`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`___________________
`
`Inter Partes Review Case No. 2016-01407
`___________________
`
`
`
`DECLARATION OF ERIC J. GOULD BEAR
`IN SUPPORT OF PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. §42.120
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1 
`I. 
`SUMMARY OF CONCLUSIONS ................................................................ 1 
`II. 
`III.  BACKGROUND AND QUALIFICATIONS ................................................ 2 
`IV.  MATERIALS REVIEWED ........................................................................... 7 
`V. 
`FIELD OF THE INVENTION ....................................................................... 8 
`A. 
`Inventions Necessarily Rely on Existing Technologies ........................ 8 
`B. 
`The Science of Human-Computer Interaction ...................................... 9 
`C. 
`Person of Skill in the Art at the Time of the Invention. ...................... 12 
`D. 
`Background of the Technology ........................................................... 13 
`VI.  CLAIM CONSTRUCTION ......................................................................... 17 
`VII.  GROUND 4 - ALLEGED OBVIOUSNESS OVER BIRRELL AND
`SEIDENSTICKER ....................................................................................... 18 
`Petitioners reasons for selecting and combining Birrell and
`A. 
`Seidensticker are flawed and inadequate ....................................................... 18 
`B.  Neither Birrell nor Seidensticker, alone or in combination, discloses
`“configured to present sequentially a first, second, and third display screen”
`displaying “categories,” “subcategories,” and “items” ................................. 35 
`C.  Neither Birrell nor Seidensticker, alone or in combination, discloses
`“accessed according to a hierarchy” .............................................................. 41 
`Birrell and Seidensticker do not disclose “accessing” multiple tracks
`D. 
`based on a selection in a second display screen ............................................ 43 
`VIII.  GROUND 5 - ALLEGED OBVIOUSNESS OVER BIRRELL,
`SEIDENSTICKER, AND PROEHL ............................................................ 52 
`IX.  GROUND 6 - ALLEGED OBVIOUSNESS OVER BIRRELL,
`SEIDENSTICKER, PROEHL AND JOHNSON ......................................... 60 
`
`ii
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`X.  GROUND 7 - ALLEGED OBVIOUSNESS OVER BIRRELL,
`SEIDENSTICKER, AND LOONEY (AND OPTIONALLY PROEHL)
`(AND OPTIONALLY JOHNSON) ............................................................. 63 
`XI.  SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............. 65 
`XII.  CONCLUSION ............................................................................................. 74 
`
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`
`
`I, Eric Justin Gould Bear, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained by Creative Technology Limited (“Creative” or
`
`“Patent Owner”), in this action. My credentials are described in my CV, which is
`
`Exhibit 2030. I offer this report on the technology at issue in U.S. Patent No.
`
`6,928,433 (the “’433 patent” or “Creative Patent”) in response to the Petition for
`
`Inter Partes Review, Case No. 2016-01407, filed by Sony Corporation et al.
`
`(“Sony” or “Petitioners”).
`
`2.
`
`I have been asked by Creative’s counsel to offer technical opinions
`
`relating to U.S. Patent No. 6,928,433 and the alleged prior art and arguments
`
`presented by the Petitioners and their expert. I am being compensated at the rate of
`
`$480 per hour. My compensation is not related to the outcome of this case.
`
`II.
`
`SUMMARY OF CONCLUSIONS
`3.
`
`As a result of performing the analysis described herein, and applying
`
`the standards outlined below in Section IV, I have determined that, in my opinion,
`
`Petitioners’ evidence is insufficient to conclude that any of the claims of the ’433
`
`patent should be found invalid. My opinion is supported by the evidence in the
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`patent specification, figures and claims, as well as the disclosures of the alleged
`
`prior art and the other documents cited below.
`
`
`
`1
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`

`

`III. BACKGROUND AND QUALIFICATIONS
`4.
`I am the first named inventor on at least 90 United States patent
`
`applications. These are cataloged in my CV. To date, at least 75 of those
`
`applications have issued as U.S. patents. I am also the first named inventor on a
`
`number of international patents and patent applications.1
`
`5.
