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`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`March 16, 2016
`
`I
`
`THIS IS TO CERTIFY THAT ANNEXED IS A TRUE COPY FROM THE
`
`RECORDS OF THIS OFFICE OF THE FILE WRAPPER AND CONTENTS
`
`OF:
`
`APPLICATION NUMBER: 95/001,274
`
`FILING DATE: December 01, 2009
`
`
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`‘_ GQMVQ A;/=\,\Cg
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`T. LAWRENCE
`
`Certifying Officer
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`Electronic Patent Application Fee Transmittal
`
`—
`
`Title of Invention:
`
`AUTOMATIC HIERARCHICAL CATEGORIZATION OF MUSIC BY METADATA
`
`First Named Inventor/Applicant Name:
`
`RON GOODMAN
`
`Filed as Large Entity
`
`inter partes reexam Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`Basic Filing:
`
`
`
`SONY Exhibit 1004 - Page 2
`
`

`
` S“:-S1-|;(t$a)| in
`
`Total in USD (S)
`
`Miscellaneous:
`
`8800
`
`SONY Exhibit 1004 - Page 3
`
`

`
`Electronic Acknowledgement Receipt
`
`Application Number:
`
`International Application Number:
`
`6552680
`
`95001 274
`
`Confirmation Number:
`
`6990
`
`Title of Invention:
`
`AUTOMATIC HIERARCHICAL CATEGORIZATION OF MUSIC BY METADATA
`
`First Named Inventor/Applicant Name:
`
`RON GOODMAN
`
`Customer Number:
`
`27498
`
`David A. Jakopin
`
`01-DEC-2009
`
`20:49:59
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`Application Type:
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`RAM confirmation Number
`
`Deposit Account
`
`Authorized User
`
`File Listing:
`
`Document
`Number
`
`Document Description $8800
`
`Deposit Account
`
`7081
`
`033975
`
`File Size(Bytes)/
`Message Digest
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`SONY Exhibit 1004 - Page 4
`
`

`
`016788-0000004-1.pdl‘
`
`181704
`
`a6Ua2cdfca547973e5ea428d5UU4 Ic6I 7bb
`e955b
`
`Multipart Description/PDF files in .zip description
`
`Receipt ofOrigina| Inter Partes Reexam Request
`
`Reexam - Info Disclosure Statement Filed by 3rd Party
`
`Warnings:
`
`Information:
`
`Warnings:
`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`Reexam Certificate of Service
`
`Receipt of Original Inter Partes Reexam
`Request
`
`_
`_
`_
`Receipt of Original Inter Partes Reexam
`Request
`
`1100530
`
`016788-1.pdf
`
`a7537776222bf6fc5fe9d5e04da734cb3 1 al
`4353
`
`_
`_
`_
`Receipt of Original Inter Partes Reexam
`Request
`
`1434886
`
`O16788—2.pdf
`
`059f9Zb96442831933a492f92b0eZe880e1
`9c7d8
`
`_
`_
`_
`Receipt of Original Inter Partes Reexam
`Request
`
`1364618
`
`016788-3.pdf
`
`071aa621befe15d64f923101:c2dd0e5d5b
`1d92b
`
`_
`_
`_
`Receipt of Original Inter Partes Reexam
`Request
`
`832486
`
`016788-4.pdf
`
`7fba9f6f05bCl)209981673Cfb4219d3l'f5c7e
`3ed
`
`_
`_
`_
`Receipt of Original Inter Partes Reexam
`Request
`
`1135259
`
`016788-5.pdf
`
`b0:bb256b6a7a856ed047a5747:db892a1
`e6d40b
`
`SONY Exhibit 1004 - Page 5
`
`

