Paper No. __
`
`
`
`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 TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`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 TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`GROUND 4: CLAIMS 5 AND 7 WOULD HAVE BEEN
`OBVIOUS OVER BIRRELL IN VIEW OF SEIDENSTICKER ................... 2
`A. A POSA had strong reasons to use Seidensticker’s
`hierarchical menu structure to display Birrell’s
`genre, album, and track data on successive screens .............................. 2
`1.
`Because the Petition relies on obviousness
`(not inherency), the existence of other ways
`to display music data is legally irrelevant ................................... 4
`The PJB-100 is legally irrelevant ................................................ 5
`As a matter of law, the prior art need not articulate the
`same “problem” as the ’433 patent, but in any event the
`alleged “problem” was known and had already been solved ..... 6
`None of the alleged “differences” between Birrell and
`Seidensticker would have discouraged a POSA .......................10
`Creative argues the references individually and
`never disputes that the Birrell-Seidensticker
`combination includes every element of claims 5 and 7 ......................13
`III. GROUND 4: CLAIMS 2 AND 3 WOULD HAVE BEEN
`OBVIOUS OVER BIRRELL IN VIEW OF SEIDENSTICKER .................16
`IV. GROUNDS 5-6: CLAIMS 19, 21, 23, 25 AND 27 WOULD HAVE BEEN
`OBVIOUS OVER BIRRELL AND SEIDENSTICKER
`IN VIEW OF PROEHL (AND IN CERTAIN CASES JOHNSON) ............18
`A. None of the alleged “differences” between the
`references would have discouraged a POSA ......................................19
`Speculative difficulties cannot undermine
`the Petition’s strong case of obviousness ............................................20
`
`B.
`
`B.
`
`2.
`3.
`
`4.
`
`- i -
`
`
`
`V. GROUNDS 7-9: CLAIMS 17, 18, 20, 22, 24, 26 & 28
`WOULD HAVE BEEN OBVIOUS OVER BIRRELL AND
`SEIDENSTICKER (AND IN CERTAIN CASES
`PROEHL AND/OR JOHNSON) IN VIEW OF LOONEY ..........................21
`VI. SECONDARY CONSIDERATIONS
`DO NOT REBUT OBVIOUSNESS .............................................................24
`VII. CONCLUSION ..............................................................................................28
`
`
`
`- ii -
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`1964 EARS, LLC v. Jerry Harvey Audio Holding, LLC,
`IPR2016-00494, Paper 21 (PTAB 2016) .............................................................25
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`713 F.3d 1369 (Fed.Cir.2013) ..............................................................................25
`Classco, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) ............................................................................27
`Ex parte Franz,
`2017 WL 1279474 (PTAB 2017) .........................................................................24
`Ex parte Gu,
`2016 WL 552385 (PTAB 2016) ............................................................................. 6
`In re Cree, Inc.,
`818 F.3d 694 (Fed. Cir. 2016) ..............................................................................26
`In re Dance,
`160 F.3d 1339 (Fed. Cir. 1998) ............................................................................21
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .............................................................................. 5
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) ............................................................................21
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ............................................................................21
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) ............................................................................27
`J Squared, Inc. v. Sauder Mfg. Co.,
`IPR2015-00774, Paper 35 (PTAB 2016) .............................................................24
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................... passim
`
`- iii -
`
`
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F. 3d 1284 (Fed. Cir. 2015) .................................................................... 10, 19
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed.Cir.2012) ................................................................................ 7
`MRC Innovations, Inc. v. Hunter Mfg., LLP,
`747 F.3d 1326 (Fed. Cir. 2014) ............................................................................24
`Novartis Pharm. Corp. v. Watson Labs., Inc.,
`611 F. App’x 988 (Fed. Cir. 2015) ...................................................................... 7
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) ............................................................................25
`Paice LLC v. Ford Motor Co.,
`2017 WL 1422490 (Fed. Cir. 2017) ....................................................................... 3
`Slot Speaker Techs., Inc. v. Apple Inc.,
`2017 WL 655440 (Fed. Cir. Feb. 17, 2017) .........................................................19
`South Alabama Med. Sci. Found. v. Gnosis S.P.A.,
`808 F.3d 823 (Fed. Cir. 2015) ..............................................................................26
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed.Cir.2012) ..............................................................................26
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................22
`STATUTES
`35 U.S.C. § 311(b) ..................................................................................................... 6
`
`
`
`- iv -
`
`
`
`
`
`PETITIONERS’ EXHIBITS
`
`Exhibit Description
`1001
`U.S. Patent No. 6,928,433 (“the ’433 patent”)
`1002
`Reexamination Certificate (469th) for U.S. Patent No. 6,928,433
`1003
`Original File History of U.S. Patent No. 6,928,433
`1004
`Reexamination File History of U.S. Patent No. 6,928,433
`1005
`Complaint Under Section 337 of the Tariff Act of 1930, In the Matter of
`Certain Portable Electronic Devices and Components Thereof,
`Investigation No. 337-TA-994 (public version, without confidential
`exhibit) (“ITC Complaint”)
`Declaration of Benjamin B. Bederson, PhD. (“Bederson”)
`File History of Application Serial No. 09/755,629
`File History of Application Serial No. 11/033,465
`U.S. Patent No. 5,969,283 (“Looney”)
`File History of U.S. Patent No. 5,969,283
`U.S. Patent No. 6,118,450 (“Proehl”)
`U.S. Patent No. 5,798,921 (“Johnson”)
`U.S. Patent No. 6,332,175 (“Birrell”)
`U.S. Patent No. 6,128,012 (“Seidensticker”)
`Curriculum Vitae of Benjamin B. Bederson, PhD.
