Patent No. 6,928,433
`IPR2017-00595
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`
`CREATIVE TECHNOLOGY LIMITED
`Patent Owner
`
`U.S. Patent No. 6,928,433
`
`
`
`Case No. IPR2017-00595
`
`
`CREATIVE TECHNOLOGY LTD.’S PATENT OWNER
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`

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`Patent No. 6,928,433
`IPR2017-00595
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1 
`
`THE BOARD SHOULD DENY INSTITUTION OF THE PETITION IN
`ITS ENTIRETY AS AN IMPROPER SECOND BITE AT THE APPLE ..... 1 
`
`A.  The Board Has Discretion to Deny Institution Under 35 U.S.C.
`§ 325(d) Because the First Petition Involved the Same Prior Art and
`Arguments ............................................................................................... 1 
`
`B.  The Board Should Exercise its Discretion Under Section 325(d) to
`Deny Institution Because Petitioners Used the First IPR Decision as
`a Road Map to Present Arguments They Could Have Made in Their
`First Petition ............................................................................................ 3 
`
`C.  The Cases Cited by Petitioners Regarding Section 325(d) Are
`Distinguishable ........................................................................................ 8 
`
`III. TECHNOLOGY BACKGROUND ............................................................... 12 
`
`IV. CLAIM CONSTRUCTION .......................................................................... 15 
`
`A. 
`
`B. 
`
`“portable media player” (all claims via claim 1) .................................. 15 
`
`“display screen” and “present sequentially a first, second, and third
`display screen” (all claims via claim 1) ................................................ 19 
`
`V.
`
`PETITIONERS FAILED TO SHOW THAT THERE IS A
`REASONABLE LIKELIHOOD OF PREVAILING ON A
`CHALLENGED CLAIM .............................................................................. 22 
`
`A.  Ground 1: Petitioners Failed to Demonstrate that Looney
`Anticipates Claims 2, 3, 5, 7, or 17-18 .................................................. 22 
`
`1.  Looney does not disclose “present[ing] sequentially a first,
`second, and third display screen” (all claims) .............................. 22 
`
`2.  Looney does not disclose a “portable media player” (all
`claims) ........................................................................................... 27 
`
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`Patent No. 6,928,433
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`3.  Looney does not disclose accessing multiple tracks or a
`“plurality of tracks” from the second display screen (claims 2,
`3, and 17) ....................................................................................... 28 
`
`a.  The correct interpretation of the scope of claims 2-3 and 17
`require a group of tracks be “accessed” “based on a selection
`made” in the second display screen, not merely repeatedly
`selecting individual songs on a third screen ......................... 28 
`
`b. 
`
`Petitioners and their expert fail to present credible evidence
`of invalidity under the proper interpretation of claims 2-3 and
`17 ........................................................................................... 31 
`
`4.  Looney does not disclose adding tracks to “an active queue list
`of songs that is currently being played” (claims 17-18) ............... 33 
`
`B.  Ground 2: Petitioners Failed to Demonstrate that Looney in view of
`Proehl Renders Obvious Claims 2, 3, 17 or 19-28 ................................ 36 
`
`1.  The Looney-Proehl combination does not disclose a “portable
`media player” (all claims) ............................................................. 36 
`
`2. 
`
`Petitioners fail to provide evidence that a POSA would have
`been motivated to combine Proehl with Looney in a manner
`that cures Looney’s failure to disclose “present[ing]
`sequentially a first, second, and third display screen” (all
`claims) ........................................................................................... 36 
`
`3.  The Looney-Proehl combination does not satisfy the
`“accessing” limitation because the alleged accessing occurs on
`a fourth screen rather than on the first, second, or third screen
`under Petitioners’ theory (claims 19-22 and 25-28) ..................... 39 
`
`4. 
`
`Petitioners’ Looney-Proehl theory for claims 23-24 fails to
`satisfy the limitation requiring that the “accessing” be based
`on a selection of an album from the second screen ...................... 40 
`
`5.  The Looney-Proehl combination fails to disclose use of
`“artist” or “album” categories, as required by claims 23-24
`and 27-28 ....................................................................................... 41 
`
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`Petitioners’ alternative theory for claims 2-3 and 17 under the
`Looney-Proehl combination is unsupported by evidence ............. 45 
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`6. 
