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, and SONY MOBILE
`COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`
`
`Case No. IPR2016-01407
`
`
`PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`
`
`
`
`
`
`
`
`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, and SONY MOBILE
`COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`
`
`Case No. IPR2016-01407
`
`
`PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`
`
`
`
`
`
`
`
`
`Patent No. 6,928,433
`IPR2016-01407
`Creative Technology Ltd. (“Patent Owner”) submits this motion for
`
`observations regarding the cross-examination of Dr. Benjamin B. Bederson.
`
`A. Dr. Bederson’s Admissions Regarding the Problem Being Solved
`Observation #1: In Ex. 2045 at page 20, lines 14-17, Dr. Bederson
`
`testified that “I don’t recall disagreeing with any characterization that Mr. Bear
`
`made of the ’433 patent’s technical description.” This testimony is relevant to
`
`pages 2-3 and 6-9 of Petitioners’ Reply (Paper 25) and paragraph 3 of Dr.
`
`Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson asserts that “I do
`
`not understand the ’433 patent to have presented any new solution to any
`
`problem.” This testimony is relevant because it shows that Dr. Bederson does not
`
`dispute Mr. Bear’s description of the problems that the ’433 patent solves.
`
`Observation #2: In Ex. 2045 at page 21, lines 18-21, Dr. Bederson was
`
`asked “And in your declaration, you don’t offer an alternative interpretation of the
`
`’433 patent as solving a different problem, correct?” In response, Dr. Bederson
`
`testified “No, I don’t think I do.” This testimony is relevant to pages 2-3 and 6-9
`
`of Petitioners’ Reply (Paper 25) and paragraph 3 of Dr. Bederson’s Reply
`
`Declaration (Ex. 1020), where Dr. Bederson asserts that “I do not understand the
`
`’433 patent to have presented any new solution to any problem.” This testimony is
`
`relevant because it shows that Dr. Bederson does not dispute Mr. Bear’s
`
`description of the problems that the ’433 patent solves.
`
`1
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`Patent No. 6,928,433
`IPR2016-01407
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`B. Deficiencies in Dr. Bederson’s Analysis of ISO 9241-14
`Observation #3: In Ex. 2045 at page 28, lines 9-16, Dr. Bederson did not
`
`dispute that the scope of ISO9241-14 is expressly described as “recommendations
`
`for menus used in user-computer dialogues to accomplish typical office tasks.”
`
`This testimony is relevant to pages 6-9 of Petitioners’ Reply (Paper 25) and
`
`paragraph 9 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson
`
`asserts that “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.” This testimony is relevant because it shows
`
`that ISO9241-14’s express “scope” is limited to “typical office tasks.”
`
`Observation #4: In Ex. 2045 at page 38, lines 8-16, Dr. Bederson testified
`
`that he “do[esn’t] think that this part [i.e., part 14 of ISO9241] specifically
`
`describes whether the VDTs [video display terminals] are portable or not.” This
`
`testimony is relevant to pages 6-9 of Petitioners’ Reply (Paper 25) and paragraph 9
`
`of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson asserts that
`
`“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.” This testimony is relevant because it shows that one of
`
`2
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`Patent No. 6,928,433
`IPR2016-01407
`skill in the art would not have relied on ISO9241-14’s disclosures in designing a
`
`user interface for a portable media player in light of the document’s failure to
`
`discuss or disclose any applicability to portable devices.
`
`Observation #5: In Ex. 2045 at page 42, lines 2-8, Dr. Bederson was
`
`asked “Alphanumeric keyboard, function keys, cursor keys are all input devices
`
`that are present on conventional desktop computers, correct?” In response, Dr.
`
`Bederson answered “I think there they’re sometimes present on conventional
`
`computers.” This testimony is relevant to pages 6-9 of Petitioners’ Reply (Paper
`
`25) and paragraph 9 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr.
`
`Bederson asserts that “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.” This testimony is relevant because it
`
`shows that ISO9241-14’s disclosures relate to conventional desktop computers
`
`rather than portable media players.