`
`Inventions of mine for which patents have been issued include virtual
`
`force-feedback user interfaces, methods of navigating poly-hierarchical
`
`information, management of playlists that include both owned and un-owned
`
`songs, real-time communications architectures, auxiliary visual displays for
`
`personal computers, auxiliary processing by sleeping computing devices, methods
`
`for reducing parallax in computer camera systems, methods for using telephony
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`controls on personal computers, methods for navigating content using media
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`transport controls, and methods for unifying audio control on personal computers.
`
`More recent applications claim inventions relating to symbolic and schematic
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`displays of protocol-specific information, user interfaces for visualizing data
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`backup and recovery, and handheld multi-channel interactive environments.
`
`6.
`
`By the time I was 12, I was programming computers in BASIC using
`
`Tandy TRS-80 and Apple personal computers. In 1984, I formed Element Systems
`
`
`1 Some of my patents and applications identify me as “Gould” while others identify
`me as “Bear” because I legally changed my name from Eric Justin Gould to Eric
`Justin Gould Bear after adopting my first child from China in 1999.
`
`
`
`
`2
`
`

`

`to provide a consulting framework for my interface design and code production
`
`skills. From 1984 to 1993, I designed and engineered software for clients utilizing
`
`a variety of coding languages, including BASIC, Pascal, C, C++, 68000 Assembly
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`Language and HyperCard / SuperCard. Clients included Aetna Life Insurance,
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`Kaleida Labs (an Apple/IBM joint venture) and SoftWriters, for whom I wrote
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`code to perform network administration of remote computer systems in 1991.
`
`Other clients are listed in my CV.
`
`7.
`
`In 1986, two years after Apple released the Macintosh computer, I
`
`became an Apple Certified Developer.
`
`8.
`
`In 1988 and 1989, I designed and developed a significant portion of
`
`the code for Aetna Life Insurance’s first graphical user interface. The
`
`transformation of Aetna’s financial information system from a command line
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`terminal to a modern point-and-click Macintosh application (e.g. with mouse,
`
`icons, radio buttons, check boxes and clickable text entry fields) marked my first
`
`experience leading groups of engineers in the design of a multi-million dollar user
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`experience (“UX”) program.
`
`9.
`
`In 1991, I received a Bachelor of Arts from Wesleyan University in
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`Cognitive Science, an interdisciplinary degree that combined the studies of
`
`Psychology, Philosophy, Linguistics and Computer Science. Example coursework
`
`included biological neurophysiology, artificial intelligence programming in LISP
`
`and research in human perception of audio/visual phenomena as presented and
`
`
`
`3
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`

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`measured by computing machines. The Psychology Department at Wesleyan was
`
`also a client, for whom I designed and engineered test tools in Lightspeed Pascal
`
`and SuperCard for millisecond timing of visual search tasks in perception
`
`experiments.
`
`10.
`
`In the summer of 1992, I interned at Apple, Inc. (then Apple
`
`Computer, Inc.) in the Advanced Technology Group’s Human Interface Group
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`where I worked on designing and programming user interfaces for an auditory-only
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`display device. I joined ACM and SigCHI (Special interest group on Computer
`
`Human Interaction) at that time and am now a lifetime member. I am also a
`
`lifetime member of CPSR (Computer Professionals for Social Responsibility),
`
`which I joined in 1992.
`
`11.
`
`In 1993, I received a Masters of Professional Studies in Interactive
`
`Telecommunications from New York University’s Tisch School of the Arts. On
`
`full scholarship, I designed and engineered various hardware, software and
`
`interactive video experiences. New York University (with Bell Atlantic) was one
`
`of my clients in 1992, for which I developed software to decode telephone touch-
`
`tones. This code enabled Manhattan Cable TV viewers to control 3D graphical
`
`environments on broadcast television in real-time using their telephone handsets.
`
`12. From 1994 to 1999, I held faculty positions at San Francisco State
`
`University (Multimedia Studies Program) and The University of Texas at Austin
`
`(Department of Radio-TV-Film). I taught graduate and undergraduate courses in
`
`
`
`4
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`

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`multimedia design as well as advanced interaction and interface design, including
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`mentoring students in the development of experimental hardware/software UX.