`
`C.  Ground 3: Petitioners Failed to Demonstrate that Looney in view of
`Proehl and Johnson Renders Obvious Claims 23-24 and 27-28 ........... 46 
`
`1. 
`
`2. 
`
`Johnson does not cure the deficiencies of the Looney-Proehl
`combination ................................................................................... 46 
`
`Petitioners fail to provide an adequate reason for combining
`Johnson with Looney and Proehl .................................................. 47 
`
`D.  The Secondary Considerations of Non-Obviousness Support
`Denying Institution ................................................................................ 49 
`
`1. 
`
`Industry praise supports a finding of nonobviousness .................. 50 
`
`2.  Licensing of the ’433 patent supports a finding of
`nonobviousness ............................................................................. 54 
`
`VI. CONCLUSION .............................................................................................. 56 
`
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`iii
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`Patent No. 6,928,433
`IPR2017-00595
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`EXHIBIT LIST
`
`Description
`[Intentionally Omitted]
`[Intentionally Omitted]
`Excerpts from Oxford English Dictionary (2006)
`Computer Desktop Encyclopedia online entry for
`“portable media player”
`Excerpts from Computer Desktop Encyclopedia (2001)
`Java2 Platform Std. Ed. version 1.3.1 - Application
`Programming Interface Documentation for
`java.awt.Component class (2001)
`Xbit.com, “Creative NOMAD Jukebox Digital Audio
`Player Review” (Nov. 7, 2000)
`MP3Newswire.net, “We Test Drive the Creative
`Nomad Jukebox” (Nov. 21, 2000)
`Excerpts from PCMagazine, “Gadget of the Month”
`(Oct. 17, 2000)
`MacWorld.com, “MP3 Jukeboxes” (May 1, 2001)
`Excerpts from PCWorld, “100 Plus Hours of Digital
`Music on the Go” (Nov. 2000)
`Apple Press Release, “Apple & Creative Announce
`Broad Settlement Ending Legal Disputes Between the
`Companies” (Aug. 23, 2006)
`Excerpts from American Intellectual Property Law
`Association – Report of the Economic Survey (2007)
`[Intentionally Omitted]
`Declaration of Tan Shao Mieng
`Creative Press Release, Apple & Creative Announce
`Broad Settlement Ending Legal Disputes Between the
`Companies (Aug. 24, 2006)
`Deposition Transcript of Dr. Benjamin B. Bederson
`(Feb. 16, 2017)
`
`iv
`
`
`
`Exhibit No.
`Creative-2001
`Creative-2002
`Creative-2003
`Creative-2004
`
`Creative-2005
`Creative-2006
`
`Creative-2007
`
`Creative-2008
`
`Creative-2009
`
`Creative-2010
`Creative-2011
`
`Creative-2012
`
`Creative-2013
`
`Creative-2014
`Creative-2015
`Creative-2016
`
`Creative-2017
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`

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`Patent No. 6,928,433
`IPR2017-00595
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`Description
`[Intentionally Omitted]
`[Intentionally Omitted]
`Complaint filed by Creative in Investigation No. 337-
`TA-753
`Complaint filed by Creative in Case No. 4:06-cv-
`03218-SBA (N.D.Cal.)
`First Amended Complaint filed by Apple in
`Investigation No. 337-TA-756
`First Amended Complaint filed by Apple in Case No.
`9:06-cv-00114-RC (E.D.Tex.)
`First Amended Complaint filed by Apple in Case No.
`3:06-cv-00263-BBC (W.D.Wis.)
`Docket sheet from ITC Investigation No. 337-TA-753
`Docket sheet from Case No. 4:06-cv-03218-SBA
`Docket sheet from ITC Investigation No. 337-TA-756
`Docket sheet from Case No. 9:06-cv-00114-RC
`Docket sheet from Case No. 3:06-cv-00263-BBC
`Revised Curriculum Vitae of Eric Bear
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`
`v
`
`Exhibit No.