`
`Observation #6: In Ex. 2045 at page 44, line 22 to page 46, line 23, Dr.
`
`Bederson admitted that ISO9241-14 was “developed primarily by reviewing the
`
`existing” publications (listed in “Annex C”), “many” of which “were published in
`
`the 1980’s,” that most publications in the relevant “fields in the 1980’s related to
`
`desktop computers,” and that “much of the research in the 1980’s focused on
`
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`Patent No. 6,928,433
`IPR2016-01407
`desktop computers.” This testimony is relevant to pages 6-9 of Petitioners’ Reply
`
`(Paper 25) and paragraph 9 of Dr. Bederson’s Reply Declaration (Ex. 1020), where
`
`Dr. Bederson asserts that “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.” This testimony is relevant
`
`because it shows that one of skill in the art would not have found ISO9241-14
`
`applicable to the claimed inventions for a user interface for a portable media player
`
`because ISO9241-14 is expressly based on older user interface literature, which
`
`focused on desktop computers as opposed to portable devices.
`
`Observation #7: In Ex. 2045 at page 87, lines 1-7, Dr. Bederson admitted
`
`that “[g]iven that ISO 9241-14 is based substantially on publications from the
`
`1980’s,” it is “[t]heoretically” “possible that some of the recommendations in that
`
`standard could cause degradation in usability when applied to handheld-sized
`
`devices.” This testimony is relevant to pages 6-9 of Petitioners’ Reply (Paper 25)
`
`and paragraph 9 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr.
`
`Bederson asserts that “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.” This testimony is relevant because it
`
`4
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`Patent No. 6,928,433
`IPR2016-01407
`shows that one of skill in the art would not have found ISO9241-14 applicable to
`
`the claimed inventions for a user interface for a portable media player because
`
`ISO9241-14’s recommendations are expressly based on older research performed
`
`on desktop computers which could reduce usability if applied to a portable device.
`
`C. Deficiencies in Dr. Bederson’s Analysis of Seidensticker
`Observation #8: In Ex. 2045 at page 60, lines 10-12, Dr. Bederson
`
`testified that the “Seidensticker interface has four hardware buttons,” and at page
`
`61, lines 1-6, Dr. Bederson testified that “generally there are trade-offs in the
`
`design of an interface that can impact usability, including a number of buttons.”
`
`This testimony is relevant to page 17 of Petitioners’ Reply (Paper 25) and
`
`paragraph 14 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson
`
`asserts that “A POSA would have understood how to implement a user interface in
`
`which a menu option could be used in two different ways . . . For example,
`
`separate buttons could be provided to perform the different operations . . . or
`
`‘rocker’ buttons in which pressing in one direction leads to one result and pressing
`
`in another direction leads to another result.” This testimony is relevant because it
`
`shows that Seidensticker teaches away from Dr. Bederson’s proposed
`
`modifications for accessing a menu option in two different ways, and that such
`
`modifications raise usability tradeoffs which Dr. Bederson failed to analyze in his
`
`declaration.
`
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`Patent No. 6,928,433
`IPR2016-01407
`Observation #9: In Ex. 2045 at page 64, lines 4-16, Dr. Bederson was
`
`asked the question “Seidensticker, itself, only discloses use of the longer than a
`
`predetermined time interval function in connection with its Up and Down buttons,
`
`isn’t that correct?” In response, Dr. Bederson testified that “I think I had just said
`
`that’s what Seidensticker discloses.” This testimony is relevant to page 17 of
`
`Petitioners’ Reply (Paper 25) and paragraphs 14-15 of Dr. Bederson’s Reply
`
`Declaration (Ex. 1020), where Dr. Bederson asserts that “the same button (e.g., the
`
`Action button of Seidensticker) could be configured for both operations,” and “that
`
`one button could be configured for both operations, is confirmed by Seidensticker
`
`itself” in which “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.’” This testimony is relevant because it shows that Seidensticker does
`
`not disclose using the action button to trigger two different operations based on the
`
`amount of time the button is depressed as proposed by Dr. Bederson.
