Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
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`v.
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`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`_____________
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`Case No. IPR2016-01407
`Patent No. 6,928,433
`_____________
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`PETITIONERS’ OBJECTIONS TO
`PATENT OWNER’S DEMONSTRATIVES
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
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`v.
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`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`_____________
`
`Case No. IPR2016-01407
`Patent No. 6,928,433
`_____________
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`PETITIONERS’ OBJECTIONS TO
`PATENT OWNER’S DEMONSTRATIVES
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`On August 25, 2017, Patent Owner served a revised set of demonstrative
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`slides. The parties met and conferred regarding Petitioners’ objections on
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`Tuesday, August 22, 2017 and Thursday, August 24, 2017, which resolved some
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`but not all of the objections. Petitioners object to the following slides in Patent
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`Owner’s demonstratives.
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`- 1 -
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`Demonstrative Slide 11
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`Petitioners object to demonstrative slide 11 (copied below) because it
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`constitutes additional briefing (serving as an unauthorized, improper sur-
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`reply), and also because it mischaracterizes Petitioners’ Reply as arguing
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`that ISO9241-14 provides a motivation to combine by misleadingly quoting
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`a single word (“motiva[tion]”) from the statement: “ISO standards …
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`reinforce overarching design principles … that would have motivated a
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`POSA as set forth in the Petition,” when in fact the Reply only cited
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`ISO9241-14 to rebut Patent Owner’s legally irrelevant and factually
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`erroneous argument that the ’433 patent allegedly solved a problem that was
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`“unidentified” by the prior art, because ISO9241-14 (which was cited in the
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`ISO standards that Patent Owner’s own expert discussed) previously
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`identified the same problem allegedly identified in the ’433 patent. Reply at
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`7-9; see Paper No. 34 at 3 (“Demonstrative exhibits … may not introduce
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`new evidence or arguments.”); St. Jude Medical, Cardiology Division v. Bd.
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`of Regents of the Univ. Mich., IPR2013-00041, Paper No. 65 at 3 (PTAB
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`Jan. 27, 2014) (“[D]emonstrative exhibits are not an opportunity for
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`additional briefing.”).
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`- 2 -
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`Petitioners' Reply Arguments Regarding Motivation to
`Combine Are Improper
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`' Petitioners now identify 509241-14 as providing
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`“motiva[tion]” for a POSA to combine Birrell with
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`Seidensticker's hierarchical menu structure We.“
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`' This is an improper new reply theory
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`— Petition was required to “identif[y] in writing and with
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`particularity, . . . the grounds on which the challenge to
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`each claim is based, and the evidence that supports the
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`grounds for the challenge to each claim”
`as use. s 312::an
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`— 509241-14 was not part of instituted grounds and not
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`mentioned in any pleading prior to Reply
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`— Reply is limited to “respond[ing] to arguments raised in the
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`corresponding opposition” swan-11mm
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`- 3 -
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`Demonstrative Slide 12
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`Petitioners object to demonstrative slide 12 for the same reasons as
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`demonstrative slide 11 and additionally because one bullet point (shown
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`below) contains testimony that is only “supported” by Patent Owner’s
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`Observation on Cross-Examination No. 11 which, as pointed out in
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`Petitioners’ Response to Observations on Cross-Examination (Paper No. 36)
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`No. 11, is improper because it raises a new and irrelevant argument that
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`Seidensticker teaches away from ISO9241-14. See St. Jude Medical,
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`Cardiology Division v. Bd. of Regents of the Univ. Mich., IPR2013-00041,
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`Paper No. 65 at 3-4 (PTAB Jan. 27, 2014) (finding objections had merit
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`where “arguments [were] supported only by citations to … Observations on
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`Cross-Examination”) (citing Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012) (“[A]n observation … is not an
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`opportunity to raise new issues.”))1.
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`1 The foregoing citations are provided only once in this paper but apply to each
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`objection to a new argument supported only by Patent Owner’s Observations on
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`Cross-Examination.
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`- 4 -
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`Demonstrative Slide 17
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`Petitioners object to demonstrative slide 17 because it constitutes additional
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`briefing (serving as an unauthorized, improper sur-reply) and also because
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`two bullet points (shown below) mischaracterize the Petition by stating that
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`the Board’s “theory” was not mentioned in the Petition, even though, as
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`explained in Petitioners’ Reply at 16, the Petition explained that the relevant
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`limitations of claims 2 and 3 are met by Birrell’s teaching of selecting an
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`entire CD in the second display screen (Petition at 76-78) after explaining
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`(as demonstrated in connection with claim 1 from which claims 2 and 3
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`depend) that each one of the three screens is displayed and that the “Back”
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`button allows the user to move upward in the hierarchy (Petition at 70-75
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`(identifying “Back” at 1[P2])). See also id. at 79; St. Jude, Paper No. 65 at
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`3 (“[D]emonstrative exhibits are not an opportunity for additional
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`briefing.”).
