Patent No. 6,928,433
`IPR2016-01407
`
`
`
`
`
`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
`
`
`
`CREATIVE TECHNOLOGY LTD’S PATENT OWNER
`RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................................. 1 
`
`II. TECHNOLOGY BACKGROUND ...................................................................... 1 
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ................................................. 4 
`
`IV. PETITIONERS HAVE NOT MET THEIR BURDEN TO SHOW
`UNPATENTABILITY OF THE INSTITUTED CLAIMS .................................. 4 
`
`A.  Petitioners Failed to Demonstrate that Birrell in View of
`Seidensticker Renders any Claim Obvious ............................................. 4 
`
`1.  Birrell and Seidensticker Do Not Disclose All of the Elements
`in Claim 1, and Therefore Cannot Render Any of the Claims
`Obvious ........................................................................................... 5 
`
`a.  Neither Birrell nor Seidensticker Discloses “Tracks Accessed
`According to a Hierarchy” ...................................................... 5 
`
`b.  Neither Birrell nor Seidensticker Discloses “Configured to
`Present Sequentially a First, Second, and Third Display
`Screen” Displaying “Categories,” “Subcategories,” and
`“Items” .................................................................................... 8 
`
`2.  The Evidence Does Not Show That a Skilled Artisan Would
`Have Been Motivated to Select and Combine Birrell and
`Seidensticker in the Manner Claimed ........................................... 14 
`
`a. 
`
`b. 
`
`c. 
`
`Petitioners’ Expert Failed to Analyze Why One of Skill in
`the Art Would Have Been Motivated to Select Birrell and
`Seidensticker for Combination ............................................. 15 
`
`Petitioners’ Proffered Reasons for Combining Birrell and
`Seidensticker are Inadequate for Showing Why One of Skill
`in the Art Would Have Been Motivated to Select Birrell and
`Seidensticker to Combine ..................................................... 18 
`
`Petitioners’ Reason to Combine Analysis Failed to Consider
`and Address Important Differences ...................................... 21 
`
`
`
`i
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`Petitioners’ Analysis Is Based on Incorrect Assumptions
`Regarding How One of Skill in the Art Would Have
`Interpreted Birrell.................................................................. 23 
`
`d. 
`
`e.  Because None of Petitioners’ Evidence Teaches, Suggests or
`Motivates Subdividing a Library of Media Content Using a
`Series of Sequential Screens, It Would Not Have Been
`Obvious to a POSITA to Combine Birrell and Seidensticker
` ............................................................................................... 28 
`
`f. 
`
`Petitioners Failed to Show a Reason to Modify Birrell’s User
`Interface as Implemented in the PJB-100 to Practice the
`Claimed Invention ................................................................. 33 
`
`3.  Neither Birrell nor Seidensticker Disclose or Suggest
`“Accessing” Multiple Tracks by Making a Selection in a
`Second Screen as Required by Claims 2-3 and 17 ....................... 34 
`
`a.  Claims 2-3 and 17 Require that the Selection that Causes the
`“Accessing” of Multiple “Tracks” Occur on the Second
`Screen .................................................................................... 34 
`
`a. 
`
`Petitioners Fail to Present Meaningful Evidence that the
`Birrell-Seidensticker Combination Discloses that a Selection
`on the Second Screen Causes the “Accessing” of Multiple
`“Tracks” and that the Third Screen is also Displayed .......... 35 
`
`b.  The Alternative “Back Button” Theory Identified by the
`Board Fails Because Neither Reference Discloses a User
`Interface Element Which Can Both Cause a New Display
`Screen to be Presented and Cause an Accessing .................. 37 
`
`B.  Petitioners Failed to Show that Birrell in View of Seidensticker and
`Proehl Renders Any Claim Obvious ..................................................... 40 
`
`1. 
`
`Proehl Does Not Cure the Above-Discussed Deficiencies in
`the Birrell-Seidensticker Combination ......................................... 40 
`
`2.  The Evidence Does Not Show That One of Skill in the Art
`Would Have Been Motivated to Select Proehl to Combine
`with Birrell and Seidensticker in the Manner Claimed ................. 40 
`
`
`
`ii
`
`

