 74 minutes for stereo
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`audio and 148 minutes for monaural audio. Id.; BOSE 2013 at 33.
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`31.
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`The Nomad includes 32 megabytes (MB) of internal flash memory, and it can
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`be expanded with up to 32 MB of additional storage on a flash memory card; a 32 MB flash
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`memory card was included with the highest capacity model (for a total of 64 MB of storage
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`space). Ex. 1005 at 9, 14, 37, 39; Ex. 1006 at 1. The 64-MB model with 64 MB of total
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`storage capacity is “enough for about an hour of MP3 music compressed at an optimal 128
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`kbps.” Ex. 1006 at 1. A person of ordinary skill would understand that the term “kbps”
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`stands for “kilobits per second,” which is a data rate.
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`32.
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`Accordingly, because the MiniDisc recorder can store more audio (74
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`minutes) than the highest-capacity 64 MB Nomad (60 minutes at 128 kbps), the factual
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`premise underlying Dr. Lippman’s alleged motivation to combine the SMS with the Nomad is
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`incorrect. A person of ordinary skill would not have been motivated by “additional music
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`storage space” to substitute the Nomad for the MiniDisc player because that combination
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`would have reduced music storage space, not increased it.
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`33.
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`At his deposition, Dr. Lippman testified that the Nomad could store more
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`audio if the mp3 audio files stored on the Nomad were encoded at a bitrate of 64 kbps.
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`BOSE 2015 at 225:12-225:19. According to Dr. Lippman, the audio storage capacity of the
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`64 MB Nomad would double (to two hours) if the mp3 audio files on the Nomad were
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`encoded at a bitrate of 64 kbps, rather than 128 kbps. Id. Dr. Lippman then argued that
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`this two-hour storage capacity of the Nomad (when the audio is encoded at 64 kbps) is
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`longer than the MiniDisc’s storage capacity of 74 minutes. Id. at 316:9-21.
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`34. Dr. Lippman’s analysis is flawed. A MiniDisc will always have more audio
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`storage capacity than the Nomad, when audio of comparable sound quality is stored on the
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`two devices, because the MiniDisc stores 140 MB of data compared to the Nomad’s 64 MB
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`of data.
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`35.
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`For example, Dr. Lippman agrees that MiniDisc audio quality is comparable to
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`mp3’s compressed at “128 kbps or perhaps better.” Id. at 336:15-337:3. Thus, if one views
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`encoding at 128 kbps as the optimal amount of compression, the Nomad could only store
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`about an hour of audio, whereas the MiniDisc could store at least 74 minutes of audio.
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`36.
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`Based on my personal experience in listening to audio files encoded at
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`various bitrates, I agree that 128 kbps would have been the optimal encoding bitrate in 1999
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`(the date of the Nomad user guide) because in my opinion it was the lowest bitrate (i.e., the
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`most compression) that achieved an acceptable sound quality when compared to CD audio.
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`In my opinion, encoding at lower bitrates such as 64 kbps generally produced a noticeable
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`degradation in sound quality as compared to CD audio. My opinion is consistent with the
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`PCWorld article about the Nomad, which states states that encoding the digital audio at 128
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`kbps is the “optimal” amount of compression, meaning that in 1999 when the article was
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`published, encoding at 128 kbps was generally viewed as the optimal balance between
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`reducing the size of an audio file while maintaining acceptable audio quality. Ex. 1006 at 1.
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`Dr. Lippman disagrees and states that encoding at a 64 kbps bitrate would have produced
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`“pretty good” audio, BOSE 2015 at 335:19-336:14, but he doesn’t clarify what “pretty good”
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`means to him.
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`37. Regardless, any disagreement that Dr. Lippman and I have about which
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`bitrates provide acceptable audio quality is irrelevant to the question of which device
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`includes more “music storage space.” The important point is that whatever amount of
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`compression one considers to produce acceptable sound quality, a MiniDisc will hold more
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`audio of that sound quality (because the MiniDisc stores 140 MB of data compared to the
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`Nomad’s 64 MB of data).