`Creative-2018
`Creative-2019
`Creative-2020
`
`Creative-2021
`
`Creative-2022
`
`Creative-2023
`
`Creative-2024
`
`Creative-2025
`Creative-2026
`Creative-2027
`Creative-2028
`Creative-2029
`Creative-2030
`Creative-2031
`Creative-2032
`Creative-2033
`Creative-2034
`Creative-2035
`Creative-2036
`Creative-2037
`Creative-2038
`Creative-2039
`Creative-2040
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`Patent No. 6,928,433
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`Description
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`[Intentionally Omitted]
`M. Marriott, “DOWNTIME; New Ways to Play MP3
`Music, Without Plugs or Speakers” New York Times
`(Aug. 19, 1999)
`U.S. Patent No. 7,020,704
`
`Exhibit No.
`Creative-2041
`Creative-2042
`Creative-2043
`Creative-2044
`Creative-2045
`
`Creative-2046
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`
`
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`vi
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`TABLE OF AUTHORITIES
`
`Patent No. 6,928,433
`IPR2017-00595
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`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Communs., Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 37
`
`Apple Inc. v. Samsung Elecs. Co., Ltd.,
`2016 U.S. App. LEXIS 18225 (Fed. Cir. Oct. 7, 2016) ..................................... 49
`
`Epos Tech. Ltd. v. Pegasus Tech. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) .......................................................................... 20
`
`Ethicon Endo-Surgery, Inc. v. Covidien AG,
`IPR2016-00944, Paper 8 (PTAB Oct. 24, 2016) ............................................ 8, 10
`
`Genentech, Inc. v. USITC,
`122 F.3d 1409 (Fed. Cir. 1997) .......................................................................... 55
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 55
`
`Kinetic Technologies, Inc., v. Skyworks Solutions,
`IPR2014-00529, Paper 8 (PTAB Sept. 23, 2014) ............................................... 48
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 48
`
`NetApp Inc. v. Crossroads Systems, Inc.,
`IPR2015-00772, Paper 12 (PTAB Sept. 3, 2015) ................................................. 8
`
`Oxford Nanopore Tech. Ltd. v. Univ. of Wash.,
`IPR2015-00057, Paper 10 (PTAB Apr. 27, 2015) ............................................. 11
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .................................................................... 50, 54
`
`Samsung Elecs. Am., Inc. v. LED Tech Dev., LLC,
`IPR2014-00590, Paper 4 (PTAB Apr. 7, 2014) ................................................. 11
`
`
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`vii
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`Samsung Elecs. Am., Inc. v. LED Tech Dev., LLC,
`IPR2014-00590, Paper 23 (PTAB Sept. 3, 2014) ......................................... 10, 11
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`Patent No. 6,928,433
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`Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015) ................................................ 2
`
`South Alabama Medical Science Foundation v. Gnosis Spa,
`808 F.3d 823 (Fed. Cir. 2015) ............................................................................ 55
`
`Synaptics Inc. v. Amkor Technology Inc.,
`IPR2017-00085, Paper No. 12 (PTAB Apr. 18, 2017) ......................................... 2
`
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................ 30
`
`Transocean Offshore Deepwater v. Maersk Drilling,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 56
`
`Travelocity.com L.P. v. Cronos Tech., LLC,
`CBM2015-00047, Paper 7 (PTAB June 15, 2015) ............................................... 8
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) ................................................ 3
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) ......................................... 8, 11
`
`Statutes, Rules, and Regulations
`35 U.S.C. § 325(d) ............................................................................................passim
`
`37 C.F.R. §42.6(a)(3) ............................................................................................... 47
`
`37 C.F.R. §42.65(a) .................................................................................................. 32
`
`37 C.F.R. § 42.71 ....................................................................................................... 4
`
`37 C.F.R. § 42.107(a) ............................................................................................... 15
`
`Fed. R. Evid. 201(b)(2) ............................................................................................ 55
`
`
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`I. INTRODUCTION
`The Board should deny the Petitioners’ second request for inter partes
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`review of U.S. Patent No. 6,928,433 (“the ’433 patent”) because the Petitioners
`
`seek a second bite at the apple by re-arguing the same invalidity grounds for which
`
`this Board previously denied institution in IPR2016-01407 (“First IPR”). The
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`Board should also deny institution because this Petition is based on incorrect claim
`
`constructions, the prior art fails to disclose each claim element, the asserted
`
`obviousness grounds are incomplete and do not adequately justify the asserted
`
`combinations, and secondary considerations of nonobviousness support
`
`patentability.