`

`C.  Petitioners Failed to Show that Birrell in View of Seidensticker,
`Proehl and Johnson Renders Any Claim Obvious ................................ 46 
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`1. 
`
`Johnson Does Not Cure the Above-Discussed Deficiencies in
`the Birrell-Seidensticker Combination ......................................... 46 
`
`2.  The Evidence Does Not Show That One of Skill in the Art
`Would Have Been Motivated to Select Johnson to Combine
`with Birrell, Seidensticker and Proehl in the Manner Claimed .... 46 
`
`D.  Petitioners Failed to Prove that the Combinations Based on Looney
`Render Any Claim Obvious .................................................................. 49 
`
`1.  Looney Does Not Cure the Above-Discussed Deficiencies in
`the Birrell-Seidensticker Combination ......................................... 49 
`
`2.  The Evidence Does Not Show that One of Skill in the Art
`Would Have Been Motivated to Select Looney to Combine
`with Birrell, Seidensticker, Johnson and/or Proehl in the
`Manner Claimed ............................................................................ 50 
`
`3.  Looney Does Not Disclose Adding Tracks to “An Active
`Queue List of Songs that is Currently Being Played” .................. 54 
`
`E.  The Secondary Considerations of Non-Obviousness Compel a
`Finding of Non-Obviousness ................................................................ 57 
`
`1. 
`
`Industry Praise Supports a Finding of Nonobviousness ............... 58 
`
`2.  Licensing of the ’433 Patent Supports a Finding of
`Nonobviousness ............................................................................ 62 
`
`V. CONCLUSION ................................................................................................... 64 
`
`
`
`
`
`
`
`iii
`
`

`

`Table of Authorities
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
` Page(s)
`
`Cases
`
`ActiveVideo Networks, Inc. v. Verizon Communs., Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .............................................................. 14, 31, 50
`
`Apple Inc. v. Samsung Elecs. Co., Ltd.,
`839 F.3d 1034 (Fed. Cir. 2016) .......................................................................... 57
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 46
`
`In re Carlson,
`983 F.2d 1032 (Fed. Cir. 1992) .......................................................................... 33
`
`Free-Flow Packaging Int’l v. Automated Packing Sys., Inc.,
`IPR2016-00350, Paper 7 (June 27, 2016) ........................................................... 33
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 18
`
`Genentech, Inc. v. USITC,
`122 F.3d 1409 (Fed. Cir. 1997) .......................................................................... 62
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 63
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 28
`
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 29
`
`Novartis Pharms. Corp. v. Watson Labs., Inc.,
`611 Fed. Appx. 988 (Fed. Cir. 2015) .................................................................. 29
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 34
`
`
`
`iv
`
`