`
`Observation #10: In Ex. 2045 at page 65, lines 9-15, Dr. Bederson was
`
`asked “So you hold the Up button down, there is some time interval and eventually
`
`it decides to keep scrolling but scroll faster, and the same if you hold the Down
`
`button, it keeps scrolling down but scrolls down faster. Is that a fair summary [of
`
`Seidensticker’s longer than a predetermined time interval function]?” In response,
`
`Dr. Bederson testified that “That’s what the user experience would be for a person
`
`6
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`Patent No. 6,928,433
`IPR2016-01407
`using this.” This testimony is relevant to page 17 of Petitioners’ Reply (Paper 25)
`
`and paragraph 15 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr.
`
`Bederson asserts “that one button could be configured for both operations, is
`
`confirmed by Seidensticker itself” in which “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.’” This testimony is relevant because it
`
`shows that Seidensticker’s predetermined time interval function only performs a
`
`single operation in the user interface—scrolling in a selected direction—and not
`
`the two disparate operations that Dr. Bederson suggests in connection with his
`
`proposed modification of Seidensticker.
`
`Observation #11: In Ex. 2045 at page 69, lines 8-17, Dr. Bederson was
`
`asked “Seidensticker’s predetermined time interval functionality is a disclosure in
`
`Seidensticker of a way to navigate a long -- a relatively long list without causing an
`
`undue negative user experience, isn’t that correct?” In response, Dr. Bederson
`
`testified that “I think this is the general rationale for this particular design, and it
`
`has some ability to support that design problem.” This testimony is relevant to
`
`page 9 of Petitioners’ Reply (Paper 25) and paragraph 8 of Dr. Bederson’s Reply
`
`Declaration (Ex. 1020), where Dr. Bederson asserts that “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
`
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`Patent No. 6,928,433
`IPR2016-01407
`important, and instead a ‘hierarchical’ or ‘network’ menu structure should be
`
`used.’” This testimony is relevant because it shows that Seidensticker discloses
`
`that long lists can be readily navigated using its “longer than a predetermined time
`
`interval” functionality—teaching away from the cited disclosures of ISO9241-14.
`
`Observation #12: In Ex. 2045 at page 74, lines 10-22, Dr. Bederson
`
`testified that, according to Figure 3 of Seidensticker, “Whether or not a selected
`
`item refers to an application” and whether a “Selected Item Refer[s] to [an] Other
`
`Menu Item” are “aspect[s] of the user interface, not something that the user is
`
`choosing at the particular time of interacting with the user interface.” This
`
`testimony is relevant to page 17 of Petitioners’ Reply (Paper 25) and paragraph 14
`
`of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson asserts that
`
`“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.” This testimony is relevant because it shows that
`
`Seidensticker teaches away from Dr. Bederson’s proposed modifications because
`
`Seidensticker’s user interface is designed such that any particular menu option can
`
`be used in only one way (either displaying another menu or executing an
`
`application, but not both).
`
`Observation #13: In Ex. 2045 at page 79, lines 8-12, Dr. Bederson
`
`confirmed that “Seidensticker says that using only four control buttons provides
`
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`Patent No. 6,928,433
`IPR2016-01407
`versatility in a compact user interface environment for a portable device.” This
`
`testimony is relevant to page 17 of Petitioners’ Reply (Paper 25) and paragraph 14
`
`of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson asserts that
`
`“A POSA would have understood how to implement a user interface in which a
`
`menu option could be used in two different ways . . . For example, separate buttons
`
`could be provided to perform the different operations . . . or ‘rocker’ buttons in
`
`which pressing in one direction leads to one result and pressing in another direction
`
`leads to another result.” This testimony is relevant because it shows that
`
`Seidensticker teaches away from Dr. Bederson’s proposal to add additional buttons
`
`to permit accessing a menu option in two different ways, because Seidensticker
`
`teaches that its use of only four buttons is beneficial in achieving “a compact user
`
`interface.”
