Trials@uspto.gov
`571.272.7822
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` Paper 13
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` Entered: December 6, 2016
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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, and SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioner,
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`v.
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`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01407
`Patent 6,928,433
`____________
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`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2016-01407
`Patent 6,928,433
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`Sony Corporation, Sony Mobile Communications (USA) Inc., Sony
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`Mobile Communications AB, and Sony Mobile Communications Inc.
`(collectively, “Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319
`to institute an inter partes review of claims 2, 3, 5, 7, and 17–28 of U.S.
`Patent No. 6,928,433 B2 (“the ’433 patent”). Paper 2 (“Pet.”). Creative
`Technology Limited (“Patent Owner”) filed a Preliminary Response. Paper
`10 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we grant
`Petitioner’s request and institute an inter partes review of all challenged
`claims.
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`I. BACKGROUND
`A. The ’433 Patent (Ex. 1001)
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`The ’433 patent was the subject of an inter partes reexamination,
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`which resulted in the cancellation of claims 1, 4, 6, and 8–16 and the
`addition of new claims 17–28. Ex. 1002. The patent describes a user
`interface for a portable player that plays files stored in memory, such as
`music files or other content. Ex. 1001, 3:53–56, 7:22–24. The content may
`be organized into a hierarchy of top-level categories and associated sub-
`categories. Id. at 12–29. The hierarchy is displayed on the device so that a
`user can traverse the hierarchy to find individual tracks or playlists
`composed of logical groups of tracts. Id. at 3:4–8.
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`Figure 10 of the ’433 patent is reproduced below:
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`Figure 10 illustrates a sequence of display screens describing how to
`navigate to lower levels of the hierarchy. Id. at 8:57–58. Categories screen
`150 illustrates the display of first-level categories. Id. at 8:59–63. Lists
`screen 154 is displayed as a result of a user opening the Albums category of
`library catalog screen 150, and shows items within the Albums category. Id.
`at 9:4–9. Tracks screen 156 shows a result of opening an item in the Lists
`screen 154 and Details screen 158 shows the details of a track selected in
`Tracks screen 156. Id. at 9:10–44.
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`B. Illustrative Claim
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`All of the challenged claims depend from canceled claim 1, which is
`illustrative of the subject matter of the claims at issue:
`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,
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`and third display screen on the display of the media player, the
`plurality of tracks accessed according to a hierarchy, the
`hierarchy having a plurality of categories, subcategories, and
`items respectively in a first, second, and 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.
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`C. References
`Petitioner relies on the following references:
`Looney
`US 5,969,283
`Oct. 19, 1999
`Proehl
`US 6,118,450
`Sept. 12, 2000
`Johnson
`US 5,798,921
`Aug. 25, 1998
`Birrell
`US 6,332,175
`Dec. 18, 2001
`Seidensticker US 6,128,012
`Oct. 3, 2000
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`Ex. 1009
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
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`D. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’433 patent
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`under 35 U.S.C. §§ 102(b) and 103(a) over the following combinations of
`references:
`References
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`Looney
`Looney and Proehl
`Looney, Proehl, and Johnson
`Birrell and Seidensticker
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`Basis
`35 U.S.C. § 102(b)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
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`Claims
`2, 3, 5, 7, 17, 18
`2, 3, 19–28
`23, 24, 27, 28
`2, 3, 5, 7, 17, 18
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`Claims
`Basis
`References
`19–28
`35 U.S.C. § 103(a)
`Birrell, Seidensticker, and Proehl
`Birrell, Seidensticker, Proehl, and
`23, 24, 27, 28
`35 U.S.C. § 103(a)
`Johnson
`17, 18
`Birrell, Seidensticker, and Looney 35 U.S.C. § 103(a)
`Birrell, Seidensticker, Proehl, and
`35 U.S.C. § 103(a) 20, 22, 24, 26, 28
`Looney
`Birrell, Seidensticker, Proehl,
`Johnson, and Looney
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`35 U.S.C. § 103(a)
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`24 and 28
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`E. Related Proceedings
`Patent Owner identifies a number of proceedings in which it has
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`alleged infringement of the ’433 patent. See Paper 8. Patent Owner also
`identifies the following declaratory judgement proceeding involving the
`patent: Google, Inc. v. Creative Labs, Inc. and Creative Technology Ltd.,
`Case No. 3:16-cv-02628-JST (N.D. Cal.). Id. Additionally, Patent Owner
`states the ’433 patent is the subject of an investigation at the U.S.