`Samsung Elecs. Co. v. Black Hills Media, LLC, IPR2014-00737, Paper
`No. 7 (PTAB, Nov. 4, 2014)
`Reply Declaration of Benjamin B. Bederson, PhD. (“Bederson Reply”)
`Transcript of Deposition of Eric J. Gould Bear (“Bear Depo.”)
`
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`
`1017
`1018
`
`- v -
`
`
`
`1019
`
`1020
`
`1021
`
`International Organization for Standardization (ISO), ISO 13407:1999 –
`Human-Centred Design Processes For Interactive Systems (1999)
`(“ISO13407”)
`ISO, ISO 9241-14:1997 – Ergonomic Requirements For Office Work
`With Visual Display Terminals (VDTs) – Part 14: Menu Dialogues
`(1997) (“ISO9241-14”)
`ISO, ISO 9241-14:1997 – Ergonomic Requirements For Office Work
`With Visual Display Terminals (VDTs) -- Part 14: Menu Dialogues,
`https://www.iso.org/standard/16886.html (last visited June 2, 2017)
`
`- vi -
`
`
`
`I.
`
`INTRODUCTION
`
`The challenged claims are obvious over Birrell in view of Seidensticker (and
`
`in some cases further in view of Proehl, Johnson and/or Looney).
`
`On the institution record, the Board found that Sony presented sufficient
`
`reasons why a POSA would have used Seidensticker’s hierarchical user interface
`
`to display Birrell’s hierarchical music data. Institution Decision (ID) 16-17.
`
`Seidensticker states that its user interface is applicable to many types of portable
`
`electronic devices, and Birrell contemplates a user interface for its hierarchical
`
`data. Each reference therefore recommends itself to the other.
`
`Creative’s response invites legal error by: applying an inherency test when
`
`the Grounds are based on obviousness; urging the Board to base its analysis on a
`
`commercial product (the PJB-100) rather than the printed publication (Birrell)
`
`relied upon in the Petition; and suggesting that the prior art must articulate the
`
`same “problem” as the challenged patent.
`
`In addition, Creative almost exclusively argues the references individually
`
`rather than disputing that the combinations of references include every element of
`
`the challenged claims, as the Board preliminarily found in the ID.
`
`
`
`
`
`II. GROUND 4: CLAIMS 5 AND 7 WOULD HAVE BEEN
`OBVIOUS OVER BIRRELL IN VIEW OF SEIDENSTICKER.
`
`While claim 1 was found unpatentable during reexamination, the elements of
`
`claim 1 are incorporated into every challenged claim and Creative’s Patent Owner
`
`Response (POR) argues that the subject matter of claim 1 is not obvious over
`
`Birrell and Seidensticker. Creative does not separately argue claims 5 and 7
`
`(which depend from claim 1). Thus, claims 5 and 7 rise or fall based on Creative’s
`
`arguments about claim 1, addressed in Sections II.A and II.B.1
`
`A. A POSA had strong reasons to use Seidensticker’s
`hierarchical menu structure to display Birrell’s
`genre, album, and track data on successive screens.