`

`Personal Web Technologies, LLC v. Apple, Inc.,
`2017 U.S. App. LEXIS 2544 (Fed. Cir. Feb. 14, 2017) ..............................passim
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`Plas-Pak Indus v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. Jan. 27, 2015) .................................................... 44
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 58
`
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`IPR2016-00267, Paper 8 (June 3, 2016) ............................................................. 33
`
`South Alabama Medical Science Foundation v. Gnosis Spa,
`808 F.3d 823 (Fed. Cir. 2015) ............................................................................ 63
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 57
`
`Transocean Offshore Deepwater v. Maersk Drilling,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 63
`
`Ex parte Zhang,
`2016 Pat. App. LEXIS 10180 (PTAB Aug. 29, 2016) ....................................... 43
`
`Statutes
`
`35 U.S.C. § 316(e) ..................................................................................................... 4
`
`Other Authorities
`
`37 C.F.R. § 42.1(d) .................................................................................................... 4
`
`37 C.F.R. §42.65 ...................................................................................................... 42
`
`Fed. R. Evid. 201(b)(2) ............................................................................................ 62
`
`
`
`v
`
`
`
`
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`EXHIBIT LIST
`
`Description
`Declaration of Eric Bear in Support of Patent Owner
`Preliminary Response
`Curriculum Vitae of Eric Bear
`Excerpts from Oxford English Dictionary (2006)
`Computer Desktop Encyclopedia online entry for
`“portable media player”
`Excerpts from Computer Desktop Encyclopedia (2001)
`Java2 Platform Std. Ed. version 1.3.1 - Application
`Programming Interface Documentation for
`java.awt.Component class (2001)
`Xbit.com, “Creative NOMAD Jukebox Digital Audio
`Player Review” (Nov. 7, 2000)
`MP3Newswire.net, “We Test Drive the Creative
`Nomad Jukebox” (Nov. 21, 2000)
`Excerpts from PCMagazine, “Gadget of the Month”
`(Oct. 17, 2000)
`MacWorld.com, “MP3 Jukeboxes” (May 1, 2001)
`Excerpts from PCWorld, “100 Plus Hours of Digital
`Music on the Go” (Nov. 2000)
`Apple Press Release, “Apple & Creative Announce
`Broad Settlement Ending Legal Disputes Between the
`Companies” (Aug. 23, 2006)
`Excerpts from American Intellectual Property Law
`Association – Report of the Economic Survey (2007)
`Declaration of Eric Bear in Support of Patent Owner
`Response
`Declaration of Tan Shao Mieng
`Creative Press Release, Apple & Creative Announce
`Broad Settlement Ending Legal Disputes Between the
`Companies (Aug. 24, 2006)
`
`vi
`
`
`
`Exhibit No.
`Creative-2001
`
`Creative-2002
`Creative-2003
`Creative-2004
`
`Creative-2005
`Creative-2006
`
`Creative-2007
`
`Creative-2008
`
`Creative-2009
`
`Creative-2010
`Creative-2011
`
`Creative-2012
`
`Creative-2013
`
`Creative-2014 
`
`Creative-2015 
`Creative-2016 
`
`
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`Deposition Transcript of Dr. Benjamin B. Bederson
`(Feb. 16, 2017)
`HanGo Personal Jukebox User Manual (1999)
`Birrell, Andrew, “Personal Jukebox (PJB),” Compaq
`Systems Research Center and PAAD Presentation (Oct.
`13, 2000).
`Complaint filed by Creative in Investigation No. 337-
`TA-753 
`Complaint filed by Creative in Case No. 4:06-cv-
`03218-SBA (N.D.Cal.) 
`First Amended Complaint filed by Apple in
`Investigation No. 337-TA-756 
`First Amended Complaint filed by Apple in Case No.
`9:06-cv-00114-RC (E.D.Tex.) 
`First Amended Complaint filed by Apple in Case No.
`3:06-cv-00263-BBC (W.D.Wis.) 
`Docket sheet from ITC Investigation No. 337-TA-753 
`Docket sheet from Case No. 4:06-cv-03218-SBA 
`Docket sheet from ITC Investigation No. 337-TA-756 
`Docket sheet from Case No. 9:06-cv-00114-RC 
`Docket sheet from Case No. 3:06-cv-00263-BBC 
`Revised Curriculum Vitae of Eric Bear 
`
`
`
`vii
`
`Creative-2017 
`
`Creative-2018 
`Creative-2019 
`
`Creative-2020 
`
`Creative-2021 
`
`Creative-2022 
`
`Creative-2023 
`
`Creative-2024 
`
`Creative-2025 
`Creative-2026 
`Creative-2027 
`Creative-2028 
`Creative-2029 
`Creative-2030 
`
`
`
`
`
`

`

`I. INTRODUCTION
`Patent Owner Creative Technology Ltd (“Creative”) submits this Response
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`to the Petition for Inter Partes Review (“the Petition”) of U.S. Patent No. 6,928,433
`
`(“the ’433 patent”) filed by several Sony-related entities (“Petitioners”). In its
`
`Decision on Institution (Paper No. 13, “Institution Decision”), the Board instituted
`
`review of claims 2, 3, 5, 7, and 17-28 (the “instituted claims”). As explained in
`
`more detail below, the prior art fails to disclose each claim element, the Petitioners
`
`failed to show a proper motivation to combine the references, and secondary
`
`considerations of nonobviousness support patentability. As such, Petitioners have
`
`not carried their burden to demonstrate by a preponderance of the evidence that the
`
`instituted claims are unpatentable.
`
`II. TECHNOLOGY BACKGROUND
`At the time of the invention, there were significant problems with the user
`
`interfaces of prior art portable media players. As the patent explains, “small,
`
`portable music playback devices [could] store hundreds, even thousands, of
`
`compressed songs and [could] play back the songs at high quality.” Ex. 1001 at
`
`1:19-24. However, “typically, portable devices have a user interface including a
`
`small screen” and “[t]he small size…limits the number, size, shape, and types of
`
`user input controls that can be mounted on the device.” Id. As a result, “[m]ajor
`
`problems facing the consumer” were “organizing and accessing the tracks,” and
`
`
`
`1
`
`

