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
`_____________
`
`Case No. IPR2016-01407
`Patent No. 6,928,433
`___________
`
`REPLY DECLARATION OF BENJAMIN B. BEDERSON, PH.D.
`
`SONY Exhibit 1020
`SONY v. Creative
`IPR2016-01407
`
`
`____________
`
`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
`_____________
`
`Case No. IPR2016-01407
`Patent No. 6,928,433
`___________
`
`REPLY DECLARATION OF BENJAMIN B. BEDERSON, PH.D.
`
`SONY Exhibit 1020
`SONY v. Creative
`IPR2016-01407
`
`
`
`I, Benjamin B. Bederson, Ph.D., declare as follows:
`
`Patent Owner Response Argument #1
`
`1.
`
`I have reviewed the argument set out in the Patent Owner Response
`
`(“POR”) at pages 28-32. I understand that the POR criticizes my analysis in my
`
`original declaration (Ex. 1006) for not identifying that the ’433 patent “solved” a
`
`“problem” in the art. POR at 28-32.
`
`2.
`
`I understand the POR to assert that the “problem” solved by the
`
`’433 patent is how to “navigate and select among hundreds of songs” using a
`
`“compact user interface,” and that this problem “arose from specific issues
`
`relating to a portable media player.” POR at 28-30, 1-2. I further understand
`
`that the POR asserts that a “key solution” presented by the ’433 patent is that “a
`
`series of three screens is used to efficiently sub-divide the library of tracks stored
`
`on the media player such that the user can find and access content without
`
`scrolling through an excessive number of items in any one screen.” POR at 30,
`
`2-3.
`
`My Response to POR Argument #1
`
`3.
`
`Paragraphs 3–9 set out my response to the argument identified
`
`above at ¶¶1–2. In sum, I disagree with Patent Owner’s argument and its
`
`1
`
`
`
`assertions regarding a “problem” that is allegedly “solved” by the ’433 patent. I
`
`do not understand the ’433 patent to have presented any new solution to any
`
`problem, and instead understand the ’433 patent to have merely recycled
`
`existing functionality according to known uses of that functionality. In fact,
`
`contrary to Patent Owner’s assertions, I understand both the “problem” and the
`
`“solution” identified by Patent Owner to have been in the prior art at the time of
`
`the alleged invention of the ’433 patent.
`
`4.
`
`I believe that my understanding in this respect is confirmed, and
`
`Patent Owner’s arguments are rebutted, by prior art standards released by the
`
`International Organization for Standardization (ISO) that were cited by Patent
`
`Owner’s expert Mr. Bear in his declaration, Ex. 2014 at ¶28, and which I
`
`reviewed following their citation by Mr. Bear. For example, a portion of ISO
`
`9241 titled “Ergonomic requirements for office work with visual display
`
`terminals (VDTs) – Part 14: Menu dialogues” (“ISO9241-14”, Ex. 1023)
`
`confirms my understanding. ISO9241-14 was published June 1, 1997, ISO9241-
`
`14 at i, Ex. 1024, and is referenced in ISO 13407, which was published in 1999
`
`and which Mr. Bear cites in his declaration, Ex. 1022 at i, Ex. 2014 at ¶28, Ex.
`
`1021 at 47:21-48:20, 53:20-54:20. Petitioners’ counsel has informed me
`
`ISO9241-14 qualifies as prior art to the ’433 patent under 35 U.S.C. §102(b).
`
`2
`
`
`
`5.
`
`ISO9241-14 sets out a number of recommendations regarding the
`
`design of menu dialogues, including for design of hierarchical menus. A person
`
`of ordinary skill in the art (“POSA”) would have understood ISO9241-14 to
`
`explain potential difficulties with displaying a large number of menu options, as
`
`well-known solutions to those potential difficulties.
`
`6.
`
`For example, a POSA would have understood ISO9241-14 to
`
`recommend “not using” interfaces with long “scrollable lists (sometimes called
`
`‘scrollable menus’)” when rapid search time is important because scrollable lists
`
`“would increase search time.” Id. at 7. A POSA would have understood the
`
`term “search time,” in ISO9241-14 to mean the time to navigate and select an
`
`option from among a menu of options.
`
`7.