`International Trade Commission. Id. Petitioner submitted updated
`mandatory notices, in which it identifies the following pending appeal of the
`ITC investigation: Creative Technology Ltd. V. ITC, Case No. 16-2715
`(Fed. Cir.). Paper 12.
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`II. ANALYSIS
`A. Claim Construction
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`In an inter partes review, claims of an unexpired patent are
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`interpreted using the broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). A claim cannot have different meanings at different
`times; its meaning must be interpreted as of its effective filing date. PC
`Connector Sols. LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir.
`2005).
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`1. “portable media player”
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`This term appears in all challenged claims. Petitioner asserts that
`“portable media player” does not need to be construed. Pet. 11. Patent
`Owner contends we should construe this term as “a hand-held electronic
`device that can play audio and/or video content.” Prelim. Resp. 7. In
`support of this construction, Patent Owner cites to several dictionary
`definitions and the testimony of its witness Eric J. Gould Bear. Id. (citing
`Exs. 2001, 2003, 2004). Patent Owner further asserts its proposed
`construction is consistent with the specification of the ’433 patent. Prelim.
`Resp. 7–8.
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`The ’433 patent describes that portable music devices typically have
`a user interface that includes a small screen size (e.g., 1” x 2”). Ex. 1001,
`2:36–38; see also id. at 8:8–18 (describing a preferred embodiment of the
`invention as an electronic audio device including a display screen that
`measures about 2” wide by 1” tall). The ’433 patent further describes that
`“tracks” on the player may refer to any content (e.g., music track, spoken
`word track, video track). Id. at 7:22–24.
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`Based on the record before us, we are not persuaded by Patent
`Owner’s assertion that “portable media player” would have been understood
`at the time of the invention to be limited to a “hand-held device.” The cited
`passages of the’433 patent do not provide a narrowing definition that limits
`“portable media player” to be a certain size, but merely describe typical
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`devices and a preferred embodiment. See Ex. 1001, 2:36–38, 8:8–18. Nor
`do the cited dictionaries provide sufficient evidence at this stage to limit the
`term. The 2006 Oxford English Dictionary definition cited by Patent Owner
`merely describes a first known usage of “portable media player” in 1998.
`Ex. 2003, 6. Additionally, Patent Owner does not provide any evidence or
`argument that the cited definition from the COMPUTER ENCYCLOPEDIA
`DESKTOP ENCYCLOPEDIA (Ex. 2004) was in use at the time of the invention.
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`Accordingly, for purposes of this decision, we construe “portable”
`according to its ordinary meaning as “capable of being easily and
`conveniently transported.” See Ex. 3001 (MCGRAW-HILL DICTIONARY OF
`SCIENTIFIC AND TECHNICAL TERMS 1550 (5th ed. 1994)). For purposes of this
`decision, we construe “portable media player” as “a device capable of being
`easily and conveniently transported that can play media content, such as
`audio or video content.”
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`2. “display screen”
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`This term appears in all challenged claims. Petitioner contends this
`term should be construed as “visual content presented on a display at a point
`in time.” Pet. 12. In support of this construction, Petitioner relies on
`testimony of its witness, Benjamin B. Bederson, Ph.D. Id. (citing Ex. 1006).
`Petitioner further asserts the specification of the ’433 patent makes clear that
`a change in displayed content results in a new “screen,” even if the displayed
`content is substantially the same as the content that was displayed on the
`prior “screen.” Pet. 13.