`

`that “[u]sing such a compact user interface to navigate and select among hundreds
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`of songs is inefficient and often frustrating.” Id. at 1:34-45. In particular, the
`
`patent describes two prior art techniques for accessing content that suffered from
`
`these problems: (1) “a single list of tracks,” and (2) playlists created using
`
`software that “runs on a host PC.” Ex. 1001 at 1:28-31, 3:59.
`
`The inventors at Creative, one of the pioneers in the development of portable
`
`MP3 players, came up with several solutions to those problems while developing
`
`the Creative NOMAD Jukebox. Ex. 1001 at 5:66-67. The inventions claimed in
`
`the ’433 patent provided an improved user interface method that enabled a user to
`
`more efficiently navigate, select and access tracks stored on a portable media
`
`player by dividing the presentation of stored media content into categories,
`
`subcategories, and items in a series of screens, thereby reducing by orders of
`
`magnitude the number of items through which a user had to navigate to find a
`
`desired track as compared to using a sequential list. Figure 10 of the ’433 patent
`
`demonstrates a particular example of claim 1’s hierarchically navigated user
`
`interface method. Ex. 1001 at Fig. 10.
`
`
`
`2
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`
`
`Additionally, the ’433 patent’s improved user interface allowed users to
`
`easily play a groups of tracks, or to add a track or group of tracks to a playlist or to
`
`an active queue list of songs that are currently being played. Ex. 1001 at Fig. 10,
`
`9:10-37, cls. 2-3, 17-28. These inventions constituted a significant improvement
`
`over the prior art user interfaces that required users to navigate through songs one-
`
`by-one in a sequential list and to use static playlists that had to be created and
`
`modified on a desktop PC rather than on the portable device itself.
`
`The inventions of the ’433 patent were incorporated in Creative’s NOMAD
`
`Jukebox device. Ex. 1001 at 5:66-67; Ex. 2014 ¶¶132-138. The NOMAD
`
`
`
`3
`
`

`

`Jukebox received widespread industry praise for its easy-to-use user interface,
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`especially for the patented features recited in the claims. Ex. 2014 ¶¶139-142; Exs.
`
`2007-2011. Indeed, the technology of the ’433 patent was so impressive that
`
`Apple, Inc. paid $100 million for a license to use the patent on its iPod and iPhone
`
`devices. Exs. 2015-2016.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) 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 equivalent work experience), and two to three years of experience in
`
`designing user interfaces for consumer electronics devices. Ex. 2014 ¶32.
`
`IV. PETITIONERS HAVE NOT MET THEIR BURDEN TO SHOW
`UNPATENTABILITY OF THE INSTITUTED CLAIMS
`
`The Petitioners have not and cannot meet their burden to show that any of
`
`the instituted claims are unpatentable. See 35 U.S.C. § 316(e), 37 C.F.R. § 42.1(d).
`
`A.
`
`Petitioners Failed to Demonstrate that Birrell in View of Seidensticker
`Renders any Claim Obvious
`
`To establish obviousness, the Petitioners must show that: (1) the asserted
`
`prior art references disclose “all of the elements” of the claims at issue, and (2)
`
`“that a person of ordinary skill in the art would have been motivated to combine
`
`the prior art in the way claimed” “and had a reasonable expectation of success in
`
`
`
`4
`
`

`

`doing so.” Personal Web Technologies, LLC v. Apple, Inc., 2017 U.S. App.
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`LEXIS 2544, at *8-9 (Fed. Cir. Feb. 14, 2017). As explained below, Birrell and
`
`Seidensticker fail to disclose all of the elements of the instituted claims.
`
`Additionally, the evidence fails to show that a skilled artisan would have been
`
`motivated to select and combine Birrell and Seidensticker in the claimed manner.
`
`1.
`
`Birrell and Seidensticker Do Not Disclose All of the Elements in
`Claim 1, and Therefore Cannot Render Any of the Claims
`Obvious
`
`As discussed below, Birrell and Seidensticker do not disclose: (i) “tracks
`
`accessed according to a hierarchy,” nor (ii) “configured to present sequentially a
`
`first, second, and third display screen” displaying, respectively, “categories,”
`
`“subcategories,” and “items” as required by claim 1 from which all the instituted
`
`claims depend.
`
`a.
`
`Neither Birrell nor Seidensticker Discloses “Tracks
`Accessed According to a Hierarchy”
`
`Birrell and Seidensticker fail to disclose “access[ing]” “tracks” “according
`
`to a hierarchy.” Petitioner points to the fact that Birrell generally says that its user
`
`interface can function to allow songs to be selected and added to a play list (Ex.
`
`1013 at 4:66-5:3, 5:40-50). However, Birrell does not provide any specificity for
`
`how the user interface carries out that function. Ex. 2014 ¶86. The Institution
`
`Decision concludes that Birrell discloses “accessing a track from the hierarchical
`
`
`
`5
`
`