`
`D. Deficiencies in Dr. Bederson’s Analysis of Playlists in Looney
`Observation #14: In Ex. 2045 at page 91, line 17 to page 92, line 4, Dr.
`
`Bederson testified, “Now, Pick and Next are all ways of accessing songs in Looney
`
`that are initiated by the user,” that “Now, Pick and Next are all single words,” and
`
`that “Play is also a single word in play block 532.” This testimony is relevant to
`
`page 22 of Petitioners’ Reply (Paper 25) and paragraph 18 of Dr. Bederson’s Reply
`
`Declaration (Ex. 1020), where Dr. Bederson asserts that “‘Play’ block 532, [] is not
`
`a user-triggered action but rather software code that plays music.” This testimony
`
`9
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`Patent No. 6,928,433
`IPR2016-01407
`is relevant because it shows that Looney adopts a common syntax of using a single
`
`word to identify user-initiated commands, including the “Play” command.
`
`Observation #15: In Ex. 2045 at page 95, lines 6-17, Dr. Bederson
`
`admitted that “[t]he Now operation in Looney also results in the playing of music. .
`
`. . But the figure -- the flowchart in Figure 6 of Looney does not show the flow for
`
`the Now operation passing through play block 532.” This testimony is relevant to
`
`page 22 of Petitioners’ Reply (Paper 25) and paragraph 18 of Dr. Bederson’s Reply
`
`Declaration (Ex. 1020), where Dr. Bederson asserts that “Play” block 532, [] is not
`
`a user-triggered action but rather software code that plays music.” This testimony
`
`is relevant because the fact that Looney’s “Now” command plays music, but does
`
`not flow through “play block 532” in Figure 6 of Looney proves that Dr.
`
`Bederson’s characterization of “play block 532” as “software code that plays
`
`music” is inaccurate.
`
`Observation #16: In Ex. 2045 at page 95, line 20 to page 96, line 22, Dr.
`
`Bederson admitted that “[t]he Now, Pick and Next boxes flow all show that they’re
`
`terminated at block 508, ‘Begin Playing Songs in Playlist in Order,’” that “508
`
`looks like it’s describing something that’s not a user action,” and that his “reply
`
`declaration [does not explain] the difference between the software code of 508 and
`
`the software code of 532.” This testimony is relevant to page 22 of Petitioners’
`
`Reply (Paper 25) and paragraph 18 of Dr. Bederson’s Reply Declaration (Ex.
`
`10
`
`
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`Patent No. 6,928,433
`IPR2016-01407
`1020), where Dr. Bederson asserts that “‘Play’ block 532, [] is not a user-triggered
`
`action but rather software code that plays music.” This testimony is relevant
`
`because Dr. Bederson’s interpretation of “‘Play’ block 532” in Looney’s Figure 6
`
`as “software code that plays music” is contradicted by the fact that block 508,
`
`which follows immediately after block 532 in Figure 6’s “Pick” and “Next” flows
`
`is admittedly software code that plays music, and Dr. Bederson has no explanation
`
`for why Looney’s Figure 6 would redundantly show two successive blocks which
`
`are both software code for playing music.
`
`Observation #17: In Ex. 2045 at page 97, line 11 to page 98, line 5, Dr.
`
`Bederson admitted that the “Now” command has a different number in Figures 6
`
`and 14. This testimony is relevant to page 22 of Petitioners’ Reply (Paper 25) and
`
`paragraph 20 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson
`
`asserts that “The POR appears to equate the ‘play block 532’ with a Play
`
`button. . . . 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.” This testimony is relevant because it shows that Figures 6 and 14 of
`
`Looney use a different numbering scheme and therefore the fact that “Play” has a
`
`different number in those figures is irrelevant.