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`Patent Owner asserts “display screen” should be construed as “a
`particular set of user interface elements presented on the display of a
`device.” Prelim. Resp. 12. Patent Owner asserts that under this
`construction, a “first display screen” becomes “a second display screen”
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`when one or more user interface elements are added, removed, or replaced
`from the particular set of user interface elements that constituted the first
`display screen. Id. at 13. Patent Owner contends that Petitioner’s proposed
`construction is unsupported by, and contrary to, the evidence because a
`change of a single pixel, including use of scrolling within a screen, would be
`sufficient under Petitioner’s construction to cause a “first display screen” to
`become “a second display screen.” Id. at 8–9. Patent Owner further
`contends that, contrary to Petitioner’s assertions, the ’433 patent does not
`describe screens 182 and 184 of Figure 12 as different display screens. Id. at
`10–11. Patent Owner asserts that its construction is entirely consistent with
`the descriptions of display screens in the ’433 patent and the cited prior art.
`Id. at 13–15.
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`Based on the record before us, and for purposes of this decision, we
`are persuaded by Patent Owner’s arguments. Figure 12 of the ’433 patent
`illustrates display screens used to search for a song. Ex. 1001, at Fig. 12,
`10:20–38. The screens in Figure 12 are not labeled with titles, but are rather
`referred to as “screen 180” (described as being the initial library screen),
`screen 182, screen 184, and screen 186. Id. We agree with Patent Owner
`that, in contrast, the ’433 patent describes Figure 10 (reproduced supra) as a
`sequence of display screens, which are labeled and described as “Categories
`screen,” “Lists Screen,” “Tracks Screen,” and “Details Screen.” Id. at Fig.
`10, 8:57–9:44. We further agree that the ’433 patent discloses the use of
`scroll bars within a single screen. See id. at Fig. 12 (element 186), Fig. 13
`(element 204). Petitioner’s proposed construction is inconsistent with the
`use of the term in the ’433 patent and the evidence of record because it
`would define a display screen to be a different display screen based on any
`change at all of the displayed content, including scrolling within a screen.
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`We are persuaded, based on the current record, that Patent Owner’s
`proposed construction is consistent with the ordinary and customary
`meaning of the term in the context of the entire disclosure of the ’433 patent.
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`Accordingly, we adopt Patent Owner’s construction and construe
`“display screen” as “a particular set of user interface elements presented on
`the display of a device.” In adopting Patent Owner’s construction, we credit
`the testimony of Patent Owner’s witness Mr. Bear, describing the concept of
`a user interface and how the proposed construction is consistent with the
`term’s usage in the ’433 patent and the evidence of record. Ex. 2001 ¶¶ 60–
`64.
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` B. Anticipation by Looney, Obviousness Over Looney and Proehl,
`and Obviousness over Looney, Proehl and Johnson
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`Petitioner contends that claims 2, 3, 5, 7, 17, and 18 are unpatentable
`as anticipated under 35 U.S.C. § 102(b) by Looney. Pet. 17–36. Petitioner
`further contends that claims 2, 3, and 19–28 are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Looney and Proehl, and that claims 23, 24,
`27, and 28 are obvious over Proehl and Johnson. Id. at 37–63. Having
`reviewed Petitioner’s arguments and supporting evidence, for the reasons
`discussed below, we conclude that Petitioner fails to demonstrate a
`reasonable likelihood of prevailing on these grounds.
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`Looney describes a music organizer and entertainment center for
`playing back music according to a variety of predetermined categories. Ex.
`1009, 2:5–9. A docking mechanism can be provided to the system to allow
`songs to be moved to different playback devices. Id. at 2:54–56. Figure 19
`of Looney is reproduced below:
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`Figure 19 is a perspective view of an exemplary music organizer and
`entertainment center. Id. at 4:66–67. Music is stored on a hard drive of unit
`700, which can be moved from location to location and “docked” to base
`unit 708. Base unit 708 includes cable 712 to interconnect base unit 708
`with the appropriate speakers or amplifiers. Id. at 12:59–64. In a different
`embodiment, the hard drive or unit can interface with an onboard automotive
`base unit to enable music in the hard drive or docking unit to be played
`within a car or other vehicle. Id. at 13:19–25.