`
`As explained in the Petition, Birrell discloses a portable audio player with a
`
`“table of contents” that organizes song data hierarchically by genre, album, and
`
`track, and contemplates a user interface in which “user selected portions of the
`
`table of contents” “can be viewed on the display, and the user can select CDs
`
`and/or individual tracks to be played.” Birrell 4:49-5:19. A POSA would have
`
`recognized the need for a user interface compatible with the hierarchically-
`
`organized data and user interface functionality described in Birrell. Petition 63-67;
`
`Bederson ¶¶182-186, ¶¶193-195.
`
`
`1 Creative’s arguments apply to the other challenged claims. Sony’s responses in
`
`this Section II apply globally.
`
`- 2 -
`
`
`
`Seidensticker discloses a user interface for navigating hierarchically-
`
`organized data with different screens corresponding to different levels of the
`
`hierarchy, and, as the Board noted, expressly states that its interface is applicable
`
`to many types of portable electronic devices. ID 16; Seidensticker 2:56-3:7,
`
`4:54-57, 6:24-7:16, 10:21-35, 22:32-35; Petition 65-66; Bederson ¶¶187-192.
`
`Each reference recommends itself to the other: Birrell is a portable audio
`
`player in need of a user interface for hierarchically-organized music, and
`
`Seidensticker provides a hierarchical user interface for portable electronic devices.
`
`A POSA would have recognized that Seidensticker’s interface was directly
`
`applicable to display of Birrell’s data and provided a simple, predictable
`
`improvement of Birrell. Petition 66-70; Bederson ¶¶193-99; ID 16-17 (crediting
`
`Sony’s expert regarding predictability of combination).
`
`The combination is the epitome of obviousness. KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 424 (2007) (“The proper question … was whether a pedal
`
`designer of ordinary skill, facing the wide range of needs created by developments
`
`in the field … would have seen a benefit to upgrading Asano with a sensor.”);
`
`Paice LLC v. Ford Motor Co., 2017 WL 1422490, *6 (Fed. Cir. 2017) (affirming
`
`PTAB’s obviousness finding: “both references involved the [same] problems …
`
`[one] disclosed a potential solution, and there is evidence suggesting that [its]
`
`solution was relatively simple to implement. That is enough.”).
`
`- 3 -
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`
`
`1.
`
`Because the Petition relies on obviousness
`(not inherency), the existence of other ways
`to display music data is legally irrelevant.
`
`Creative argues repeatedly that because Birrell’s data can be displayed
`
`without practicing claim 1, Birrell does not “inherently” disclose the elements of
`
`that claim.2 Creative goes on to argue that such other possibilities defeat
`
`obviousness unless Sony demonstrates that Seidensticker’s interface is more
`
`desirable than “alternative methods, for use with Birrell.” POR 15.
`
`
`2 E.g., POR 9 (“Such a relationship is 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.”), 10 (“Alternatively … one could simply step through the various
`
`genres while simultaneously displaying their associated CDs.”), 11 (“[T]he PJB-
`
`100 … provides another example of how to implement Birrell’s table of contents in
`
`a single screen.”), 13 (“Because there were other ways of displaying Birrell’s three
`
`level table of contents, Birrell does not inherently disclose this limitation.”), 6-7,
`
`15-17, 30-31.
`
`- 4 -
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`
`
`Creative’s argument contradicts black-letter law. Ground 4 is based on
`
`obviousness. There is no “require[ment] that a particular combination must be the
`
`preferred, or the most desirable, combination described in the prior art in order to
`
`provide motivation.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
`
`A fortiori, the combination need not be the only possibility. The question “is
`
`whether there is something in the prior art as a whole to suggest the desirability,
`
`and thus the obviousness, of making the combination.” Id. Here, the reasons for
`
`incorporating Seidensticker’s hierarchical interface to display Birrell’s hierarchical
`
`data are compelling. See supra Section II.A; Petition 66-70; Bederson ¶¶193-99.
`
`2.
`
`The PJB-100 is legally irrelevant.
`
`As noted above, Creative argues that the PJB-100 shows it is possible to
`
`display Birrell’s data without using Seidensticker’s interface (i.e., without the
`
`claimed three screens). See supra note 2; POR 11. As explained above, that
`
`possibility is legally irrelevant. In re Fulton, 391 F.3d at 1200.
`
`Creative also argues that the PJB-100 is the commercial embodiment of
`
`Birrell and therefore should drive how a POSA “would have interpreted Birrell.”