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`- 5 -
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`Demonstrative Slide 24
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`Petitioners object to demonstrative slide 24 because it constitutes additional
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`briefing (serving as an unauthorized, improper sur-reply) and also because
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`the first bullet point shown below contains testimony that is only
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`“supported” by Patent Owner’s Observation on Cross-Examination No. 10
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`which, as pointed out in Petitioners’ Response to Observation on Cross-
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`Examination No. 10, is improper because it cites testimony that is irrelevant
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`to any argument or issue in this trial and instead raises a new argument that
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`Seidensticker allegedly teaches away from the proposed modification to the
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`Action button, and also because the second bullet point shown below
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`appears to be directed to raising an improper new argument “supported”
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`only by Patent Owner’s Observation on Cross-Examination No. 13 (see
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`Petitioners’ Response to Observation on Cross-Examination No. 13).
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`- 6 -
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`Demonstrative Slide 34
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`Petitioners object to demonstrative slide 34 because it contains additional
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`briefing (serving as an unauthorized, improper sur-reply) and because the
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`slide raises new arguments (“supported” only by Patent Owner’s
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`Observation on Cross-Examination Nos. 16 and 20 which, as pointed out in
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`Petitioners’ Response to Observation on Cross-Examination No. 16 and 20,
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`are improper) that “Play” block 532 in Figure 6 of Looney is allegedly a
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`button rather than software code, and mischaracterizes Petitioners’ expert as
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`allegedly admitting that “Play” block 532 is not code and purports to
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`“support” that mischaracterization by citing testimony (highlighted in yellow
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`below) that removes via an ellipsis Dr. Bederson’s explicit testimony that
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`“Play” block 532 is “code,” and ignores Dr. Bederson’s clear testimony that
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`“there’s no indication that there’s a user initiation” of the code (as there
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`would be in the case of a button) and that the code might be triggered
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`indirectly through different commands such as Mix Up (Ex. 2045 at
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`106:21-107:6, cited at Paper No. 36, Response No. 20). See Petitioners’
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`Response to Observations on Cross-Examination Nos. 16, 19, and 20.
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`- 7 -
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`Petitioners‘ interpretation of "play” is easily rejected
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`' Petitioners argue that “play block 532 is merely a
`software block that processes music files” Mm
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`— Also argue that “Figs. 13-15 prayes the point because the ‘Play’
`button is 601, not 532” mm
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`' Contradicted by their expert’s deposition testimony
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`m; POllat 56
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`1an at 10:55“,- ro
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`— Petitioner's expert admitted that “flow" of “Now, Pick and
`Next” “all terminate at block 508, ‘Begin Playing Songs...”
`5:. 2045 «952119522; ro Obs-.1116; Ex. 11:09, Fig. 6; FORat 55
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`' Also admitted that he did not “explain the difference between the
`software code of 508 and the software code of 532" m.
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`— Petitioner's expert admitted that Looney’s Fig. 6 is “Controls
`for” Looney's ”Screen 2 and Screen 3" and that the “Play
`button” and “Now Button” are both “controls” n.msatm1:z—1s;m0bs.#19;
`FORIISS
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`- 8 -
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`Demonstrative Slide 10
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`Petitioners object to demonstrative slide 10 because it constitutes “additional
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`briefing” (serving as an unauthorized, improper sur-reply) and also because
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`the bullet points shown below mischaracterize Gu’s holding as limited to
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`references that teach the limitation in question even though Gu states that
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`evidence of an alleged commercial embodiment does not bear on the
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`disclosure of a printed publication. Ex parte Gu, 2016 WL 552385, at *3
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`(PTAB 2016), cited in Reply at 6, (“[T]he proffered extrinsic evidence is not
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`evidence of what [the printed publication reference] teaches, but of the
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`[allegedly embodying commercial] system, which is not the prior art of
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`record from which the rejection is drawn.”); see Patent Owner Response
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`(“POR”) at 23 (arguing that the PJB-100 should drive how a POSA “would
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`have interpreted Birrell”); 27 (expressly conflating Birrell and the PJB-100
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`by identifying the screen of the PJB-100 as “the screen in Birrell”).
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`- 9 -
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`Dated: August 25, 2017
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`By:
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`Respectfully submitted,
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`/s/ Michael N. Rader
`Michael N. Rader, Reg. No. 52,146
`Randy J. Pritzker, Reg. No. 35,986
`Andrew J. Tibbetts, Reg. No. 65,139
`Joshua J. Miller (admitted pro hac vice)
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000 / Fax: 617-646-8646
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`- 10 -
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on August 25, 2017, I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Patent Owner, upon the following:
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`Jonathan D. Baker
`Russell Swerdon
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`Date: August 25, 2017
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`JBaker@farneydaniels.com
`russ_swerdon@creativelabs.com
`CreativeZen@farneydaniels.com
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`/MacAulay S. Rush/
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`- 11 -
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