`
`Information:
`
`Fee Worksheet (PTO-875)
`
`fee-info.pdf
`
`
`
`a6e7bf326c9dc6540a464a0631752c653f80
`913C
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`SONY Exhibit 1004 - Page 6
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of:
`
`Ron Goodman et al.
`
`Assignee:
`
`Creative Technology Ltd., Singapore.
`
`Utility Appl. No.: 09/755,723
`
`Patent No:
`
`6,928,433
`
`Utility Appl. Filed: Jan. 5, 2001
`
`Issue Date:
`
`Aug. 9, 2005
`
`For: AUTOMATIC HIERARCHICAL CATEGORIZATION OF MUSIC BY METADATA
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION
`
`Pursuant to 35 U.S.C. §§31 1-318 and 37 C.F.R.§1.913 and §1.915, Archos, S.A.,
`
`respectfully request Inter Partes Reexamination of claims 1-16 of United States Patent
`
`No. 6,928,433 (“the ’433 patent”), titled “AUTOMATIC HIERARCHICAL
`
`CATEGORIZATION OF MUSIC BY METADATA,” issued to Ron Goodman et al.
`
`(Appendix A). This Request for Inter Partes Reexamination (“Request”) presents
`
`substantial new questions of patentability based on prior art patents not previously
`
`considered by the Patent and Trademark Office. These prior art references either fully
`
`anticipate or, singly or in combination, render obvious all claims (1 -16) of the ‘433
`
`patent. Accordingly, Requesters respectfully request that the Office order an Inter
`
`Panes reexamination of the ‘433 patent under 35 U.S.C. § 313 and further issue a
`
`certificate under 35 U.S.C. § 316 canceling claims 1-16.
`
`SONY Exhibit 1004 - Page 7
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................... ..5
`
`I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY ....................................... ..5
`
`II. THE ‘433 PATENT AND ITS PROSECUTION HISTORY ........................................ ..6
`
`A. Background of the ‘433 patent ............................................................................ ..6
`
`B. Prosecution History .............................................................................................. ..8
`
`C. Summary of the Claims ........................................................................................ ..9
`
`III. LEGAL PRINCIPLES .............................................................................................. ..1O
`
`A. Evidentiary Standard in Reexamination ............................................................ ..1O
`
`B. Substantial New Question of Patentability ........................................................ ..11
`
`C. Use of Previously Cited/Considered Art as a Basis for a Substantial New
`Question of Patentability ................................................................................... ..12
`
`D. Claims Are to be Given Their Broadest Reasonable Interpretation During
`Reexamination Proceedings ............................................................................. ..13
`
`E. Anticipation ....................................................................................................... ..14
`
`F. Obviousness ..................................................................................................... ..15
`
`IV. PERTINENCE OF REFERENCES CITED IN THIS REQUEST ............................. ..17
`
`A. U.S. Patent No. 5,739,451 (“the ’451 patent”) ................................................... ..18
`
`B. U.S. Patent No. 6,976,229 (“the ’229 patent”) ................................................... ..2O
`
`C. U.S. Patent No. 6,760,721 (“the ‘721 patent”) ................................................... ..2O
`
`D. U.S. Patent Appl. Publ. No. 2002/0045960 (“the Phillips publication”) .............. ..22
`
`V. STATEMENT POINTING OUT EACH SUBSTANTIAL NEW QUESTION OF
`PATENTABILITY BASED ON PRIOR PATENTS AND PUBLICATIONS ............... ..24
`
`A. Claims 1, 2, 4 and 6-16 are unpatentable under 35 U.S.C. §102(b) over the ‘451
`patent ................................................................................................................ ..24
`
`B. Claims 1-16 are unpatentable under 35 U.S.C. §103(a) over the ‘451 patent .... ..33
`
`C. Claims 1-16 are unpatentable under §103(a) over the ‘451 patent in view of the
`‘229 patent ........................................................................................................ ..35
`
`D. Claims 1-16 are unpatentable under 35 U.S.C. §102(e) over the ‘721 patent .....44
`
`E. Claims 1-16 are unpatentable under 35 U.S.C. §103(a) over the ‘721 patent .... ..52
`
`F. Claims 1-16 are unpatentable under 35 U.S.C. §102(e) over the Phillips
`publication ......................................................................................................... ..53
`
`G. Claims 1-16 are unpatentable under 35 U.S.C. §103(a) over the Phillips
`publication ......................................................................................................... ..65
`
`SONY Exhibit 1004 - Page 8
`
`

`
`H. Claims 1-16 are unpatentable under §103(a) over the ‘451 patent in view of the
`‘721 patent ........................................................................................................ ..65
`
`I. Claims 1-16 are unpatentable under §103(a) over the ‘721 patent in view of the
`Phillips publication ............................................................................................. ..83
`
`J. Claims 1-16 are unpatentable under §103(a) over the ‘451 patent in view of the
`Phillips publication ........................................................................................... ..104
`
`VI. MISCELLANEOUS REQUIREMENTS OF 37 C.F.R. § 1.915 .............................. ..127
`
`Vll. CONCLUSION ..................................................................................................... ..128
`
`3
`
`SONY Exhibit 1004 - Page 9
`
`