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`Petitioner asserts that Looney meets the “portable media player”
`limitation, which is recited in all challenged claims by virtue of their
`dependency from canceled claim 1. Pet. 17–18, 22, 26. In particular,
`Petitioner asserts Looney’s description of portable units that may be moved
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`from location to location discloses the claimed portable media player. Id. at
`17, 26.
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`Patent Owner argues that Looney fails to disclose a portable media
`player because Looney’s “mobile” and “portable” embodiments cannot play
`media while the device is mobile or portable, but instead must be docked to
`a base unit to provide playback. Prelim. Resp. 16. Patent Owner asserts that
`only the main audio unit is capable of playing music via attached speakers.
`Id. at 17. Thus, Patent Owner argues that the Looney embodiments upon
`which Petitioner relies do not disclose a device which is both “portable” and
`a “media player.”
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`We are persuaded by Patent Owner’s contentions. Although Looney
`describes portable units that can store music and be moved to different
`locations, the descriptions of the cited embodiments do not indicate the
`portable units themselves are capable of playing media content. See Ex.
`1009, 2:54–59, 12:54–65, 13:19–41. Rather, in the cited embodiments
`described in Looney, it is the base unit (unit 700 or onboard automotive base
`unit) that interconnects the docked portable unit with “appropriate speakers
`or amplifiers” or to main audio system 762 to enable music to be played
`through the speakers or within the vehicle. Id. at 12:59–63, 13:22–26.
`Thus, we are persuaded that Petitioner does not sufficiently establish that
`Looney meets the recited “portable media player” as we construe the term,
`namely, a device capable of being easily and conveniently transported that
`can play media content, such as audio or video content.
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`Patent Owner contends that neither Proehl nor Johnson cures
`Looney’s failure to disclose a “portable media player.” Prelim. Resp. 23, 31.
`In particular, Patent Owner asserts nothing in Proehl indicates the multi-
`recording medium integrated player is portable. Id. at 23. Patent Owner
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`further asserts Johnson is a large stationary audio device and is not a
`portable media player. Id. at 31.
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`We are persuaded by Patent Owner’s argument. Petitioner does not
`assert that either Proehl or Johnson discloses a portable media player, but
`rather relies on Looney for this limitation. See Pet. 37–62. Moreover, we
`agree with Patent Owner that the cited sections of Proehl do not describe its
`multi-disc CD player as portable (“capable of being easily and conveniently
`transported”). See Ex. 1011, 1:5–23, 3:38–43. We also agree the cited
`sections of Johnson do not describe its audio player with cartridge rack as
`portable. See Ex. 1012, 2:60–3:11.
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`Because Petitioner has not shown the cited references disclose a
`“portable media player,” we conclude Petitioner has not demonstrated a
`reasonable likelihood of prevailing in establishing that: (1) claims 2, 3, 5, 7,
`17, and 18 are anticipated by Looney; (2) claims 2, 3, and 19–28 would have
`been obvious over Looney and Proehl; or (3) claims 23, 24, 27, and 28
`would have been obvious over Looney, Proehl, and Johnson.
`C. Obviousness Over Birrell and Seidensticker
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`Petitioner contends claims 2, 3, 5, 7, 17, and 18 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over the combination of Birrell and
`Seidensticker. Pet. 63–79. For the reasons discussed below, we are
`persuaded, based on the current record, that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this ground as to claims 2, 3, 5, and 7.
`Petitioner fails to establish a reasonable likelihood of prevailing on this
`ground as to claims 17 and 18.