`
`For these reasons, as expressed more fully below, the Petitioners have failed
`
`to demonstrate that there is a reasonable likelihood of prevailing with respect to at
`
`least one of the challenged claims. Accordingly, the Board should deny the
`
`Petition.
`
`II. THE BOARD SHOULD DENY INSTITUTION OF THE PETITION IN
`ITS ENTIRETY AS AN IMPROPER SECOND BITE AT THE APPLE
`A. The Board Has Discretion to Deny Institution Under 35 U.S.C. § 325(d)
`Because the First Petition Involved the Same Prior Art and Arguments
`
`Pursuant to 35 U.S.C. § 325(d), the Office may “reject [a second] petition or
`
`request [for post-grant review] because, the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” Thus, it is well-established
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`1
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`

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`that under 35 U.S.C. § 325(d), “a petitioner is not entitled to multiple challenges
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`against a patent.” Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs.,
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`LP, IPR2015-00118, Paper 14 at 6 (PTAB Jan. 28, 2015). Under the “second bite
`
`at the apple” doctrine, this Board has consistently denied institution of successive
`
`petitions for inter partes review where the same petitioners seek review of the
`
`same patent using the same prior art presented in a prior petition:
`
`We disfavor allowing follow-on petitions that attempt to fix
`deficiencies in a previous petition that were explained in a previous
`decision on institution. Unilever, Inc., Case IPR2014-00506, slip op.
`at 8 (“Based on the information presented, we are persuaded that the
`instant Petition uses our prior Decision on Institution to bolster
`challenges that were advanced, unsuccessfully, in the 505 Petition.”);
`Conopco, Inc. v. The Procter & Gamble Co., Case IPR2014-00506
`slip op. at 4–5 (PTAB Dec. 10, 2014) (Paper 25) (Informative Opinion
`Denying Pet’s Request for Rehearing). Such an approach “would
`allow petitioners to unveil strategically their best prior art and
`arguments in serial petitions, using our decisions on institution as a
`roadmap, until a ground is advanced that results in review—a practice
`that would tax Board resources, and force patent owners to defend
`multiple attacks.”
`Synaptics Inc. v. Amkor Technology Inc., IPR2017-00085, Paper No. 12 at 10
`
`(PTAB Apr. 18, 2017).
`
`
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`2
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`In particular, this Board has consistently denied institution of follow-on
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`petitions where the petitioner is merely presenting additional reasoning to support
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`its assertion of unpatentability over the same prior art that the petitioner presented
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`in the original petition. Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations
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`LLC, IPR2014-01080, Paper 17 at 5-6 (PTAB Oct. 31, 2014) (denying petition
`
`where “Petitioner simply presents an argument now that it could have made in [the
`
`prior proceeding], had it merely chosen to do so.”).
`
`There is no dispute that 35 U.S.C. § 325(d) applies to this petition. This
`
`petition challenges the same claims of the same patent as challenged in the First
`
`IPR (which remains pending), and was filed by the same petitioners. There is also
`
`no dispute that the present petition involves “the same or substantially the same
`
`prior art or arguments previously were presented”—all of the prior art and grounds
`
`in the present petition were asserted in the First IPR.
`
`B.
`
`The Board Should Exercise its Discretion Under Section 325(d) to Deny
`Institution Because Petitioners Used the First IPR Decision as a Road
`Map to Present Arguments They Could Have Made in Their First
`Petition
`
`The only differences between the present petition (“Second IPR”) and the
`
`petition in the First IPR are attempts by Petitioners to “fix deficiencies” and bolster
`
`arguments in their first petition. Petitioners imply that this follow-on petition
`
`merely addresses a single issue which caused denial of Grounds 1-3 in the First
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`IPR petition: whether Looney discloses a “portable media player.” Pet.3-5.1 They
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`suggest that the prior decision on institution was incorrect, pointing to an “alternate
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`[laptop] embodiment” in Looney. Pet.2-3. To the extent that were true, then
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`Petitioners’ remedy would have been to file a request for rehearing in the First IPR.