`
`During this same period, I wrote the user interface design column for InterActivity
`
`Magazine. A list of these articles and other publications is included in my CV.
`
`13.
`
`I have also presented papers and given talks regularly on topics
`
`relating to inventorship, UX design and interactive media. I have made
`
`presentations at conferences of ACM SigCHI, SXSW, the International Consumer
`
`Electronics Show (CES), Digital Hollywood and the TV of Tomorrow Show. I
`
`have also served as an independent judge of conference paper submissions and
`
`regularly serve on the SXSW Advisory Board. A list of my presentations and talks
`
`is provided in my CV.
`
`14.
`
`I founded MONKEYmedia in San Francisco in 1994 to provide the
`
`desktop computing, new media and consumer electronics industries a design and
`
`technology resource focused specifically on human-computer interaction. Clients
`
`included Interval Research Corporation, Texas Instruments, Sega of America,
`
`Sprint, Viacom, Microsoft / WebTV. MONKEYmedia earned industry recognition
`
`for my work, including a CLIO, an Award of Excellence from Communication
`
`Arts, Best Use of Audio at South by Southwest (SXSW) and other awards.
`
`15. From 2001 through 2005, I held executive leadership positions at
`
`Microsoft Corporation and Yahoo! Inc. At each company, I directed teams of
`
`interaction designers, visual designers, user researchers, ethnographers and
`
`
`
`5
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`

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`prototype engineers responsible for crafting the UX of various product lines.
`
`These programs included Windows Tablet PC Edition, the Windows Hardware
`
`Innovation Group, Yahoo! Mail, Yahoo! Messenger, Yahoo! Photos, Yahoo!
`
`Personals, Yahoo!/SBC (now AT&T) set-top experience and Yahoo! Mobile
`
`applications. Descriptions of my work for those corporations are detailed in my
`
`CV.
`
`16. Beginning in 2005, I have provided executive consulting services in
`
`corporate user experience strategy and design innovation through Chief Experience
`
`Officer, Inc. In this capacity, I have led the UX strategy and design of computer
`
`mice, universal remote controls, mobile phones, stock trading applications, legal
`
`research tools, home automation systems and medical devices for companies
`
`including Logitech, Tektronix, Motorola, Charles Schwab, Thomson Reuters and
`
`others mentioned in my CV.
`
`17. My work on Logitech’s premium mice and remote controls
`
`contributed to winning a number of industry awards, including multiple 2007 CES
`
`Technology & Innovation Awards, a 2008 CES Best of Innovations Award, a 2009
`
`CES Best of Innovations Category Winner Award, and a 2010 CES Innovations
`
`Award.
`
`18.
`
`In 2012, I designed and wrote an iPad application entitled Walk-in
`
`Theater in collaboration with videographer Rachel Strickland and musician Jim
`
`McKee. Walk-in Theater is an experiment with peripatetic perspective, presenting
`
`
`
`6
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`a user interface that engaged participants’ proprioceptors and spatial memory to
`
`orient them as they navigate among multiple video streams in a 3D sound field.
`
`19.
`
`In 2013, I joined Austin’s Capital Factory start-up incubator as a
`
`partner and angel investor, where I serve as an advisor to executives in intellectual
`
`property strategy and the design and development of new hardware, software and
`
`services. I am currently employed by CURB, Inc. – an early-stage startup that
`
`manufactures energy monitoring and control systems – as its Chief Experience
`
`Officer.
`
`20. My experience designing and evaluating user interfaces over the last
`
`25+ years, including the optimization of human performance through the use of
`
`computing technology and automated feedback of various forms and modalities, as
`
`well as my background hiring and managing teams of user experience
`
`professionals, position me as an expert in the design and development of graphical
`
`user interfaces.
`
`IV. MATERIALS REVIEWED
`21.
`In performing my analysis, I have reviewed, among other things, the
`
`Creative Patent, Creative’s Preliminary Response, the Board’s Decision on
`
`Institution, and Creative’s Patent Owner Response in these proceedings. I have
`
`also reviewed the declaration of Benjamin B. Bederson in support of the Petition.