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`1. Overview of Birrell and Seidensticker
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`Birrell describes a portable audio player that plays compressed audio
`data. Ex. 1013, 3:31–33. A table of contents organizes the compressed
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`music files in a hierarchy. Id. 4:52–61. In an exemplary embodiment, the
`top level of the hierarchy contains music genres (e.g., classical, jazz), a
`second level of the hierarchy contains a listing of CDs within each genre,
`and a third level of the hierarchy contains the names of the tracks on each
`CD. Id. 4:50–61. The table of contents can be viewed on the display of the
`audio player and the user can select CDs and/or individual tracks to be
`played by adding them to a “play list” of tracks to be played by the system.
`Id. 4:66–5:3.
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`Seidensticker describes a user interface for a portable device that
`stores and displays data. Ex. 1014, 1:13–15, 2:27–29. Data is presented to a
`user as a hierarchical directory having a plurality of levels, which users can
`navigate using a first pair of controls (Action/Back) and a second pair of
`controls (Up/Down). Id. 2:56–3:7. The controls (e.g., buttons) are used to
`navigate the user through the directory/menu hierarchy such that when the
`Action button is depressed, the next lower level of the hierarchy is
`displayed, and when the back button is depressed, the next higher level of
`the hierarchy is displayed. Id. at 6:44–53. Figures 10 and 11 of
`Seidensticker are reproduced below:
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`Figure 10 (left) illustrates an exemplary Table of Contents View display
`screen that includes a list of action items, such as “Get to Theater.” Id. at
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`4:38–39, 17:62–65. Figure 11 (right) shows an exemplary Records View
`display screen for the “Get to Theater” action item. See id. at 4:40–41.
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`2. Claims 2, 3, 5, 7
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`Petitioner asserts Birrell teaches a portable music player with a user
`interface for navigating a hierarchical table of contents for stored audio
`tracks. Pet. 63–64. Petitioner asserts combining Seidensticker’s approach to
`navigating a hierarchical menu structure with Birrell would have led a
`person of ordinary skill to present three display screens for Birrell’s three
`levels of its table of contents, such that the first display screen contains a list
`of music genres, the second display screen contains a list of CDs within a
`genre, and the third display screen contains tracks for a selected CD. Id. at
`65–68. Petitioner contends the combination teaches the limitations recited in
`canceled independent claim 1, and its dependent claims 2, 3, 5, and 7. Id. at
`61–80.
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` Patent Owner argues that Petitioner fails to explain adequately why
`the references would have been combined to practice the recited three
`sequentially displayed screens and the “accessing” tracks limitation, despite
`the fact that neither reference discloses these limitations. Id. at 40–42. With
`respect to claims 2 and 3 (and dependent claim 17 addressed below), Patent
`Owner asserts these claims require that a selection on the second screen
`causes a group of tracks to be accessed, and the proposed combination does
`not satisfy the limitations of these claims. Id. at 42–44; see also id. at 19–21
`(discussing asserted requirements of claims 2 and 3). At this stage of the
`proceeding, we are not persuaded by Patent Owner’s arguments.
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`We have reviewed the information provided by Petitioner and
`determine, based on the current record and for purposes of this Decision,
`that Petitioner sufficiently establishes the combination of Birrell and
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`Seidensticker meets the limitations of claims 2, 3, 5, and 7. See Pet. 71–80.
`Patent Owner’s arguments that the individual references do not teach the
`claimed three display screens or the “accessing at least one track” limitation
`are not persuasive because Petitioner relies on the combined teachings of the
`references to teach the disputed limitations. See In re Keller, 642 F.2d 413,
`425 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
`references individually”). Petitioner adequately identifies Birrell’s three-
`level hierarchy for navigating stored audio content with the claimed
`hierarchy of tracks. Pet. 63–64, 74. Petitioner adequately establishes
`Seidensticker discloses navigating a hierarchical menu structure through the
`use of display screens (“a particular set of user interface elements presented
`on the display of a device.”), with a list of entries for each menu level being
`presented on a respective screen. Id. at 65–67. Therefore, Petitioner
`sufficiently establishes, at this stage of the proceeding, that the combination
`of Birrell and Seidensticker teaches the claimed sequential display of a first,
`second, and third display screens. Id. at 67–75. Petitioner also adequately
`establishes that the combination of Birrell’s disclosure of accessing a track
`from the hierarchical table of contents with Seidensticker’s hierarchical
`display screens teaches the “accessing at least one track” limitation. Id. at
`75–76.