`
`As another example, a POSA would have understood ISO9241-14
`
`to explain that when there is a large number of menu options, presenting those
`
`options in a single menu panel may be difficult. Id. at 6. A POSA further would
`
`have understood ISO9241-14 to explain that “hierarchical” and “network” menu
`
`structures were as of 1997 a known solution to this difficulty. Id. ISO9241-14
`
`explains “hierarchical” and “network” menus in its Section 3, “Definitions,”
`
`which explains that a hierarchical menu may organize options in a tree-like
`
`manner into different levels and a network option would be a hierarchical menu
`
`that includes redundant pathways to menu options. Id. at 2-5. ISO9241-14 also
`
`3
`
`
`
`includes recommendations on how to organize menu options within menus,
`
`including that “if options can be arranged into conventional or natural groups
`
`known to users, options should be organized into levels and menus consistent
`
`with that order.” Id. at 7.
`
`8.
`
`Accordingly, at the time of the invention, a POSA would have
`
`understood from ISO9241-14 that if a large number of menu options were to be
`
`displayed, a long scrollable list should not be used when rapid search time is
`
`important, and instead a “hierarchical” or “network” menu structure should be
`
`used, which would organize menu options into conventional groups known to
`
`users. It is my opinion that at the time of the invention, if a POSA were faced
`
`with displaying a large library of music for a user to navigate and select a song
`
`for playback, a POSA would have known not to use a long scrollable list, but
`
`instead would have used a hierarchical or network menu structure with tracks
`
`organized by genre, artist, and/or album, since those were conventional music
`
`groups that would have been known to users, for example, from a record store’s
`
`organization of albums.
`
`9.
`
`It is therefore my understanding (confirmed by ISO9241-14) that, at
`
`the time of the invention, both the “problem” Patent Owner alleges was solved
`
`by the ’433 patent, and the “key solution” Patent Owner argues is presented by
`
`the ’433 patent, were known in the art.
`
`4
`
`
`
`POR Argument #2
`
`10.
`
`I have reviewed the argument set out in POR at pages 37-39. I
`
`understand that the POR criticizes the Birrell-Seidensticker combination I
`
`proposed in my first declaration.
`
`11.
`
`I understand the POR to be responding to my conclusion in my
`
`original declaration (Ex. 1006 at ¶¶209-214) that a POSA combining Birrell and
`
`Seidensticker would have created a user interface including a “second display
`
`screen” displaying albums for a selected genre and a “third display screen”
`
`displaying tracks for a selected album, and based on the teachings of Birrell that
`
`its user interface permits a user to “select CDs and/or individual tracks to be
`
`played” and “added to a ‘play list,’” Birrell at 4:66-5:3, the user interface of the
`
`Birrell-Seidensticker combination would have included the ability at the second
`
`display screen to “select CDs” to be played or added to a play list and the ability
`
`to select a CD and view on a third screen a list of tracks “select … individual
`
`tracks.” Ex. 1006 at ¶¶209-14, ¶¶196-99.
`
`12.
`
`I understand the POR to argue that Birrell and Seidensticker do not
`
`specifically explain how a particular menu option (e.g., a CD at a second display
`
`screen) could be either selected to trigger an access (e.g., playback of an entire
`
`5
`
`
`
`CD) or selected to trigger display of another menu (e.g., display of a third
`
`display listing tracks of the selected CD). POR at 38.
`
`My Response to POR Argument #2
`
`13.
`
`Paragraphs 13–15 set out my response to the argument identified
`
`above at ¶¶10–12. In sum, I disagree with Patent Owner’s argument. I believe
`
`Patent Owner’s argument relates merely to what a POSA would have understood
`
`to be a trivial implementation detail.
`
`14. A POSA would have understood how to implement a user interface
`
`in which a menu option could be used in two different ways, such as, in the
`
`Birrell-Seidensticker combination, selecting a CD in a second display screen to
`
`trigger playback of a whole CD or addition of tracks of a whole CD to a playlist,
`
`or alternatively selecting the CD in the second display screen to trigger display
`
`of a third display screen listing the tracks of the selected CD. In fact, there
`
`would have been a wealth of options available to a POSA for implementing such
`
`functionality. For example, separate buttons could be provided to perform the
`
`different operations, or the same button (e.g., the Action button of Seidensticker)
`
`could be configured for both operations, or “rocker” buttons in which pressing in
`
`one direction leads to one result and pressing in another direction leads to
`
`6
`
`
`
`another result. Affording a mechanism to permit both choices would have been
`
`a trivial implementation detail well within a POSA’s skill.