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`37 C.F.R. § 42.71. That Petitioners elected not to file a request for rehearing, and
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`instead filed the Second IPR as a follow-on petition, demonstrates that Petitioners
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`chose to rely on other embodiments of Looney, and are only relying on the
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`alternate laptop embodiment after receiving the benefit of the Board’s
`
`interpretation of the term “portable media player” and how that term applied to
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`Looney’s other embodiments. Compare IPR2016-01407, Paper No. 2 at 18
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`(relying on Looney’s “mobile” unit with “separate” “base unit” for “dock[ing]”)
`
`with Pet.3-4 (relying on Looney’s “alternate” “‘laptop’ embodiment”). This is a
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`classic example of an improper “second bite” by using the Patent Owner’s
`
`arguments and the Board’s analysis to file a successive petition on the same prior
`
`art.
`
`Moreover, contrary to Petitioners’ arguments, the Second IPR petition uses
`
`the Board’s decision and Patent Owner’s arguments from the First IPR to a far
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`
`1
`Citations to “Pet.” herein are citations to the present petition in the Second
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`IPR.
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`4
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`greater extent than Petitioners acknowledge. Indeed, as demonstrated by the
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`supplemental declaration filed by Petitioners’ expert, Petitioners have used the
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`events in the First IPR to fix deficiencies and bolster their arguments on a variety
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`of issues throughout their petition. For example, in the First IPR, Petitioners
`
`advanced an unworkable construction of “display screen” that was plainly
`
`inconsistent with the teachings of the ’433 patent and their own prior art.
`
`IPR2016-01407, Paper No. 2 at 12-14. The Petitioners’ expert applied that
`
`construction in his opinions rendered in the First IPR. Ex. 1006 ¶¶48-53.2 In the
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`prior proceeding, Patent Owner argued that such a construction was unreasonable
`
`and that Petitioners’ invalidity theory was untenable under a proper construction.
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`IPR2016-01407, Paper No. 10 at 8-15, 18-19. The Board agreed that the
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`Petitioners’ construction was flawed and adopted the Patent Owner’s proposed
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`construction. IPR2016-01407, Paper No. 13 at 7-9. However, because of the
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`Board’s finding regarding “portable media player,” the Board never reached the
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`issue of whether or not Looney disclosed the “present sequentially a first, second,
`
`and third display screen” limitation under that construction.
`
`
`2
`Ex. 1006 in this proceeding is the same declaration from Petitioners’ expert
`
`as Ex. 1006 in the First IPR. Pet.5.
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`5
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`The present petition plainly uses Patent Owner’s arguments and the Board’s
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`claim construction decision regarding “display screen” as a roadmap for bolstering
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`their inadequate prior petition. In particular, their expert’s supplemental
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`declaration expressly responds to Patent Owner’s arguments in the First IPR
`
`proceeding, and articulates the new theory that “[e]ach song entry is a new user
`
`interface element at least because it is new text presented on the display.” Ex.
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`1017 ¶¶13-16. Thus, the Petitioners plainly rely on the Board’s construction of
`
`“display screen” and the Patent Owner’s arguments from the prior proceeding to
`
`bolster arguments that could have been presented in that earlier proceeding.
`
`Petitioners have also used the Board’s decision and Patent Owner’s
`
`arguments to bolster their arguments with respect to the Proehl reference (Ex.
`
`1011). In the prior proceeding, Patent Owner argued that Proehl’s “sort options”
`
`did not disclose the series of screens for browsing “album” and “artist” hierarchies
`
`recited by claims 23-24 and 27-28. IPR2016-01407, Paper No. 13 at 19-20. The
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`Board accepted this argument, stating that “[w]e agree with Patent Owner that
`
`Proehl describes its artist and title categories as ‘sort options’” and therefore
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`“Petitioner fails to persuade us that one skilled in the art would have understood
`
`the selection of title or artist ‘sort options’ to implicitly result in the display of the
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`recited subcategories.” Id. Once again, Petitioners used these arguments and the
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`Board’s findings to bolster their petition. In particular, their expert’s supplemental
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`declaration now provides testimony expressly responding to Patent Owner’s
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`arguments in the First IPR, and arguing that “while Proehl labels its hierarchical
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`navigation as ‘sorting,’ a POSA would understand from its description of top-level
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`options and sub-options that the functionality is not mere sorting and is more akin
`
`to hierarchical filtering or navigation.” Ex. 1017 ¶¶17-20. Thus, the Petitioners
`
`plainly rely on the Board’s interpretation of Proehl and the Patent Owner’s
`
`arguments from the prior proceeding to bolster arguments presented in that
`
`proceeding.