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`Additionally, Petitioner adequately establishes the combination of
`Birrell and Seidensticker teaches the “selecting a subcategory” limitations
`recited in dependent claims 2 and 3. Id. at 76–78. In particular, Petitioner
`adequately establishes Birrell discloses a user can select an entire CD
`(subcategory in second level of hierarchy) to be played by adding the tracks
`to a playlist, and that Seidensticker discloses displaying a second level of a
`hierarchy in a second display screen (as required by claim 2). Id. at 76–77.
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`Patent Owner’s contention that the selection made on the second screen
`would fail to teach displaying a third display screen is not persuasive
`because, as explained above, Petitioner sufficiently establishes the
`combination teaches the third display screen. Moreover, we observe
`Seidensticker discloses the use of a Back button to take the user to a next
`hierarchical level of a display (e.g., after the third display screen is displayed
`as required by claim 1). Ex. 1014, 5:21–22.
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`Patent Owner additionally contends that Petitioner fails to adequately
`explain why a person of ordinary skill at the time of the invention would
`have combined Birrell and Seidensticker. Prelim. Resp. 34–39.
`Specifically, Patent Owner asserts Petitioner’s explanations are, at best,
`cursory explanations that the references could have been combined but do
`not explain why they would have been combined. Id. at 35. Patent Owner
`further asserts there is little apparent reason for adapting the user interface of
`Birrell’s portable audio player with Seidensticker’s portable “personal
`information management” device. Id. at 36–37.
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`We are not persuaded by Patent Owner’s arguments. We determine
`Petitioner presents a sufficient rationale at this stage of the proceeding for
`combining Birrell and Seidensticker through its assertion that one of
`ordinary skill in the art would have found Seidensticker’s approach to
`navigating a hierarchical menu structure “directly applicable” to Birrell’s
`hierarchical table of contents. Pet. 66–67. Furthermore, we agree with
`Petitioner that Seidensticker expressly contemplates that its hierarchical user
`interface can be employed on other portable electronic devices. Id; see Ex.
`1014, 4:54–57, 22:32–35. In support of Petitioner’s position, we credit the
`testimony of Dr. Bederson that a person of ordinary skill would have
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`recognized Seidensticker’s interface to be a predictable improvement of
`Birrell. Ex. 1006, ¶ 193.
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`For the reasons discussed above, we are persuaded Petitioner has
`demonstrated a reasonable likelihood of prevailing in establishing claims 2,
`3, 5, and 7 would have been obvious over the combination of Birrell and
`Seidensticker.
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`3. Claims 17, 18
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`Claims 17 and 18 recite “the playlist is an active queue list of songs
`that is currently being played.” Petitioner asserts Birrell teaches this
`limitation. Pet. 79–80. Patent Owner argues Birrell merely describes tracks
`can be added to a queue “to be played” by the system and does not suggest
`songs can be added to the queue while tracks are currently being played.
`Prelim. Resp. 44–45. We agree with Patent Owner that the cited sections of
`Birrell describe its play list as a queue of tracks “to be played” by the system
`and not as “an active queue list of songs that is currently being played.” See
`Ex. 1013, 5:1–3. Accordingly, we conclude Petitioner has not demonstrated
`a reasonable likelihood of prevailing in establishing that claims 17 and 18
`would have been obvious over the combination of Birrell and Seidensticker.