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`38. While it is true that doubling the compression of mp3 audio stored on the
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`Nomad (halving the bitrate) would double the audio storage capacity of the Nomad from one
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`hour to two, the same is true of the MiniDisc. In other words, if a person of ordinary skill
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`wanted to gain more “music storage space,” then he or she would have simply reduced the
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`bitrate used for MiniDisc recording. At the relevant time, one would have understood that
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`reducing the bitrate used to encode MiniDisc recordings could be accomplished in a similar
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`manner that is done for mp3s. The compression techniques in the ATRAC compressor of
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`the MiniDisc system, see BOSE 2021, is similar in approach and efficiency to that used in
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`the MP3 compression approach. They are both subband coding based techniques that
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`requantize spectral components and allocate bits based on psychoacoustic principles. Id.
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`As such, a person of ordinary skill would understand that they have similar audio quality at
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`the same bit rate. Such a person would understand that one can simply change the bit
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`allocation of the ATRAC compression algorithm to change the encoding bitrate (and the
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`amount of compression), in the same way that mp3s may be encoded at different bitrates.
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`Id. at 5-6.
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`39.
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`For these reasons, Dr. Lippman is incorrect that a person of ordinary skill
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`would have been motivated to substitute the Nomad for the MiniDisc recorder to gain more
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`“music storage space.”
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`40.
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`Furthermore, if one combined the SMS and the Nomad, the references teach
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`that the combination would be made in a different way than SDI and Dr. Lippman state.
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`Sony’s proprietary MD connecting cord and protocol were designed to connect the MiniDisc
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`recorder to the SMS. Ex. 1002 at 41. The SMS manual states that other types of audio
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`sources can be connected to the SMS as well, but to do so one uses the “LINE IN” input
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`located on the front of the SMS. Id. at 45. The SMS manual teaches that once the
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`connection is made, the user turns on power to the SMS and presses “MD (LINE)” on the
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`SMS to select the “LINE IN” input as the audio source. Id. To a person of ordinary skill, this
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`teaches that one would use an analog cable to connect the “Headphone jack” of the Nomad
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`to the “LINE IN” of the SMS to play music from the Nomad through the SMS. Furthermore, I
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`note that this combination is consistent with an article discussing the Nomad, which
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`describes connecting mp3 players such as the Nomad to stereo systems using an
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`16
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`“appropriate adapter and cables” plugged into the Nomad’s headphone jack. BOSE 2022 at
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`3. Finally, I note that this combination of the Nomad connected to the SMS via the “LINE
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`IN” jack would not meet the requirements of the claims challenged in Ground I of the
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`Petition, because the claims all require the remote control of the sound reproduction system
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`to control a user function of the computer, and this functionality would not have been
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`included with the Nomad and SMS when connected in this way.
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`41.
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`In addition, I understand that Bose is asking the Board to reconsider its
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`construction of “computer that is configured to provide audio information from any one of a
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`plurality of sources, including digital music files stored on the computer and a network
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`accessible by the computer” and to adopt Bose’s construction. It is my opinion that the
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`combination of the SMS and Nomad would not meet this requirement under Bose’s
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`proposed construction. The Nomad (which Petitioner and the Board read on the term
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`“computer”) does not have the capability of providing audio information from a network
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`accessible by the computer.
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`42.
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`SDI argued in its Petition that the Nomad meets this requirement in two ways:
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`(1) because the Nomad can play digital music files that were downloaded from the Internet
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`onto a personal computer, and then transferred from the personal computer to the Nomad,
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`and (2) because the Nomad can play music from the terrestrial FM radio network. However,
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`I understand that the Board rejected these two arguments, construing “network” as “an
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`interactive computer network, such as the internet” and holding that “’audio information from
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`17
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`the network by the computer” “does not include digital music files downloaded from a
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`network, stored on a computer, transferred to a second computer, and later supplied to the
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`audio system by the second computer.” Decision at 10-12, 14-16. The Board held that
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`“‘audio information from the network via the computer’ is audio information received from
`
`the computer that the computer has downloaded from the network.”
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`43.
`
`The Nomad does not have the capability of downloading audio information
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`from an “interactive computer network, such as the internet.” Instead, audio played by the
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`Nomad is either recorded on the Nomad itself (Ex. 1005 at 20-21); transferred to the Nomad
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`from a personal computer via a docking station and parallel port cable (Ex. 1005 at 15); or
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`received via FM radio (Ex. 1005 at 21-22). None of these audio sources satisfy the
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`requirement of providing audio from a network accessible by the computer, as the Board
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`construed the term “network.”