`
`Beyond the material in which Petitioners have bolstered their arguments
`
`from the First IPR with new expert testimony, the present petition also contains
`
`extensive attorney argument which improperly attempts to respond to arguments
`
`made by the Patent Owner in the First IPR. For example, Petitioners attempt to
`
`bolster their arguments regarding claim 2 by responding to Patent Owner’s claim
`
`interpretation arguments from the First IPR. Pet.40-41. Petitioners also respond to
`
`Patent Owner’s arguments from the First IPR in discussing the “accessing”
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`limitation under Petitioner’s Looney-Proehl theory. Pet.61, 65. Moreover,
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`Petitioners have added an entire section to their Petition responding to Patent
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`Owner’s secondary considerations arguments from the First IPR—despite the fact
`
`that Petitioners declined to include any analysis of the secondary considerations in
`
`their petition in the First IPR. Pet.78-79.
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`7
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`C. The Cases Cited by Petitioners Regarding Section 325(d) Are
`Distinguishable
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`Despite the fact that this petition is plainly a follow-on petition by the same
`
`petitioners to bolster their arguments from the First IPR, Petitioners cite case law
`
`that supposedly supports the notion that it would be proper for the Board to
`
`exercise its discretion under section 325(d) to permit institution. None of those
`
`arguments have merit. Petitioners cite to ZTE Corp. v. ContentGuard Holdings,
`
`Inc., IPR2013-00454, Paper 12 at 6 (PTAB Sept. 25, 2013), a case where the
`
`Board denied institution under section 325(d), arguing that it was denied based
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`merely on the fact that the second petition would have been time-barred if it had
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`not been subject to a motion for joinder to the first petition. Pet.5-6. However,
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`that is a straw man—nothing in section 325(d) mentions or relates to joinder or the
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`section 315(b) one-year filing bar. Although filing follow-on petitions after the bar
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`date was noted as especially egregious in ZTE Corp., this Board has regularly
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`exercised its discretion to deny institution under section 325(d) even when the
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`second petition was filed prior to the one-year bar. See, e.g., Travelocity.com L.P.
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`v. Cronos Tech., LLC, CBM2015-00047, Paper 7 at 13 (PTAB June 15, 2015);
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`NetApp Inc. v. Crossroads Systems, Inc., IPR2015-00772, Paper 12 at 7 (PTAB
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`Sept. 3, 2015).
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`Petitioners also cite to Ethicon Endo-Surgery, Inc. v. Covidien AG,
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`Patent No. 6,928,433
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`IPR2016-00944, Paper 8 at 6 (PTAB Oct. 24, 2016), another case where the Board
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`denied institution under section 325(d). Pet.6. Petitioners characterize that case as
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`one where “the second petition was based on the Board’s claim construction,
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`which the petitioner had plainly anticipated (and thus should have addressed) in its
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`First IPR petition.” Pet.6. Petitioners argue that “Petitioners reasonably did not
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`foresee that the Board would adopt a construction of ‘portable media player’ that
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`excluded the embodiments of Looney relied upon in the First Petition.” Id. This
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`plainly mischaracterized what occurred. As a threshold issue, Patent Owner
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`argued that “portable media player” was limited to “hand-held” devices—a claim
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`construction that Petitioners were aware of from the prior proceedings in the
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`International Trade Commission. IPR2016-01407, Paper No. 2 at 11. Thus,
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`Petitioners knew the term would be an important claim construction and
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`infringement issue, but Petitioners declined to present significant analysis
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`regarding the disclosure of a portable media player in Looney. Id. at 17-18.
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`The Board rejected Patent Owner’s claim construction arguments in the First
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`IPR and instead construed the term using a general-purpose dictionary as “a device
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`capable of being easily and conveniently transported that can play media content,
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`such as audio or video content.” IPR2016-01407, Paper No. 13 at 7. Thus, the
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`Board’s decision denying institution in the prior proceeding did not result from its
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`claim construction, and certainly had nothing to do with an “unexpected” claim
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`construction. Instead, the Board’s determination to deny institution based on
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`Looney was due to the fact that Petitioners intentionally chose to rely on
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`embodiments of Looney which plainly could not be both “portable” and a “media
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`player” at the same time. IPR2016-01407, Paper No. 2 at 17-18; Ex. 1006 ¶57.