`
`Additionally, I have reviewed all of the prior art cited by Petitioners in their
`
`Petition. I have reviewed the portions of the prosecution history and reexamination
`7
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`history of the ’433 patent cited by Petitioners and their expert. I have also
`
`reviewed various other documents which are discussed later herein.
`
`22. For the purposes of this declaration, I have assumed the correctness of
`
`the legal standards applied by Dr. Bederson in paragraphs 17 to 35 of his report,
`
`and for the purposes of this declaration, have applied the same legal standards. I
`
`reserve the right to describe and rely on other legal standards in connection with
`
`any future declaration I submit in this or any other proceeding.
`
`23. For consistency and ease of review, my column and line citations to
`
`the patent specification are in “(column:line)” format.
`
`V.
`
`FIELD OF THE INVENTION
`A. Inventions Necessarily Rely on Existing Technologies
`24. No new technology can exist in a vacuum wholly disconnected from
`
`the past. Whether built using metal, wood, plastic or pixels on a computer screen,
`
`all innovations must – to some extent – be made from a combination of known
`
`components. Pixels are building block materials used to construct software
`
`interfaces just like plastic is a building block material used to construct hardware
`
`controls.
`
`25. There are myriad user interface visualization and interaction
`
`techniques known to be employable when creating new user experiences. The
`
`existence of these techniques, a.k.a. technologies, is akin to the existence of raw
`
`physical building materials. Just like building a house, certain technologies lend
`8
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`themselves to certain types of use. Similarly, certain technologies draw designers
`
`of software systems into using them in particular combinations. Simply knowing
`
`that various technologies exist that can be used for a variety of purposes is not
`
`enough to motivate, inspire or enable someone to combine such techniques in new
`
`ways. Nonetheless, I believe it important to establish that human-computer
`
`perception and/or human-computer interaction innovations should not be treated
`
`differently from innovations based on physical technologies not built using
`
`software toolkits.
`
`B. The Science of Human-Computer Interaction
`26. Understanding the inventiveness of the Creative Patent depends upon
`
`understanding the field of the invention – which is the science of human-computer
`
`interaction (“HCI”), also known as user experience (“UX”) design – as applied in
`
`the context of portable electronic devices.
`
`27. The discipline of user experience grew out of ergonomics and what
`
`was once called man-machine interface (“MMI”). It is generally concerned with
`
`how to make machines reliably responsive to human expression while being easy
`
`to use and unobtrusive. The user interface (“UI”) or graphical user interface
`
`(“GUI”) is the boundary or bridge between a person and a machine. It includes the
`
`physical hardware and logical software, capturing concrete measurable human
`
`input and outputting processed information for human perception.
`
`28. Don Norman is generally recognized as a “founding father” of the
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`modern UX discipline. He is a former VP and User Experience Architect at Apple
`
`Inc. and a professor of Cognitive Science and Psychology at UCSD. He taught
`
`practitioners in the industry many core concepts. Of note and particular relevance
`
`to the Creative Patent are: (1) affordances, which define what is possible for people
`
`to do at any given time; and (2) feedback, which let people know what can be
`
`done, what they are doing or what they just did. How specific affordances and
`
`feedback are designed and engineered depends heavily on the circumstances of
`
`use, and there is an international community of user experience professionals that
`
`have been meeting and settings standards for over 30 years. The Association for
`
`Computing Machinery’s special interest group on computer human interaction
`
`(SigCHI), has been hosting the premier international conference on human factors
`
`in computing systems since 1982. The International Standards Organization (ISO)
`
`has adopted standards in “ergonomic principles in the design of work systems” that
`
`date back to 1981 (ISO 6485:1981) and standards in “human-centered design
`
`processes for interactive systems” (ISO 13407:1999E) dating to the time of
`
`invention of the Creative Patent. These standards incorporate many human factors
`
`engineering variables, such as reachability, readability, glance-ability,
`
`performance, speed, and risk of error. These standards may be used to create new
`
`and innovative GUIs that are broadly used and adapted.
`
`29. The user experience success metrics used today are the same as they
`
`were at the time of invention of the Creative Patent. Great user experiences occur
`
`
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`to end-users as simple and easy to use, quick and efficient, seamless and effortless.