`
`APPENDICES
`
`APPENDiX A
`
`U. 8. Patent No. 6,928,433.
`
`APPENDIX B
`
`U.S. Patent No. 5,739,451.
`
`APPENDIX C
`
`U.S. Patent No. 6,976,229.
`
`APPENDIX D
`
`U.S. Patent No. 6,760,721.
`
`APPENDIX E
`
`U.S. Patent Application Publication No. 20020045960.
`
`SONY Exhibit 1004 - Page 10
`
`

`
`INTRODUCTION
`
`The ’433 patent issued on Aug. 9, 2005, from an application filed on January 5,
`
`2001, and is assigned to Creative Technology Ltd., Singapore (hereinafter “Creative”).
`
`The ‘433 patent is directed to a method of selecting tracks for playback, or other
`
`operations, on a portable media player.
`
`I.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`As discussed in more detail in Section V below, the prior art references identified
`
`herein, all of which were not considered during the original examination of the ‘433
`
`patent, present substantial new questions of patentability of claims 1-16 of the ‘433
`
`patent. More particularly, it is respectfully submitted that reexamination should be
`
`ordered to consider whether:
`
`0
`
`Independent claim 1 and dependent claims 2, 4, and 6-16 are anticipated by
`
`U.S. Patent No. 5,739,451 (Appendix B).
`
`0
`
`Independent claim 1 and dependent claims 2-16 are obvious in view of U.S.
`
`Patent No. 5,739,451.
`
`a
`
`independent claim 1 and dependent claims 2-16 are unpatentable under
`
`§103(a) over U.S. Patent No. 5,739,451 in view of U.S. Patent No. 6,976,229
`
`(Appendix C).
`
`0
`
`Independent claim 1 and dependent claims 2-16 are anticipated by U.S.
`
`Patent No. 6,760,721 (Appendix D).
`
`0
`
`Independent claim 1 and dependent claims 2-16 are obvious in view of U.S.
`
`Patent No. 6,760,721.
`
`a
`
`Independent claim 1 and dependent claims 2-16 are anticipated by U.S.
`
`Patent Application Publication No. 2002/0045960 (Appendix E).
`
`o
`
`Independent claim 1 and dependent claims 2-16 are obvious in view of U.S.
`
`Patent Application Publication No. 2002/0045960.
`
`SONY Exhibit 1004 - Page 11
`
`

`
`o
`
`Independent claim 1 and dependent claims 2-16 are unpatentable under
`
`§103(a) over U.S. Patent No. 5,739,451 in view of U.S. Patent No. 6,760,721.
`
`o
`
`Independent claim 1 and dependent claims 2-16 are unpatentable under
`
`§103(a) over U.S. Patent No. 6,760,721 in view of U.S. Patent Application
`
`Publication No. 2002/0045960.
`
`o
`
`Independent claim 1 and dependent claims 2-16 are unpatentable under
`
`§103(a) over U.S. Patent No. 5,739,451 in view of U.S. Patent Application
`
`Publication No. 2002/0045960.
`
`II.
`
`THE ‘433 PATENT AND ITS PROSECUTION HISTORY
`
`A. Background of the ‘433 patent
`
`The background section of the ‘433 patent provides an overview from the
`
`prior art of the trend in portable music players to larger storage for tracks and
`
`smaller sized players.
`
`It is pointed out that along with the smaller size of the
`
`players, the user interface is also smaller — smaller displays and few
`
`pushbuttons. This limited user interface is perceived by Applicants as inefficient
`
`and frustrating for a user attempting to navigate through the user interface and
`
`select among hundreds of songs.
`
`A need was identified by Applicants for improved techniques for
`
`organizing tracks in wa-ys that are optimized for these portable music players.
`
`Furthermore, a need was identified for a user interface suitable for these small
`
`portable music players.
`
`In essence, the ‘433 patent is concerned with a method of selecting one or more
`
`tracks from many tracks stored in the memory of a portable media player. The portable
`
`media player is described as having sequential first, second and third display screens
`
`on a display of the player, and a track access hierarchy including many categories,
`
`subcategories and items. Figure 4 from the ‘433 patent is reproduced below, showing
`
`an example of the hierarchical category structure.
`
`SONY Exhibit 1004 - Page 12
`
`