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`Thus, contrary to Petitioners’ argument, there was no surprise. Even if there
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`were, nothing in Ethicon Endo-Surgery holds that section 325(d) only applies
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`where the party had express advanced notice that its arguments were untenable.
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`IPR2016-00944, Paper 8 at 6. Moreover, Petitioners wholly fail to explain why
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`their new arguments regarding the “display screen” limitation, or their new
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`arguments regarding the disclosures in Proehl, are justified by some non-
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`foreseeable circumstances. Plainly, the discretion to deny institution under section
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`325(d) would be meaningless if Petitioners were allowed to file successive
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`petitions to correct any deficient or unsuccessful arguments in their original
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`petition.
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`Petitioners point to Samsung Elecs. Am., Inc. v. LED Tech Dev., LLC,
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`IPR2014-00590, Paper 23 (PTAB Sept. 3, 2014) as allegedly supporting the
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`argument that it is proper to file a second petition for review of the same claims of
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`the same patent with the same prior art. Petitioners cite to the Board’s statement in
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`LED Tech that the second “Petition relies on certain disclosures of LT1300 that
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`were not relied upon in the [first] Petition.” Pet.8. But that case involved a single
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`prior art reference with an alternate “mode of operation” which was not involved in
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`the prior petition. IPR2014-00590, Paper No. 4 at 14. Additionally, as stated
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`above, Petitioners have gone far beyond merely bringing attention to an additional
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`disclosure in a single prior art reference—they have addressed and responded to a
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`number of faults identified by the Board in the original petition, including
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`Petitioners’ construction of “displays screen” and Petitioners’ interpretation of
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`Proehl’s sort options. Moreover, unlike ZTE Corp. v. ContentGuard Holdings and
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`numerous other cases in which institution was denied under section 325(d), the
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`LED Tech case has not been designated an informative opinion by the Board.
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`Petitioners also cite to Oxford Nanopore Tech. Ltd. v. Univ. of Wash.,
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`IPR2015-00057, Paper 10 (PTAB Apr. 27, 2015) as “evaluating prior art that had
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`been presented in a prior, denied IPR petition on its merits; instituting IPR trial on
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`certain grounds and denying institution of other grounds.” But that case
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`“involve[d] only a single additional ground, involving a single claim already under
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`challenge” instituted on a ground which the Board expressly characterized as “not
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`present[ing] substantially the same arguments as presented in the [prior] Petition.”
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`Id. By contrast, here, Petitioners are asserting invalidity of all of the existing
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`claims on an entirely new set of grounds that were previously presented and
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`rejected by the Board. Indeed, the Board could and likely would have denied
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`institution of the present grounds in the First IPR as redundant of the instituted
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`grounds had the Board not resolved those grounds on the basis of the “portable
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`media player” limitation. Indeed, instituting this petition would be far more
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`prejudicial than the cases upon which Petitioners rely because Patent Owner would
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`be forced to argue against multiple grounds per claim.
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`Thus, Petitioners’ arguments against exercising the Board’s discretion to
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`deny institution under section 325(d) are without merit. This is a classic case of
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`Petitioners trying to get a second bite at the apple, where Petitioners have used the
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`Patent Owner’s arguments and the Board’s decision in the prior IPR to bolster their
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`arguments. Moreover, adding another proceeding with an additional ground for
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`each claim of the ’433 patent would be extremely prejudicial to the Patent Owner
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`and present an unjustified burden on the Board’s resources. Accordingly, the
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`Board should deny institution of this second petition in its entirety.
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`III. TECHNOLOGY BACKGROUND
`At the time of the invention, there were significant problems with the user
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`interfaces of prior art portable media players. As the patent explains, “small,
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`portable music playback devices [could] store hundreds, even thousands, of
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`compressed songs and [could] play back the songs at high quality.” Ex. 1001 at
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`1:19-24. However, “typically, portable devices have a user interface including a
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`small screen” and “[t]he small size…limits the number, size, shape, and types of
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`user input controls that can be mounted on the device.” Id. As a result, “[m]ajor
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`problems facing the consumer” were “organizing and accessing the tracks,” a