`

`table of contents.” Paper No. 13 at 15. However, Birrell does not actually include
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`such a disclosure. Indeed, Petitioners’ own expert admitted at his deposition that
`
`“Birrell doesn’t disclose how a user selects a track to be accessed.” Ex. 2017 at
`
`92:12-16.
`
`In particular, the portion of Birrell that Petitioner relies upon merely
`
`discloses that “a table of contents [] is stored” “preferably organize[d]” “in a
`
`hierarchy,” that the “table of contents” or “selected portions” thereof “can be
`
`displayed,” and that “users can select CDs and/or individual tracks to be played.”
`
`Ex. 1013 at 4:50-5:17. However, this is insufficient to demonstrate that the CDs or
`
`tracks are accessed according to a hierarchy. Ex. 2014 ¶¶86-87. As the ’433
`
`patent explains, in “the invention, the hierarchy is displayed on the portable music
`
`player so that a user can traverse the organizational hierarchy.” Ex. 1001 at 3:4-
`
`6 (emphasis added). Thus, although Birrell’s table of contents is arguably “an
`
`organizational hierarchy,” portions of which can be displayed to the user, and a
`
`user can somehow access content in an unstated manner, there is no disclosure in
`
`Birrell that the content is actually accessed according to a hierarchy, i.e. that a
`
`user can traverse the hierarchy.
`
`Moreover, accessing “according” to a hierarchy cannot be inherent in
`
`Birrell’s disclosures because displaying “table of contents” information alongside
`
`tracks is useful to users regardless of whether the content is accessed in a
`
`
`
`6
`
`

`

`hierarchical manner. For example, as discussed above, a common technique of
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`prior art portable media players was to simply present a flat list of songs in which a
`
`user can navigate forwards or backwards through the entire list (not up or down
`
`hierarchical levels). Ex. 2014 ¶34. Displaying Birrell’s “table of contents”
`
`information—genre, album names, and track names, would be useful to users even
`
`if the user were accessing the content in that non-hierarchical (i.e. flat) manner.
`
`Ex. 2014 ¶¶54, 88. Thus, the mere fact that users can access content and that
`
`Birrell’s hierarchical “table of contents” is displayed to the users is insufficient to
`
`establish that the content is “accessed according to a hierarchy.” Thus, the Board’s
`
`Institution Decision was incorrect in concluding that Birrell discloses “accessing a
`
`track from the hierarchical table of contents” (Paper No. 13 at 15 (emphasis
`
`added)). Birrell arguably discloses displaying portions of a hierarchical table of
`
`contents, as well as accessing CDs and tracks, but does not disclose accessing from
`
`the table of contents. That is, nothing in Birrell is inconsistent with the table of
`
`contents simply being used for organization and presenting information to the user,
`
`rather than controlling the method of how the content is accessed.
`
`Additionally, nothing in Seidensticker cures this deficiency in Birrell.
`
`Indeed, the Petition does not rely on any of Seidensticker’s disclosures for the
`
`“accessed according to a hierarchy” limitation. Pet.74. Moreover, Seidensticker
`
`does not teach that its user interface is useful for “access[ing]” anything outside of
`
`
`
`7
`
`