`
`15. My understanding that a POSA would have viewed this as a trivial
`
`implementation detail, and that one button could be configured for both
`
`operations, is confirmed by Seidensticker itself, which describes one such
`
`implementation option. Seidensticker explains how to track “events” including
`
`“any press or release of the any [sic] button on the user interface” or
`
`“completion of a time interval on an on-board timer” so as to use a limited
`
`number of buttons for a large number of operations. Seidensticker at 19:50-
`
`21:13, 22:27-35. With this functionality, a user may trigger one operation by
`
`depressing a button and a different operation by depressing that same button for
`
`“longer than a predetermined time interval.” Id. at 12:49-13:59. A POSA would
`
`have recognized that different lengths of key presses, as described in
`
`Seidensticker, would have been one option (among many) to implement
`
`selection of an entire subcategory (e.g., to trigger playback of an album) or
`
`navigation to the next hierarchical level (e.g., to view, on a third screen, the
`
`album’s tracks).
`
`7
`
`
`
`POR Argument #3
`
`16.
`
`I have reviewed the argument set out at in the POR at page 56. I
`
`understand that the POR argues that Looney does not disclose adding a song to
`
`the end of a playlist “while the playlist is currently playing” because Patent
`
`Owner understands Looney to describe that “the ‘Play’ button must be expressly
`
`invoked to cause selected songs in the playlist to ‘begin playing.’” POR at 56. I
`
`understand the POR bases this argument on “the control flow in Figure 6 of
`
`Looney” and in particular the “play block 532” of Looney’s FIG. 6. Id.
`
`My Response to POR Argument #3
`
`17.
`
`Paragraphs 17-21 set out my response to the argument identified
`
`above at ¶16. In sum, I disagree with Patent Owner’s argument. I see no
`
`support for the interpretation of Looney offered by Patent Owner and do not
`
`believe a POSA would interpret Looney as proposed by Patent Owner.
`
`18.
`
`I understand the flowchart of Looney’s FIG. 6 to illustrate that the
`
`“Pick” functionality of block 516 or the “Next” functionality of block 519, both
`
`triggered by user action, will ultimately lead to execution of the “Play” block
`
`532, which is not a user-triggered action but rather software code that plays
`
`music.
`
`8
`
`
`
`19. My understanding is confirmed by Looney at 10:59-67. In that
`
`passage, Looney states that “if a song is placed at the top of the play list the song
`
`is updated in Screen1 in block 530. The song is then played based upon the play
`
`block 532.” Looney 10:49-51 (emphasis added). This language conveys that
`
`merely placing a song at the “top” of a playlist automatically results in that song
`
`being played. The phrase “based upon the play block 532” refers to
`
`functionality, and specifically software code, for playing music. The sentence
`
`conveys to a POSA that play block 532 is configured to play the song that is at
`
`the top of the playlist.
`
`20.
`
`The POR appears to equate the “play block 532” with a Play button.
`
`POR at 56. That interpretation contradicts Figure 14 (which the POR also cites),
`
`in which the “Play” button is indicated with reference numeral 601, not
`
`reference numeral 532. See also Looney 11:54-55 (referring to Play button
`
`601).
`
`21.
`
`I therefore disagree with Patent Owner’s conclusion that Looney
`
`fails to disclose adding a song to a currently-playing playlist and continue to
`
`believe, as set out in my original declaration at ¶63, ¶91, and ¶¶270-275, that a
`
`POSA would have understood Looney to disclose adding a song to a playlist that
`
`is currently playing.
`
`9
`
`
`
`I understand and have been warned that willful false statements and the like
`
`are punishable by fine or imprisonment, or both (18 U.S.C. § 1001). I declare that
`
`all statements made herein of my own knowledge are true and that all statements
`
`made on information and belief are believed to be true, and further, that these
`
`statements were made with the knowledge that willful false statements and the like
`
`so made are punishable by fine or imprisonment, or both, under § 1001 of title 18
`
`of the United States Code.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on: 6 (Z (7'
`
`Benjamin B. Bederson, PhD.
`
`10
`
`
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