`
`Observation #18: In Ex. 2045 at page 98, lines 16-22, Dr. Bederson
`
`admitted that “[t]here’s nothing in Looney that says expressly one way or the other
`
`11
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`Patent No. 6,928,433
`IPR2016-01407
`whether play block 532 in Figure 6 is or is not the code that implements the play
`
`button 601 in Figure 14.” This testimony is relevant to page 22 of Petitioners’
`
`Reply (Paper 25) and paragraph 20 of Dr. Bederson’s Reply Declaration (Ex.
`
`1020), where Dr. Bederson asserts that “The POR appears to equate the ‘play block
`
`532’ with a Play button. . . . 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.” This testimony is relevant because it shows Dr.
`
`Bederson’s opinion that “‘Play’ block 532” is not the code for implementing Play
`
`button 601 is not supported by any express disclosures of Looney.
`
`Observation #19: In Ex. 2045 at page 101, lines 2-24, Dr. Bederson
`
`admitted that “Figure 6 of Looney is labeled ‘CONTROLS FOR S2 AND S3,’”
`
`which “refer[s] to Screen 2 and Screen 3 of Looney,” that “Figure 14 is one of the
`
`various figures that shows the operation of Screen 2 of Looney,” that “Play button
`
`labeled 601 is [] one of the controls on [Screen] 2 of Looney,” and that
`
`“presumably, pressing that play button in Figure 14 of Looney labeled 601” “plays
`
`something.” This testimony is relevant to page 22 of Petitioners’ Reply (Paper 25)
`
`and paragraph 20 of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr.
`
`Bederson asserts that “The POR appears to equate the ‘play block 532’ with a Play
`
`button. . . . That interpretation contradicts Figure 14 (which the POR also cites), in
`
`which the ‘Play’ button is indicated with reference numeral 601, not reference
`
`12
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`Patent No. 6,928,433
`IPR2016-01407
`numeral 532.” This testimony is relevant because it confirms that “Play” block
`
`532 corresponds to play button 601.
`
`Observation #20: In Ex. 2045 at page 105, line 6 to page 106, line 17, page
`
`108, line 12 to page 109, line 23, page 113, line 11 to page 114, line 20, and page
`
`116, line 5 to page 117, line 3, Dr. Bederson testified that Looney’s “Mix Up,”
`
`“Sort,” and “Save,” functionality are user-triggered actions, that “Mix Up,” “Sort,”
`
`and “Save” are all expressly characterized by Looney as “command[s],” and that
`
`“‘Play’ block 532” is also characterized by Looney as a “command.” This
`
`testimony is relevant to page 22 of Petitioners’ Reply (Paper 25) and paragraph 18
`
`of Dr. Bederson’s Reply Declaration (Ex. 1020), where Dr. Bederson asserts that
`
`“‘Play’ block 532, [] is not a user-triggered action but rather software code that
`
`plays music.” This testimony is relevant because it demonstrates that Looney
`
`consistently uses the term “command” to refer to user-initiated actions, and
`
`therefore, contrary to Dr. Bederson’s opinion, Play block 532 represents a user-
`
`initiated action.
`
`13
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`
`
`Date: July 24, 2017
`
`
`
`
`
`Patent No. 6,928,433
`IPR2016-01407
`Respectfully submitted,
`
`
` /Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45708
`Farney Daniels PC
`411 Borel Avenue, Suite 310
`San Mateo, California 94402
`Phone: 424-268-5210
`E-mail: jbaker@farneydaniels.com
`
`14
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`Patent No. 6,928,433
`IPR2016-01407
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion for Observations on Cross-Examination was served via email on
`
`July 24, 2017, on the attorneys for the Petitioners:
`
`Michael N. Rader, Reg. No. 52,146
`Randy J. Pritzker, Reg. No. 35, 986
`Andrew J. Tibbetts, Reg. No. 65,139
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Telephone: 617-646-8000Fax: 617-646-8646
`Emails: rpritzker-ptab@wolfgreenfield.com
`
`mrader-ptab@wolfgreenfield.com
`
`atibbetts-ptab@wolfgreenfield.com
`
`Date: July 24, 2017
`
`
`
`
`/Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45,708
`
`15
`
`
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