`
`POR 23-28, 33-34. That assertion is logically flawed and legally incorrect.
`
`- 5 -
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`
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`The PJB-100 is not a part of any instituted Ground, nor could it be since IPR
`
`proceedings are limited to patents and printed publications. 35 U.S.C. § 311(b).
`
`Further, the Board has held that it is improper to “interpret” prior art patents based
`
`on commercial embodiments. In Ex parte Gu, 2016 WL 552385 (PTAB 2016), the
`
`applicant argued that a prior art patent should be interpreted based on a related
`
`commercial product. Id. at *3. The PTAB disagreed, holding that the product was
`
`irrelevant to the disclosure of the patent, which described functionality apparently
`
`not present in the product. Id. Creative’s argument is identical to that rejected by
`
`the PTAB in Ex parte Gu.
`
`Moreover, as the Board correctly observed in the ID, whether Birrell itself
`
`discloses a particular feature is irrelevant, since the question is what the
`
`combination of references discloses. ID 15.
`
`3.
`
`As a matter of law, the prior art need not articulate the
`same “problem” as the ’433 patent, but in any event the
`alleged “problem” was known and had already been solved.
`
`Creative criticizes the Petition and Sony’s expert Dr. Bederson for “not
`
`express[ly] identifying the ‘problems’ addressed by the ’433 patent or how the
`
`patent ‘solves’ those problems,” implying that failing to do so negates obviousness.
`
`POR 28-32. The Supreme Court explained in KSR that this analysis is legal error.
`
`- 6 -
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`
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`KSR, 550 U.S. at 420 (it was “error” to “look only to the problem the patentee was
`
`trying to solve” because “any need or problem3 known in the field of endeavor at
`
`the time of invention and addressed by the patent can provide a reason for
`
`combining the elements in the manner claimed”).4 The need (expressed in Birrell)
`
`for an interface to display hierarchical data is a strong “reason” to combine, as is
`
`the teaching (expressed in Seidensticker) of a hierarchical interface for portable
`
`electronic devices.
`
`Indeed, Seidensticker addresses the same problem as the ’433 patent
`
`(efficient navigation of large amounts of information on a portable device’s small
`
`screen) and proposes the same solution (a hierarchical menu structure).
`
`Seidensticker Abstract (“The user interface includes a display screen having only a
`
`few rows”), 2:17-22 (noting importance of efficient searching to reach a desired
`
`item), 2:56-3:7 (explaining presentation of data in hierarchical directory).
`
`
`3 Emphasis added unless otherwise indicated.
`
`4 Creative’s cases (POR 28-29) are not to the contrary. In Novartis the prior art
`
`identified no reason to add an antioxidant. 611 F. App’x at 995-96. In Mintz, the
`
`district court relied on a supposed “common sense view” without identifying
`
`concrete reasons for making the proposed combination. 679 F.3d at 1377.
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`- 7 -
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`
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`Moreover, prior art standards cited by Creative’s own expert, Mr. Bear,
`
`confirm that the alleged problem—and solution—of the ’433 patent were known.
`
`Mr. Bear cites “user experience design” standards including ISO 13407:1999(E)
`
`(“ISO13407”, Ex. 1019). Ex. 2014 (“Bear”) ¶28. At deposition, Mr. Bear testified
`
`that ISO standards were published (ISO13407, from 1999, was published before
`
`the filing of the ’433 patent) and established “best practices” for user interface
`
`design. Bear Depo. 47:21-48:20, 53:20-54:20.
`
`ISO13407 in turn references ISO 9241, which “more fully” describes
`
`“technical” issues related to user interface design. ISO13407 at 1. ISO13407
`
`points to ISO 9241 for design solutions, and includes parts of ISO 9241 in a list
`
`(“annex A”) of “relevant standards.” Id. 8, 15. That list includes part of ISO 9241
`
`titled “Ergonomic requirements for office work with visual display terminals
`
`(VDTs) – Part 14: Menu dialogues” (“ISO9241-14”, Ex. 1020). Id. 15, 25.
`
`ISO9241-14, cited in ISO13407 from 1999 (Bear Depo. 53:20-54:20), was
`
`published even earlier, in June 1997. ISO9241-14 at i-ii; Ex. 1021; Bederson
`
`Reply ¶4. ISO9241-14 demonstrates that the “problems” of the ’433 patent had all
`
`been identified and solved in the prior art.