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`44.
`
`In my opinion, there would have been no reason to modify the Nomad to add
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`the capability of downloading audio information from an “interactive computer network, such
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`as the internet.” This is because the Nomad was already designed to work in tandem with a
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`personal computer that includes that capability. The Nomad teaches that one can use a
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`personal computer to download mp3 files from the Internet from a number of different
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`websites, such as www.mp3.com or www.nomadworld.com. Id. at 14. These downloaded
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`mp3 files are then transferred to the Nomad using the included “Nomad Manager” software
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`when the Nomad is connected to the personal computer via the docking station and parallel
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`
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`18
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`port cable. Id. at 23-26. The personal computer plays an important role in this process
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`because of the Nomad’s limited storage capacity (64 MB at most). In general, the personal
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`computer would have a hard drive with far more storage capacity and would serve as
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`permanent storage for the user’s entire digital audio collection. The user would then select
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`a small subset of the collection for transfer to the Nomad for more portable consumption,
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`perhaps by sorting them to focus on a particular artist. Id. at 7-8 (noting that the Nomad is
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`good for “strenuous activity” and “walking or exercising” because it is not affected by
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`vibration). Accordingly, one would not have been motivated to fundamentally alter the
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`design of the Nomad so that it that bypasses the role of the personal computer and has the
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`Nomad download audio directly from an “interactive computer network, such as the
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`internet.”
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`45.
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`Furthermore, SDI argues in its Petition that the Nomad’s “power on/off
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`functionality” meets the requirement in claim 28 of the ’682 patent that the computer
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`includes at least one user function that does not “relate[] to the control of audio information.”
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`EX. 1001 at claim 28 (reciting a computer “that has a plurality of user functions, a subset of
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`the user functions relating to control of audio information” (emphasis added)). I disagree.
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`For a device like the Nomad, for which its only functionality relates to audio information
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`(e.g., playing and recording audio information unlike a more general purpose device that
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`has other user functions), one of skill in the art would consider turning on/off that device to
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`be a user function that is related to the control of audio information, since, e.g., turning the
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`19
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`device on allows it to play music and turning the device off would cease the playing of any
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`music.
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`VII. ANALYSIS OF GROUND IV IN PETITION AS INFORMED AND NARROWED BY
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`THE BOARD’S DECISION
`46.
`Based on the Board’s Decision, I understand that it instituted trial with respect
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`to Ground IV in the Petition in so far as Ground IV asserts that claims 12-17, 39-44, 62, 63,
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`67-70, and 76 of the ‘682 patent would have been obvious over SMS, Nomad Manual and
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`Looney at the relevant time period. Decision at 27-28.
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`47.
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`Looney (U.S. Patent No. 5,969,283) is directed to device for organizing and
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`playing back digital music files. Looney at Abstract. Looney teaches that an onboard
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`database is used to organize music according to predetermined categories. Id. at 6:9-14.
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`The database is created from category information (such as title, artist, date, speed, dance
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`characteristics, energy level, and music style) that is typically provided by the service
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`provider from which the user obtains the music files. Id. at 1:64-2:1. Users can navigate
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`between a number of different display screens to play the music files, as well as to sort
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`them based on categories and subcategories. Id. at Figs. 11-16. For example, Looney
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`teaches that “Screen2” shown below in Fig. 12 generally serves as a main control screen for
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`searching and playing any selections. Id. at 9:18-19.
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`20
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`48.
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`Fig. 13 below shows a view of “Screen2” that displays additional category
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`
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`information. Id. at 9:19-23.
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`The user navigates the display screens by selecting onscreen graphical user
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`49.
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`interface “buttons” using a touchscreen, mouse, or other cursor-moving mechanism. 4:65-
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`5:5. Looney teaches that selecting a category button twice (e.g., by “double clicking” it)
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`21
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`causes the display of an additional “Screen3” (shown in Fig. 16 below) with subcategories
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`that fall under that particular category. Id. at 10:22-34.
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`50.
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`“Screen3” provides a window 482 wit
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