`
`A suboptimal GUI can be frustrating to a user and harm the competitive success of
`
`products.
`
`30. But to accomplish excellent results depends on the science of user
`
`experience design. There are three general domains of design involved in crafting
`
`user experiences: information design, interaction design, and interface design.
`
`Information design is about the specific techniques for organizing content.
`
`Interaction design is about what people functionally do with their bodies and their
`
`hands, such as hovering over a cell and clicking a mouse button. And interface
`
`design is about the sensory aspects of the experience. How are things technically
`
`changing on screen? How do people know what they can do? How do they know
`
`what they are doing and what they just did?
`
`31. Due to the complexities and nuances in the technical design of GUIs,
`
`following a scientific method is necessary to develop successful GUIs that
`
`ultimately appear to end users as magically intuitive and, thus, at risk of feeling
`
`obvious in hindsight. This process normally involves: (a) listening to users and
`
`understanding their technical needs, (b) inventing and designing novel technical
`
`solutions, (c) validating the efficacy of those novel technical solutions through
`
`usability testing, (d) iteratively refining those novel technical solutions, and (e)
`
`clearly communicating to engineers the specific technical details of the resultant
`
`visual interfaces and human-computer interaction techniques so they can be
`
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`accurately constructed to operate as designed. Using such well-weathered
`
`objective methods is what makes interactions between people and machines
`
`predictable, measureable and reproducible.
`
`C. Person of Skill in the Art at the Time of the Invention.
`32.
`In paragraph 38 of the Bederson Declaration, Dr. Bederson opines that
`
`a person of ordinary skill in the art in the field of the ’433 patent at the time of its
`
`invention2 (a “POSITA”) “would have had at least the equivalent of a bachelor of
`
`science degree in computer science or a similar subject, or two to three years of
`
`experience in designing and implementing user interfaces for portable electronic
`
`devices.” Ex. 1006 ¶ 38 (emphasis added). In my opinion, Dr. Bederson has
`
`underestimated the skill and experience of a person of ordinary skill in the field of
`
`the ’433 patent. In particular, Dr. Bederson’s analysis assumes that the person of
`
`ordinary skill need not have any experience with the design of user interfaces. In
`
`my opinion, the person of ordinary skill in the art in the field of the ’433 patent at
`
`the time of its invention would have had at least a bachelor’s degree in computer
`
`science, cognitive science, computer user interface design or a similar subject (or
`
`
`2
`The ’433 patent lists a filing date of January 5, 2001. Ex. 1001. However, I
`understand that during the reexamination of the ’433 patent, the examiner credited
`the inventors with a priority date of December 14, 1999 based on declarations
`submitted by the inventors. Ex. 1004 at 6138-6140. As used herein, the “time of
`the invention” refers to both dates, as I have performed my analyses throughout
`this declaration using both dates, and the particular choice of date does not affect
`any of the conclusions that I have reached herein.
`
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`equivalent work experience), and two to three years of experience in designing
`
`user interfaces for consumer electronics devices. However, each of the opinions I
`
`express below would apply the same regardless of whether this description of the
`
`person of ordinary skill in the art is applied, or whether Dr. Bederson’s description
`
`is applied.
`
`D. Background of the Technology
`33. The specification of the ’433 patent describes a number of related but
`
`distinct technologies, however the ’433 patent is primarily directed to an improved
`
`user interface method that enables a user to efficiently navigate, select and access
`
`tracks stored on a portable media player. Ex. 1001 cls. 1-28. In particular, a
`
`primary concern of the ’433 patent is the problem of how to allow a user to access
`
`a varying and potentially large amount of media content on a small, handheld
`
`device. For example, the patent describes that, at the time of the invention, “small,
`
`portable music playback devices can store hundreds, even thousands, of
`
`compressed songs and can play back the songs at high quality” and that “[w]ith the
`
`capacity for so many songs, a playback device can store many songs from different
`
`albums, artists, styles of music, etc.” Ex. 1001 at 1:19-24. The patent further
`
`explains that “typically, portable devices have a user interface including a small
`
`screen” and that “[t]he small size also limits the number, size, shape, and types of
`
`user input controls that can be mounted on the device.” Id. The patent summarizes
`
`these problems, stating that: “[m]ajor problems facing the consumer” at the time of
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`the invention were “organizing and accessing the tracks,” and that “[u]sing such a
`
`compact user interface to navigate and select among hundreds of songs is
`
`inefficient and often frustrating.” Id. at 1:34-45.