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`- 8 -
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`
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`Mr. Bear testified that prior art devices problematically presented a “single
`
`list of tracks,” which required much “time in navigating through the ‘single list’”
`
`to find a song. Bear ¶¶33-34; Bear Depo. 121:13-124:21. Mr. Bear testified that
`
`the ’433 patent solved that problem by subdividing information “into categories,
`
`subcategories, and items in a series of screens, permitting orders of magnitude
`
`fewer items to navigate through than a sequential list,” thus permitting faster
`
`navigation. Bear ¶35, ¶69; Bear Depo. 129:15-130:4.
`
`However, ISO9241-14 had already recommended “not using” interfaces
`
`with long “scrollable lists (sometimes called ‘scrollable menus’)” because they
`
`“would increase search time.” ISO9241-14 at 7. Instead, “it is often necessary to
`
`design a menu structure” like a “hierarchical” menu “and to place options into
`
`groups.” Id. 6. ISO9241-14 also recommends: “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. 7. Genre, album, and artist were
`
`conventional groups for organizing music. Bear Depo. 98:18-101:15. Creative’s
`
`suggestion that the ’433 patent solved an unidentified problem in the prior art is
`
`both legally irrelevant and factually incorrect. Bederson Reply ¶¶3-9.
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`- 9 -
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`4.
`
`None of the alleged “differences” between Birrell and
`Seidensticker would have discouraged a POSA.
`
`Creative argues that “differences” between the references would have
`
`discouraged a POSA from using Seidensticker’s hierarchical interface for Birrell’s
`
`hierarchical data. POR 13, 18-22. Creative improperly treats a POSA as an
`
`“automaton” rather than “a person of ordinary creativity.” KSR, 550 U.S. at 421.
`
`See also MCM Portfolio LLC v. Hewlett-Packard Co., 812 F. 3d 1284, 1294 (Fed.
`
`Cir. 2015) (“The test for obviousness is not whether the features of a secondary
`
`reference may be bodily incorporated into the structure of the primary reference;
`
`nor is it that the claimed invention must be expressly suggested in any one or all of
`
`the references. Rather, the test is what the combined teachings of the references
`
`would have suggested to those of ordinary skill in the art.”).
`
`The alleged “differences” are trivial (or even non-existent); none negate the
`
`strong reasons to combine discussed above. For example, Creative argues that
`
`Birrell and Seidensticker describe devices that “handle entirely different types of
`
`data.” POR 21. To the contrary, as the Board found in rejecting this same
`
`argument at the institution stage, “Seidensticker expressly contemplates that its
`
`hierarchical user interface can be employed on other portable electronic devices.”
`
`ID 16. Creative offers no new argument beyond what the Board already rejected.5
`
`
`5 Creative also never explains why different data types would challenge a POSA.
`
`- 10 -
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`
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`Creative also asserts that Seidensticker “performs no categorization of data”
`
`and that, unlike the ’433 patent, Seidensticker’s hierarchy “does not reflect any
`
`actual relationships between the items reflected in its menu lines.” POR 20. These
`
`assertions are contradicted by Seidensticker, which:
`
`• describes a “menu tree” that can be displayed when a device is “initially
`energized,” including a “Games” option (7:1-9), and describes a Games
`menu including a list of games for selection (12:20-48, FIGs. 6A-6B);
`
`• explains that each screen may correspond to a different level of
`hierarchically-organized data (6:24-57); and
`
`• discloses that a “menu will normally have a title … to identify the menu
`category for each of the items that are listed as options below the title
`line” (10:21-34).
`
`This structure matches exactly what is described in the ’433 patent, as well
`
`as the hierarchical data organization in Birrell (4:49-65), making the combination
`
`with Birrell especially desirable and obvious.
`
`Creative also argues that Seidensticker focuses on lists with few entries,
`
`while Birrell can store many songs. POR 13. To the contrary, Seidensticker
`
`emphasizes that a hierarchical menu enables efficient browsing of “long lists” of
`
`data. Seidensticker 2:20, 18:42.6
`
`
`6 Creative also never explains why different list lengths would challenge a POSA.