`

`its own user interface in a hierarchical way, little less “accessing” tracks of media
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`content. Ex. 2014 ¶89. Indeed, the only data organized in the examples of
`
`Seidensticker’s user interface is the very text that is part of the user interface
`
`itself. Id.; Ex. 1014 at Figs. 10-11, 7:24-27, 8:4-8. Moreover, even if
`
`Seidensticker arguably discloses hierarchical menus, there is no disclosure of how
`
`those hierarchical menus could be used to “access tracks according to a hierarchy.”
`
`Although Seidensticker discloses the existence of certain “controls,” i.e., rules that
`
`specify how its menus may be navigated, none of those rules discussed in
`
`Seidensticker reflect any particular relationship between content, and certainly not
`
`a hierarchical relationship among tracks. Ex. 1014 at 2:36-39; Ex. 2014 at ¶89.
`
`b.
`
`Neither Birrell nor Seidensticker Discloses “Configured to
`Present Sequentially a First, Second, and Third Display
`Screen” Displaying “Categories,” “Subcategories,” and
`“Items”
`
`Instead of pointing to any specific text in Birrell or Seidensticker that
`
`discloses three display screens, displaying “categories,” “subcategories,” and
`
`“items,” Petitioners and their expert assume in an entirely conclusory manner that a
`
`POSITA would create the claimed three “display screen” implementation despite
`
`the fact that nothing in Seidensticker nor Birrell disclose or suggest such a user
`
`interface. Ex. 2014 ¶75. Instead, Petitioners note that Birrell discusses a table of
`
`contents with three levels. Pet.67-68. Based on that alone, Petitioners’ expert
`
`
`
`8
`
`

`

`concludes that “[w]ith that example, Seidensticker would have led a POSA to
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`present three respective screens for Birrell’s three levels of its table of contents,
`
`with the first screen containing a listing of ‘music genres,’ the second screen
`
`containing a listing of CDs within a genre selected within the first level, and the
`
`third screen containing tracks on a CD selected within the second level.” Pet.68;
`
`Ex. 1006 ¶197. The Board accepted this argument in its Notice of Institution with
`
`little comment. Paper No. 13 at 15.
`
`However, Petitioners’ arguments assume, without explanation or evidence,
`
`that it would have been apparent to one of skill in the art that Birrell’s three level
`
`table of contents would be associated with three display screens of Seidensticker.
`
`But neither Birrell nor Seidensticker discloses a one-to-one correlation between the
`
`levels of an organizational hierarchy (such as Birrell’s table of contents) and the
`
`number of display screens displayed in a user interface (such as that of
`
`Seidensticker). Such a relationship is clearly not inherent or implicit, because
`
`there are numerous ways to present Birrell’s table of contents to a user without the
`
`use of three screens. For example, one could simply present a list of all CDs and
`
`songs in one screen, and present the table of contents information, including genre,
`
`
`
`9
`
`

`

`in second screen after the track is selected:.
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`
`
`Ex. 2014 ¶78.
`
`Alternatively, one could one could have implemented Birrell’s user interface
`
`without the claimed distinct first screen and second screen, wherein the selection of
`
`a category (i.e. genre) on the first screen dictates the subcategories (i.e. CDs) on
`
`the second screen. Instead, one could simply step through the various genres while
`
`simultaneously displaying their associated CDs.
`
`
`
`10
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`Ex. 2014 ¶79. The commercial embodiment of Birrell, the PJB-100, discussed in
`
`detail below, provides another example of how to implement Birrell’s table of
`
`contents in a single screen (i.e. where the set of display elements remains the same
`
`as the user steps through genres, disks, or tracks):
`
`
`
`
`
`11
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`
`
`Ex. 2019 at 13; Ex. 2014 ¶¶58-67, 77.
`
`Indeed, as Petitioners admit, Birrell says nothing about the design of its user
`
`interface, and certainly does not disclose any specific sequence of user interface
`
`screens. Pet.64. Moreover, Birrell’s disclosure of displaying a three-level table of
`
`contents does not disclose use of three display screens because Birrell does not
`
`disclose use of the table of contents levels to subdivide content. Ex. 2014 ¶¶34-35,
`
`81-82. For example, Birrell does not disclose using its first level (i.e. genres) as a
`
`technique of subdividing the display of its music library to present users with either
`
`a list of “Rock” songs or a list of “Jazz” songs. Indeed, there is no reason to expect
`
`that Birrell’s disclosure of a three-level table of contents would be associated with
`
`any particular number of screens except using hindsight reasoning. Ex. 2014 ¶77.
`
`Thus, there is no disclosure in Birrell, alone or in combination with Seidensticker,
`
`to use three screens, including a first screen which displays “categories.”
`
`
`
`12
`
`