`
`34. The ’433 patent also identifies the primary techniques for organizing
`
`user interfaces of portable media players prior to the invention of the ’433 patent
`
`as: (1) “a single list of tracks,” and (2) playlists created using software which
`
`“runs on a host PC” and “has a playlist feature that allows selection of tracks from
`
`the PC’s hard disk to be included in [a] playlist.” Ex. 1001 at 1:28-31, 3:59. The
`
`problem with “a single list of tracks” is plainly the time in navigating through a
`
`“single list” when it is filled with a “very large” number of songs. Ex. 1001 at
`
`1:36-49. The patent explains the problems with the host-based playlist techniques
`
`of the prior art include: (i) that “arbitrarily select[ing] songs from a large number
`
`of tracks to form a playlist” “can be fairly tedious,” (ii) that these techniques do not
`
`“necessarily produce playlists that are of interest to the user over the course of
`
`time,” and (iii) this results in playlists that “may not remain-up-to-date if new
`
`songs are added that logically fit into a previously created playlist.” Id. at 1:55-65.
`
`35. The ’433 patent is thus directed to addressing these problems and the
`
`limitations of these prior art techniques for accessing content on prior art portable
`
`media players. In particular, the claims provide for an improved user interface that
`
`visually subdivides the presentation of stored media content into categories,
`
`subcategories, and items in a series of screens, permitting orders of magnitude
`
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`14
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`fewer items to navigate through than a sequential list. Ex. 1001, cl. 1.
`
`36. An annotated version of Figure 10 of the ’433 patent, in Exhibit 1001,
`
`demonstrates a particular example of claim 1’s hierarchically navigated user
`
`interface method:
`
`37. A first display screen is indicated by the red number 1 annotation.
`
`That first screen is a “[c]ategories screen” that displays “categories” including
`
`“Albums”, “Artists,” and “Styles.”3 In the first screen, the user can select among
`
`
`
`
`3 The ’433 patent indicates that the terms “Styles” and “Genres” are used
`interchangeably in the patent. Ex. 1001 at 2:16-19 (stating that “a preferred
`embodiment of the invention uses the top-level categories ‘Albums’, ‘Artists’,
`‘Genres’ (or styles), and ‘Play Lists’”), Fig. 11.
`
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`15
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`the categories. For example, the user can select the “Album” category by
`
`navigating to “Album” and activating the “Open” soft button. This corresponds to
`
`claim 1’s recitation of “selecting a category in the first display screen of the
`
`portable media player.”
`
`38. The red number 2 annotation shows a second display screen, which
`
`contains a list of album names because the user selected the category “Album.”
`
`This corresponds to claim 1’s recitation of “displaying the subcategories belonging
`
`to the selected category in a listing presented in the second display screen.” In the
`
`second screen, the user can navigate among the various album names, and can
`
`select a particular album. For example, the user can select the “Jukebox Demo”
`
`album and activate the “Open” soft button to open that album. This corresponds to
`
`claim 1’s recitation of “selecting a subcategory in the second display screen.”
`
`39. The red number 3 annotation shows a third display screen, which
`
`contains a list of tracks within the selected album. In this case, the “Jukebox
`
`Demo” album contains a single track also called “Jukebox Demo.” This
`
`corresponds to claim 1’s recitation of “displaying the items belonging to the
`
`selected subcategory in a listing presented in the third display screen.” In the third
`
`screen, a user can add a track to an active queue of songs being played by selecting
`
`the track and activating the “Queue” soft button. This corresponds to claim 1’s
`
`recitation of “accessing at least one track based on a selection made in one of the
`
`display screens.”