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`- 11 -
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`
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`Finally, Creative argues that, based on Birrell’s hierarchical “internal”
`
`organization, a POSA would not pursue such organization in a user interface (as in
`
`Seidensticker). POR 19-21. But as the Supreme Court has explained: “Common
`
`sense teaches … that familiar items may have obvious uses beyond their primary
`
`purposes.” KSR, 550 U.S. at 420. In any event, Birrell does state that the
`
`hierarchically-organized “table of contents … can be viewed on the display” and
`
`that the user can “select audio tracks to be played.” Birrell 4:66-5:19.7
`
`ISO standards, cited by Creative’s own expert, also reinforce overarching
`
`design principles from before the ’433 patent that would have motivated a POSA
`
`as set forth in the Petition regardless of any “differences” between the data types in
`
`Birrell and Seidensticker. The standards tell a POSA, without limitation to any
`
`data type, that “scrollable lists” may be disadvantageous, and “hierarchical” menus
`
`are “often” used when “the number of options is too large” for a single menu.
`
`
`7 It is irrelevant that Birrell does not use the word “menu” (POR 23). Birrell
`
`describes viewing its table of contents on the display (4:66) and then using the
`
`display to “enable[e] the user to select audio tracks to be played.” 5:15-19. The
`
`claimed three “display screens” result from the combination of Birrell and
`
`Seidensticker, which Creative never addresses. See infra Section II.B.
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`- 12 -
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`
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`ISO9241-14 at 6-7. Thus, in view of Mr. Bear’s observation that Birrell’s many
`
`songs would require a “scrollable” list, Bear ¶54, the knowledge from ISO9241-14
`
`that “hierarchical” menus are advisable when scrolling is needed would commend
`
`Seidensticker’s hierarchical structure. Indeed, Seidensticker proposes a
`
`hierarchical menu for just this reason. Seidensticker 2:17-22, 2:56-3:7, 6:24-7:16,
`
`10:21-35.
`
`B. Creative argues the references individually and
`never disputes that the Birrell-Seidensticker
`combination includes every element of claims 5 and 7.
`
`Creative does not dispute that the Petition’s proposed combination of Birrell
`
`and Seidensticker meets every element of claims 5 and 7 (and of claim 1, from
`
`which they depend).8 Creative merely argues that each reference individually lacks
`
`two claim elements. POR 5-14.9
`
`
`8 Creative offers no alternative way of combining them. Bear Depo. 111:12-16.
`
`9 The POR mentions the “combination” twice with no analysis. POR 12 (“Thus,
`
`there is no disclosure in Birrell, alone or in combination with Seidensticker, to use
`
`three screens”), 14 (“Because either reference, alone or in combination, discloses
`
`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 clams are unpatentable.”) (emphasis Creative’s).
`
`- 13 -
`
`
`
`
`
`First, Creative focuses on “tracks accessed according to a hierarchy” in the
`
`preamble of claim 1. POR 5-8.10 Creative appears to argue the construction of this
`
`phrase, but never actually proposes a construction. As best Sony can tell from the
`
`POR (at 5-8), Creative simply argues that in the claimed method a user must be
`
`able to find tracks by navigating a hierarchical interface—which is what claim 1
`
`already says when it describes navigating first, second and third display screens
`
`showing “categories,” “subcategories” and “items.” The Petition includes graphics
`
`showing that this is exactly how the Birrell-Seidensticker combination works.
`
`Petition 67-70; Bederson ¶¶196-99.
`
`That Birrell alone does not describe that functionality is irrelevant because,
`
`as the Board found in the ID after considering an almost identical argument from
`
`Creative, see Patent Owner Preliminary Response (POPR) 41-42, the Petition
`
`“relies on the combined teachings of the references.” ID 15. Creative offers no
`
`argument why the Board should come to a different conclusion now.
`
`
`10 Creative makes no effort to establish that the preamble is limiting.
`
`- 14 -
`
`
`
`Creative also argues that Seidensticker cannot “access” according to a
`
`hierarchy because it only displays text and does not permit the user to access
`
`“anything outside of its own user interface.” POR 7-8 (emphasis Creative’s). But
`
`Seidensticker expressly discloses that its Action button can execute an application
`
`from its hierarchical menu. Seidensticker 9:42-48; Bear Depo. 105:16-22. Thus,
`
`at most, Seidensticker is missing the substitution of a music track for an
`
`application—but the combination plainly has that, see ID 15, a fact Creative does
`
`not contest.