`

`Moreover, nothing in Seidensticker’s description discloses using its user
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`interface to subdivide media content into a series of sequentially displayed screens
`
`with “categories,” “subcategories,” and “items.” Ex. 2014 ¶83. It certainly does
`
`not disclose using three display screens to do so. Indeed, nothing in Seidensticker
`
`suggests that its user interface is capable of or useful in accessing a potentially
`
`“very large numbers of songs,” (Ex. 1001 at 1:36-49) which is the entire purpose
`
`of the ’433 patent’s three display screen user interface—logically subdividing the
`
`display of a large catalog of songs into portions that are relatively convenient for
`
`the user to scroll through. Ex. 2014 ¶¶34-35, 81. To the contrary, each of
`
`Seidensticker’s examples show accessing a very small number of entries, which
`
`can already easily be scrolled through, and therefore would not need subdivision.
`
`Ex. 1014 at Fig. 10 (five text entries), Fig 11 (five text entries), 7:24-27 (two text
`
`entries), 8:4-8 (two text entries). Thus, Seidensticker does not cure Birrell’s failure
`
`to disclose the subdividing of media content into three display screens.
`
`In short, there is no dispute that Seidensticker or Birrell individually fail to
`
`disclose the claimed three display screens. Petitioners’ argument that collectively
`
`Seidensticker and Birrell disclose that limitation is also flawed—Petitioners
`
`present no evidence of motivation to use a one-to-one relationship between table of
`
`contents levels and display screens. Because there were other ways of displaying
`
`Birrell’s three level table of contents, Birrell does not inherently disclose this
`
`
`
`13
`
`

`

`limitation. Because neither reference, alone or in combination, discloses
`
`Patent No. 6,928,433
`IPR2016-01407
`
`
`subdividing the display of a hierarchy of tracks into categories, subcategories, and
`
`items displayed on three screens, the Board should find that Petitioners have failed
`
`to show the instituted claims are unpatentable.
`
`2.
`
`The Evidence Does Not Show That a Skilled Artisan Would Have
`Been Motivated to Select and Combine Birrell and Seidensticker
`in the Manner Claimed
`
`To render a finding of obviousness, Petitioners are required to show that a
`
`POSITA would have been motivated to combine Birrell and Seidensticker to
`
`achieve the claimed invention, and would have had a reasonable expectation of
`
`success. See ActiveVideo Networks, Inc. v. Verizon Communs., Inc., 694 F.3d
`
`1312, 1327 (Fed. Cir. 2012) (“a challenger must demonstrate…that a skilled
`
`artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success in doing so.”) (internal quotations
`
`omitted); see also PersonalWeb, 2017 U.S. App. LEXIS 2544, at *14 (it is not
`
`enough to say that “a skilled artisan, once presented with the two references, would
`
`have understood that they could be combined.”).
`
`
`
`14
`
`

`

`Patent No. 6,928,433
`IPR2016-01407
`
`
`Petitioners’ Expert Failed to Analyze Why One of Skill in
`the Art Would Have Been Motivated to Select Birrell and
`Seidensticker for Combination
`
`a.
`
`Petitioners’ expert’s declaration is wholly silent as to why Seidensticker’s
`
`user interface method would be selected, as opposed to alternative methods, for use
`
`with Birrell. Indeed, at his deposition, he admitted that in performing his reason to
`
`combine analysis, he did not “identify any alternatives to Seidensticker’s user
`
`interface” and instead “focused on the user interface in Seidensticker.” Ex. 2017,
`
`122:11-15. Petitioners’ expert “focused” entirely on Seidensticker, as opposed to
`
`potential alternatives, even though he admits that “there are other possible ways
`
`that” “display[ing] the table of contents of Birrell” “could have been done” “other
`
`than the manner of Seidensticker.” Id., 93:2-16.
`
`There is no reasonable dispute that Birrell’s table of contents could be
`
`displayed, consistent with the disclosures of Birrell, in various ways outside the
`
`scope of claim 1. For example, Petitioners’ expert admitted that “it is possible to
`
`display a hierarchy”—such as the hierarchy of Birrell—“in a single scrollable list,”
`
`and he did not dispute that such manner of displaying Birrell would be outside the
`
`scope of claim 1 of the ’433 patent. Ex. 2017, 85:4-10, 86:11-87:1. Indeed, as Mr.
`
`Bear explains, such a system is one of many that could display Birrell’s
`
`hierarchically stored table of contents without practicing claim 1, as shown:
`
`
`
`15
`
`

`