`
`
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`40. The ’433 patent’s improved user interface also provides flexibility in
`
`how users access content, unprecedented in prior art handheld portable media
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`players. One example of this is accessing groups of songs (e.g. an album) based on
`
`a selection in a particular screen. Ex. 1001 at cls. 2, 3, 17, 19-28. This
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`corresponds to pressing the “Play” hard button or activating the “Queue” soft
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`button while on the lists screen (red 2) in the above annotated version of Figure 10.
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`Another example is using the portable media player’s user interface to add songs or
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`groups of songs to playlists. Ex. 1001 at cls. 3, 19, 21, 23, 25, 27. This is different
`
`from the technique of the prior art described in the specification, which relies on a
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`host device to add songs to a playlist. Another example is adding songs or groups
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`of songs to an active queue list of songs that are currently being played. Ex. 1001
`
`at cls. 17, 18, 20, 22, 24, 26, 28. In the above annotated Figure 10, the “Queue”
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`button causes albums (in the “lists screen”) or songs (in the “tracks screen”) to be
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`added to an active queue list of songs that are currently being played, which is also
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`a type of playlist in the preferred embodiment. In the preferred embodiment, the
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`active queue list can be viewed, modified, and saved. Ex. 1001 Fig. 13.
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`VI. CLAIM CONSTRUCTION
`41. For the purposes of my analysis herein, I have applied the
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`constructions adopted by the Board in its decision on institution. For any other
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`claim term, I have applied the broadest reasonable construction in light of the
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`specification of the ’433 patent.
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`
`
`17
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`

`

`VII. GROUND 4 - ALLEGED OBVIOUSNESS OVER BIRRELL AND
`SEIDENSTICKER
`A. Petitioners reasons
`for selecting and combining Birrell and
`Seidensticker are flawed and inadequate
`42.
`
`In regards to Ground 4, Petitioners and their expert state that it would
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`have been obvious to combine Birrell with Seidensticker in a manner that practices
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`claims 2, 3, 5, and 7. In Petitioners’ proposed combination, Birrell allegedly
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`provides a portable media player with a “table of contents” based organization, and
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`Seidensticker allegedly provides all of the necessary disclosures regarding the
`
`design and operation of a user interface. It is my opinion that the reasoning
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`provided by Petitioners and their expert for combining Birrell and Seidensticker is
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`inadequate and that Petitioners and their expert disregard important differences
`
`between the references.
`
`43.
`
`In particular, although Petitioners’ expert uses a large amount of legal
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`boilerplate in support of his conclusion that it would have been obvious to combine
`
`Birrell and Seidensticker, the only facts he specifically points to are the fact that
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`both discuss devices which are “portable” and both involve “hierarch[ies]” in some
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`way. Ex. 1006 ¶¶193-195.
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`44. Although Birrell and Seidensticker are each directed at portable
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`devices, they are different devices which are directed to different purposes.
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`Birrell’s portable device is a low power system for playing compressed audio data.
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`Ex. 1013 at Title, Abstract, 1:55-2:39. Seidensticker’s portable device is
`
`
`
`18
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`

`

`indisputably not a portable media player. Rather it is a combination pager or
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`phone and personal information manager. Ex. 1014 at Abstract. It is designed to
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`store and manage lists in the form of a directory hierarchically separating different
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`types of textual data, such as messages, news, appointments, reminders, phone
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`numbers, and to do lists. Ex. 1014 at 1:20-26. It also supports changing settings
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`and extensibility options in the nature of applets, which are applications that are
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`distinct from the user interface of Seidensticker itself. Ex. 1014 at 1:20-26.
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`45. A POSITA would find little in common between the devices of Birrell
`
`and Seidensticker beyond size, power consumption challenges, and the potential
`
`limitations of interacting with a relatively small display screen. A POSITA would
`
`know that the design of successful human-computer interactions needs to be
`
`tailored to the specific content types and functional usability goals at hand. That
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`said, Birrell is focused on solving power consumption challenges and makes no
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`reference to specific screen usability constraints, information menus, or even
`
`hierarchies of information. Instead, Birrell loosely references an organization of
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`songs using a table of contents as a context for solving different issues.
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`46. A POSITA would know that the usability requirements of a system
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`for accessing and playing audio data are inherently different from the usability
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`requirements of a system for accessing and managing personal information. In
`
`hindsight, a layperson might believe it nat