`
`[:}«~«—|~——«Conzen2
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`
`Part of Figure 10 is reproduced below to show an example of a display screen, showing
`
`top level categories of a music library.
`
`‘Tn
`
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`
`—
`
`What the Applicants argued as the feature that resulted in allowance of the ‘433
`
`patent was displaying the categories or subcategories in a display screen. For
`
`example, referring to claim 1 of the ‘433 patent, the method of selecting a track
`
`includes:
`
`a) selecting a category in the first display screen of the portable media player;
`
`b) displaying the subcategories belonging to the selected category in a listing
`
`SONY Exhibit 1004 - Page 13
`
`

`
`presented in the second display screen;
`
`c) selecting a subcategory in the second display screen;
`
`d) displaying the items belonging to the selected subcategory in a listing presented
`
`in the third display screen; and
`
`e) accessing at least one track based on a selection made in one of the display
`screens.
`
`B. Prosecution History
`
`The ‘433 patent application was filed on January 5, 2001 and given Application
`
`Serial No. 09/755,723. The ‘433 patent application, as originally filed, contained ten
`
`claims of which claims 1, 5, 6, 9 and 10 were independent claims. However, these
`
`original claims were directed to filing audio tracks stored in a portable digital music
`
`player, and not to a method of selecting one or more tracks from many tracks stored in
`
`the memory of a portable media player, as the allowed claims are directed.
`
`In a first Office Action, mailed January 15, 2003, all of the claims were rejected
`
`as being anticipated by United States patent no. 5,670,730 to Grewe et al. Applicants
`
`responded on May 15, 2003 with an amendment to the claims. A final Office Action was
`
`mailed on July 29, 2003, maintaining the rejection of all claims.
`
`Applicants responded to the final Office Action with a further amendment and a
`
`request for continued examination on February 3, 2004.
`
`In this amendment, Applicants
`
`included a new independent claim to a method of displaying media information on a
`
`display screen. The examiner viewed this new independent claim as a separate
`
`invention and issued a restriction requirement. The Applicants responded on April 30,
`
`2004 by selecting the invention of the new independent claim. Furthermore, in their
`
`response Applicants replaced the elected claims with a new set of claims directed to a
`
`method of selecting at least one track from a plurality of tracks stored in a computer
`
`readable medium of a portable media player. Applicants asserted that the new set of
`
`claims corresponds to the elected invention. Furthermore, Applicants asserted that the
`
`new set of claims are “patentable over the art of record for at least the reason that
`
`SONY Exhibit 1004 - Page 14
`
`

`
`Grewe doesn't teach or suggest displaying categories or subcategories in a display
`
`screen.” See Amendment filed on April 30, 2004, page 8.
`
`The Examiner allowed the application on June 9, 2004 without providing any
`
`reason for allowance. Applicants filed an amendment after allowance under Rule 312
`
`on July 27, 2004. The amendment added some dependent claims and made changes
`
`to the existing claims, including changes to the independent claim - in order to clarify the
`
`invention, according to the Applicants. Furthermore, Applicants again asserted that the
`
`claims are “patentable over the art of record for at least the reason that Grewe doesn't
`
`teach or suggest displaying categories or subcategories in a display screen.” See
`
`Amendment filed on July 27, 2004, page 6. The examiner entered the amendment and
`
`allowed the application without further comment; the patent issued on August 9, 2005.
`
`Note that a continuation application, U.S. Application No. 11/033,465, is pending
`
`as of the filing date of this Request for Reexamination. The continuation application
`
`received a final rejection on April 15, 2009 and Applicants filed a Request for Continued
`
`Examination on October 15, 2009. A non-final Office Action was mailed on November
`
`24, 2009 rejecting all pending claims. The file history of the continuation application is
`
`relevant to this Request for Reexamination, since the ‘721 patent is used in a 102(e)
`
`rejection of claims that are similar in important respects to those of the ‘433 patent.
`
`C. Summary of the Claims
`
`The ‘433 patent has 16 claims, of which claim 1
`
`is independent. The Applicants’
`
`argument for patentability was that the art of record during examination failed to “teach
`
`or suggest displaying categories or subcategories in a display screen.” See
`
`Amendment after Notice of Allowance filed on July 27, 2004, page 6.
`
`independent claim 1 of the ‘433 patent requires (emphasis added on the concept
`
`argued by Applicants to gain allowance of the claim):
`
`1. A method of selecting at least one track from a
`plurality of tracks stored in a computer-readable medium of a
`portable media player configured to present sequentially a
`first, second, and third display screen on the display of the
`media player, the plurality of tracks accessed according to a
`
`9
`
`SONY Exhibit 1004 - Page 15
`
`