`
`The second element Creative argues is missing from each reference
`
`individually is that the device used in the claimed method be “configured to
`
`present” the first, second and third display screens with, respectively, “categories,”
`
`“subcategories” and “items.” POR 8-9. Again, Creative made the same argument
`
`in the POPR (40-41) and the Board rejected it because it does not address the
`
`Birrell-Seidensticker combination. ID 15.
`
`As shown in the Petition, applying the hierarchical user interface of
`
`Seidensticker to the hierarchically-organized data of Birrell leads to the claimed
`
`series of three screens displaying “categories” (genres), “subcategories” (albums)
`
`and “items” (songs), just as in the ’433 patent’s preferred embodiment.
`
`Petition 67-70; Bederson ¶¶196-99.
`
`- 15 -
`
`
`
`In summary, because Creative does not dispute that the Birrell-Seidensticker
`
`combination satisfies every element of claims 5 and 7 (including the elements of
`
`claim 1), those claims are obvious if a POSA would have had reason to make the
`
`combination. The Board should so find. See Petition; supra Section II.A.
`
`III. GROUND 4: CLAIMS 2 AND 3 WOULD HAVE BEEN
`OBVIOUS OVER BIRRELL IN VIEW OF SEIDENSTICKER.
`
`Claim 1 requires “first,” “second” and “third” display screens, and accessing
`
`at least one track based on a selection in “one” of those screens. Creative argues
`
`that claims 2 and 3 require accessing from the second screen. POR 34-35. Per that
`
`interpretation, Creative questions whether the “third display screen” in the Birrell-
`
`Seidensticker combination would be displayed (per claim 1) if a CD was selected
`
`on the second screen (per claims 2 and 3). POR 35-37.
`
`The Board answered that question in the ID in rejecting the same argument
`
`from Creative’s POPR. Seidensticker has a Back button to ascend the hierarchy
`
`(2:56-3:7, 5:8-36) so a user may navigate to the third screen (per claim 1), then
`
`back to the second screen to make a selection (per claims 2 and 3). ID 15-16;
`
`Petition 70, 7911; Bederson ¶¶218-219. Creative offers no argument why the
`
`Board should reach a different conclusion now.
`
`
`11 Page 70 addresses the combination generally for all claims. Page 79 addresses
`
`claim 7, which expressly requires this functionality.
`
`- 16 -
`
`
`
`Creative also questions how the Birrell-Seidensticker combination would
`
`have allowed a user to either play a CD on the second screen or advance to the
`
`third screen to view that CD’s tracks. POR 37-39. Birrell describes that its
`
`interface allows a user to “select CDs and/or individual tracks to be played” and
`
`“added to a ‘play list.’” Birrell 4:66-5:3. Thus, the Petition explained that the
`
`Birrell-Seidensticker combination would allow the user to select a CD in the
`
`second screen or advance to the third screen to select individual songs.
`
`Petition 66-70, 76-78; Bederson ¶¶196-99, ¶¶209-214.
`
`Affording a mechanism (e.g., one or more buttons) to permit both choices
`
`dictated by Birrell is a trivial implementation detail, well within a POSA’s skill.
`
`Bederson Reply ¶¶13-15. Separate buttons could be provided, or the same button
`
`(e.g., the Action button of Seidensticker) could be configured for both purposes.
`
`Id. ¶14. In fact, Seidensticker explains how to use a limited number of buttons for
`
`a large number of operations. Seidensticker 19:50-21:13, 22:27-35. For instance,
`
`a user may trigger one operation by pressing a button and a different operation by
`
`pressing that same button for “longer than a predetermined time interval.” Id.
`
`12:49-13:59. A POSA would have recognized that Seidensticker’s different
`
`lengths of button presses would have been one option (among others) to select a
`
`subcategory (e.g., to trigger playback of an album) or navigate to the next
`
`hierarchical level (e.g., to view, on a third display screen, the album’s tracks).
`
`- 17 -
`
`
`
`Bederson Reply ¶15; KSR, 550 U.S. at 420 (“Common sense teaches … that
`
`familiar items may have obvious uses beyond their primary purposes.”).
`
`IV. GROUNDS 5-6: CLAIMS 19, 21, 23, 25 AND 27 WOULD HAVE
`BEEN OBVIOUS OVER BIRRELL AND SEIDENSTICKER
`IN VIEW OF PROEHL (AND IN CERTAIN CASES JOHNSON).
`
`The addition of Proehl to the Birrell-Seidensticker combination, for claims
`
`19, 21 and 25, adds navigation by “genre,” “art
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