` D. Obviousness Over Birrell, Seidensticker, and Proehl
`Petitioner contends claims 19–28 are unpatentable as obvious under
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`35 U.S.C. § 103(a) over the combination of Birrell, Seidensticker, and
`Proehl. Pet. 45–50. We are persuaded, based on the current record, that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`ground as to claims 19, 21, and 25. Petitioner fails to establish a reasonable
`likelihood of prevailing on this ground as to claims 20, 22–24, and 26–28.
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`Proehl describes a graphic user interface for use with a multi-
`recording medium integrated player (e.g., multi-disc CD player). Ex. 1011,
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`1:6–10). A sort option is provided from which the user may select various
`sort options, such as genre, artist, and title. Id. at 5:58–63. If a genre sort is
`selected, a plurality of sub-options, including various genres to choose from,
`are displayed. Id. at 5:64–66. After the user has selected a genre,
`information relating to all CDS that are related to the associated genre is
`displayed. Id. at 6:2–5.
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`1. Claims 19, 21, and 25
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`Petitioner asserts that when the Birrell-Seidensticker combination is
`modified to employ the top-level “genre, artist, title” categories of Proehl,
`the selection of either “genre” or “artist” at the first menu level would lead
`to a listing of albums at the third level, as set forth in claims 19 and 21. Pet.
`84–87. Petitioner further asserts the combination teaches the specific genre-
`genre type-album name display screen hierarchy and “accessing at least one
`track,” as set forth in claim 25. Id. at 89–92. We have reviewed the
`information provided by Petitioner and determine, based on the current
`record and for purposes of this Decision, that Petitioner sufficiently
`establishes the combination of Birrell, Seidensticker, and Proehl teaches the
`limitations of claims 19, 21, and 25. See id. at 84–91.
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`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments that Petitioner fails to explain adequately why one of
`ordinary skill in the art would have combined Proehl with Birrell and
`Seidensticker. See Prelim. Resp. 46–49. Petitioner asserts a person of
`ordinary skill in the art would have had reason to employ Proehl’s music
`categorization hierarchy in the Birrell-Seidensticker combination to facilitate
`the location of albums and/or tracks within the device in a similar manner.
`Pet. 81. We find this to be sufficiently persuasive rationale, at this stage of
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`the proceeding and on the current record, to support combining the
`references.
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`We conclude Petitioner has demonstrated a reasonable likelihood of
`prevailing in establishing claims 19, 21, and 25 would have been obvious
`over the combination of Birrell, Seidensticker, and Proehl.
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`2. Claims 20, 22–24, 26–28
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`Claims 20, 22, 24, 26, and 28 recite “the playlist is an active queue
`list of songs that is currently being displayed.” To meet this limitation,
`Petitioner relies on the same disclosure of Birrell previously discussed with
`respect to claims 17 and 18 in Part II.C.3 supra. See Pet. 95. For the same
`reasons discussed in that section, we agree with Patent Owner that the cited
`disclosure of Birrell does not teach this limitation. Accordingly, we
`conclude Petitioner has not demonstrated a reasonable likelihood of
`prevailing in establishing 20, 22, 24, 26, and 28 would have been obvious
`over the combination of Birrell, Seidensticker, and Proehl.
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`3. Claims 23, 24, 27, and 28
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`Claims 23 and 27, and their respective dependent claims 24 and 28,
`recite a specific content of the hierarchy displayed in the claimed display
`screens. Petitioner asserts the combination of Birrell and Proehl teaches the
`album-CD-track hierarchy recited in claim 23 and the artist-artist names-
`album names hierarch recited in claim 25. Pet. 87–89, 92–95.
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`Patent Owner contends Proehl does not disclose any subcategories or
`items relating to its “artist” and “album” sort options and Petitioners do not
`allege that Birrell or Seidensticker adds anything towards satisfying this
`limitation. Prelim. Resp. 50; see also id. at 28–30. Specifically, Patent
`Owner asserts that what Petitioners identify as “categories,” Proehl calls
`“sort options” and that least some of the sort options are directed to sorting a
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`list, not hierarchical navigation. Id. at 29. Patent Owner argues that
`Petitioner assumes that se