`
`hierarchy, the hierarchy having a plurality of categories,
`subcategories, and items respectively in a first, second, find
`third level of the hierarchy, the method comprising:
`selecting a category in the first display screen of the
`portable media player;
`displaying the subcategories belonging to the
`selected category in a listing presented in the second display
`screen;
`selecting a subcategory in the second display screen;
`displaying the items belonging to the selected
`subcategory in a listing presented in the third display screen;
`and
`
`accessing at least one track based on a selection
`made in one of the display screens.
`
`Claims 2-16 depend from independent claim 1 and are directed to
`
`implementation features. Applicants provided no further arguments for the patentability
`
`of the dependent claims beyond the argument that the art of record during examination
`
`failed to “teach or suggest displaying categories or subcategories in a display screen.”
`
`See Id.
`
`As set forth more fully below, the subject matter of all claims 1-16 was well
`
`known before the filing date of the ‘433 patent.
`
`III.
`
`LEGAL PRINCIPLES
`
`A. Evidentiary Standard in Reexamination
`
`The standard for establishing unpatentability of a claim in a reexamination is by
`
`the preponderance of the evidence, which is the standard for the normal examination of
`
`patent applications. The higher standard of “clear and convincing evidence” used in
`
`litigation to establish invalidity does not apply in reexaminations before the Patent &
`
`Trademark Office (PTO). Likewise, the statutory presumption of validity under 35
`
`U.S.C. §282 does not apply in reexaminations. See In re Etter, 756 F.2d 852, 225
`
`USPQ 1 (Fed. Cir. 1985); see also MPEP §2258.l.G.
`
`10
`
`SONY Exhibit 1004 - Page 16
`
`

`
`B. Substantial New Question of Patentability
`
`35 U.S.C. §312 requires the PTO to determine whether a “substantial new
`
`question of patentability” is raised by a request for inter partes reexamination. And
`
`§313 requires the PTO to order the inter partes reexamination if it is determined that a
`
`“substantial new question of patentability” is raised by the request.
`
`This criterion for determining whether a “substantial new question of patentability”
`
`is raised by a request is discussed in MPEP §2642:
`
`If the prior art patents and printed publications raise a substantial question
`of patentability of at least one claim of the patent, then a substantial _n_e;v_v
`question of patentability is present, unless the same question of
`patentability has already been decided by (A) a final holding of invalidity,
`after all appeals, or (B) by the Office in a previous examination or pending
`reexamination of the patent. A "previous examination" of the patent is: (A)
`the original examination of the application which matured into the patent;
`(B) the examination of the patent in a reissue application that has resulted
`in a reissue of the patent; or (C) the examination of the patent in an earlier
`pending or concluded reexamination.
`
`A prior art patent or printed publication raises a substantial question of
`
`patentability where there is a substantial likelihood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whether or not
`
`the claim is patentable.
`
`if the prior art patents and/or publications would be considered
`
`important, then the examiner should find "a substantial new question of patentability"
`
`unless the same question of patentability has already been decided by the Office in a
`
`previous examination. See In re Swanson, 540 F.3d 1368, 1381, 88 U.S.P.Q.2d 1196
`
`(Fed. Cir. 2008) (holding that consideration of a reference for anticipation raised a
`
`substantial new question of patentability even though that reference had been
`
`considered as a secondary reference during the original prosecution).
`
`Accordingly, for "a substantial new question of patentability" to be present, it is
`
`only necessary that:
`
`(A) The prior art patents and/or printed publications raise a substantial question
`
`11
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`SONY Exhibit 1004 - Page 17
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`of patentability regarding atleast one claim, i.e., the teaching of the prior art patents and
`
`printed publications is such that a reasonable examiner would consider the teaching to
`
`be important in deciding whether or not the claim is patentable; and
`
`(B) The same question of patentability as to the claim has not been decided by
`
`the Office in a previous examination or pending reexamination of the patent.
`
`it is not necessary that a "prima facie" case of unpatentability exist as to the
`
`claim in order for "a substantial new question of patentability" to be present as to the
`
`claim. Thus, "a substantial new question of patentability" as to a patent claim could be
`
`present even if the examiner would not necessarily reject the claim as either anticipated
`
`by, or obvious in view of, the prior art patents or printed publications. The difference
`
`between "a substantial new question of patentability" and a "prima facie" case of
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`unpatentability is important. See, generally, In re Etter, 756 F.2d 852, 857 n.5, 225
`
`USPQ 1, 4 n.5 (Fed. Cir. 1985) (emphasis in original).
`
`Thus, in order to raise a “substantial new question of patentability,” it is not
`
`necessary for the requester to establish a complete case of unpatentability for all the
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`claims.
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`Instead, the request only need meet the much lower threshold of raising a
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`question that “a reasonable examiner would consider the prior art patent or printed
`
`publication important in deciding whether or not the claim is patentable.” Id. (emphasis
`
`in original).
`
`C. Use of Previously Cited/Considered Art as a Basis for a Substantial New
`
`Question of Patentability
`
`The Federal Circuit has made it clear that even where the Examiner considered
`
`all of the relevant prior art, the claims canstill be invalid in light of that art.
`
`In re
`
`Swanson, 540 F.3d at 1380-81 (analyzing 2002 amendment to 35 U.S.C. §303).
`
`Substantial new questions of patentability can be based upon art that has been cited
`
`and considered in the patent at issue. As discussed in Swanson, on November 2, 2002,
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`Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act
`
`revised the reexamination statute by adding the following new last sentence to 35
`
`12
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`SONY Exhibit 1004 - Page 18
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`

`
`U.S.C. 303(a) and 312(a): “The existence of a substantial new question of patentability
`
`is not precluded by the fact that a patent or printed publication was previously cited by
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`or to the Office or considered by the Office."
`
`Accordingly, as discussed in MPEP §2642:
`
`In a decision to order reexamination made on or after November 2, 2002,
`reliance on old art does not necessarily preclude the existence of a
`substantial new question of patentability that is based exclusively on that
`old art.
`Determinations on whether a substantial new question of
`patentability exists in such an instance shall be based upon a fact-specific
`inquiry done on a case-by-case basis.
`
`D. Claims Are to be Given Their Broadest Reasonable Interpretation During
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`Reexamination Proceedings
`
`The PTO is required by statute to conduct reexamination proceedings under the
`
`same substantive standards as for original patent applications, per 35 U.S.C. § 314.
`
`See also In re Am. Academy of Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
`
`2004). Thus, in reexamination, the PTO is obligated to use the broadest reasonable
`
`interpretation possible for the patent claims, and any proposed amended claims, during
`
`examination.
`
`importantly, in In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir.
`
`1984), the Federal Circuit held that the “broadest reasonable interpretation” standard
`
`governing original examination practice also governs reexamination proceedings.
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`Thus, the claims of the ‘433 patent subject to this Request must be construed
`
`with the foregoing principles of claim construction properly applied.
`
`By filing this Request, Requestors are attempting to follow the applicable
`
`standards and are not admitting and/or acquiescing as to the correctness of the
`
`interpretation of any claim term. Requestors specifically reserve the right to challenge
`
`any claim construction proffered by Creative in reexamination or litigation.
`
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`SONY Exhibit 1004 - Page 19
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`E. Anticipation
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`Invalidity based on a lack of novelty (“anticipation”) requires that the same
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`invention, including each element and limitation of the claims, was disclosed in a prior
`
`art reference, or was known or used by others before it was invented by the patentee, or
`
`was in public use or sale in this country, more than one year before the patent
`
`application’s filing date. See Hoover Group, Inc. v. Custom Metalcraft, lnc., 66 F.3d
`
`299, 302, 36 USPQ2d 1101 (Fed. Cir. 1995). Novelty of a claim is judged by a simple
`
`comparison of the literal language of the claim with a single piece of prior art. See
`
`Lindemann Maschinenfabrik v. Am. Hoist& Derrick Co., 730 F.2d 1452, 1458, 221
`
`USPQ 481 (Fed. Cir. 1984). Anticipation requires just a single, complete disclosure of
`
`the invention in the reference.
`
`If one complete example anticipates, the disclosure in
`
`the reference need not draw attention to or agree with the anticipating example. See
`
`Titanium Metals Corp. v. Banner, 778 F.2d 775, 781-782, 227 USPQ2d 773 (Fed. Cir.
`
`1985) (one graph data point out of fifteen from the prior art meets the terms of the
`
`claims at issue, thereby anticipating them).
`
`A reference anticipates a claim if it discloses the claimed invention “such that a
`
`skilled artisan could take its teachings in combination with his own knowledge of the
`
`particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152,
`
`36 USPQ2d 1697 (Fed. Cir. 1995) (citing In re LeGrice, 301 F.2d 929, 936, 133 USPQ
`
`365, 372 (CCPA 1962)) (emphasis in original). See also In re Donohue, 766 F.2d 531,
`
`533, 226 USPQ 619, 621 (Fed. Cir. 1985).
`
`A claim lacks novelty, and is thus not valid under 35 U.S.C. § 102, if every
`
`feature of that claim is found, either expressly or under principles of inherency, in a
`
`single prior art reference or document. See Elmer v. ICC Fabricating, lnc., 67 F.3d
`
`1571, 1571, 36 USPQ2d 1417 (Fed. Cir. 1995); Tyler Refrigeration v. Kysorlndus.
`
`Corp., 777 F.2d 687, 689, 227 USPQ 845 (Fed. Cir. 1985).
`
`it is well established that the discovery of a new property or use of an old product
`
`does not render the old product patentable. See Continental Can Co. U.S.A. v.
`
`Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) (“To
`
`14
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`SONY Exhibit 1004 - Page 20
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`

`
`serve as an anticipation when the reference is silent about the asserted inherent
`
`characteristic, such gap in the reference may be filled with recourse to extrinsic
`
`evidence.”); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
`
`Titanium Metals, 778 F.2d at 780-82. This principle of filling the “gap” by showing
`
`inherent properties of an anticipating reference through extrinsic evidence also does not
`
`offend the requirement that reexamination be based on patents or printed publications.
`
`“Affidavits or declarations or other written evidence which explain the contents or
`
`pertinent dates of prior patents or printed publications in more detail may be considered
`
`in reexamination..." MPEP § 2258, referenced by MPEP § 2658.
`
`F. Obviousness
`
`A claimed invention is unpatentable if the differences between it and the prior art
`
`“are such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a);
`
`Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). The ultimate determination of
`
`whether an invention is or is not obvious is a legal conclusion based on underlying
`
`factual inquiries including: “(1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art; (3) the differences between the claimed invention and the prior
`
`art; and (4) objective evidence of nonobviousness.” Miles Labs., Inc. v. Shandon, lnc.,
`
`997 F.2d 870, 877 (Fed. Cir. 1993). See also Graham, 383 U.S. at 17-18.
`
`The recent U.S. Supreme Court decision in KSFi International Co. v. Teleflex
`
`lnc., etal., 127 S.Ct. 1727 at 1739 (2007) (“KSR”), reaffirmed Graham, but at the same
`
`time held that a claimed invention can be obvious even if there is no teaching,
`
`suggestion, or motivation for combining the prior art to produce that invention.
`
`in short, KSFi holds that patents which are based on new combinations of
`
`elements or components already known in a technical field may be found to be obvious.
`
`See, generally, KSH, 127 S.Ct. 1727. Specifically, the Court in KSF? has outright
`
`rejected a rigid application of the “teaching, suggestion, or motivation [to combine]” test.
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`Id., at 1741.
`
`‘‘In determining whether the subject matter of a patent claim is obvious,
`
`neither the particular motivation or the avowed purpose of the patentee controls. What
`
`15
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`SONY Exhibit 1004 - Page 21
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`

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`matters is the objective reach of the claim.’’
`
`Id., at 1741-1742. “Under the correct
`
`a