Trials@uspto.gov
`571.272.7822
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` Paper 12
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` Entered: May 26, 2017
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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,
`
`v.
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`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00595
`Patent 6,928,433
`____________
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`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
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`571.272.7822
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` Paper 12
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` Entered: May 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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,
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00595
`Patent 6,928,433
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
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`IPR2017-00595
`Patent 6,928,433
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`On January 6, 2017, Sony Corporation, Sony Mobile
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`Communications (USA) Inc., Sony 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 1 (“Pet.”). Creative Technology Limited (“Patent Owner”)
`filed a Preliminary Response on May 1, 2017. Paper 11 (“Prelim. Resp.”).
`Petitioner also filed a Motion for Joinder concurrently with the Petition.
`Paper 3. Patent Owner filed an Opposition to Petitioner’s Motion for
`Joinder (Paper 7) on February 6, 2017, and Petitioner filed a Reply to Patent
`Owner’s Opposition (Paper 8) on March 6, 2017.
`
`We exercise our discretion under 35 U.S.C. § 314(a) and 37 C.F.R.
`§ 42.108(a) not to institute an inter partes review. Further, the Motion for
`Joinder is denied.
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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. See Ex. 1002.
`
`The ’433 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 2:12–29. 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 tracks.
`Id. at 3:4–7.
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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
`
`Because all of the challenged claims depend from claim 1, which was
`canceled in the reexamination, we use that canceled claim to illustrate the
`subject matter:
`1. A method of selecting at least one track from a
`plurality of tracks stored in a computer-readable medium of a
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`portable media player configured to present sequentially a first,
`second, and third display screen on the display of the media
`player, the plurality of tracks accessed according to a 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
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`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
`
`Ex. 1009
`Ex. 1011
`Ex. 1012
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`D. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’433 patent
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`over the following combinations of references:
`References
`Basis
`35 U.S.C. § 102(b)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`Looney
`Looney and Proehl
`Looney, Proehl, and Johnson
`
`
`Claims
`2, 3, 5, 7, 17, 18
`2, 3, 17, 19–28
`23, 24, 27, 28
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`E. Related Proceedings
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`Petitioner and Patent Owner identify numerous matters as related to
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`this proceeding, including several district court litigations, a pending appeal
`in the United States Court of Appeals for the Federal Circuit of a decision in
`a United States International Trade Commission investigation, and a pending
`inter partes review proceeding of the ’433 patent (IPR2016-01407)
`involving the same parties as the instant Petition. See Pet. 13–14; Paper 2–3.
`II. ANALYSIS
` A. Discretionary Non-Institution
`Petitioner previously filed a Petition (“First Petition”) requesting an
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`inter partes review of claims 2, 3, 5, 7, and 17–28 of the ’433 patent, the
`same claims challenged in the instant Petition. See Sony Corp. v. Creative
`Tech. Ltd., Case IPR2016–01407 (PTAB July 11, 2016) (Paper 2). In the
`First Petition, Petitioner challenged the patentability of the claims based on
`the following grounds:
`References
`
`Claims
`Basis
`2, 3, 5, 7, 17, 18
`35 U.S.C. § 102(b)
`Looney
`2, 3, 19–28
`35 U.S.C. § 103(a)
`Looney and Proehl
`23, 24, 27, 28
`35 U.S.C. § 103(a)
`Looney, Proehl, and Johnson
`2, 3, 5, 7, 17, 18
`35 U.S.C. § 103(a)
`Birrell1 and Seidensticker2
`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
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`1 U.S. 6,332,175; issued Dec. 18, 2001.
`2 U.S. 6,128,012; issued Oct. 3, 2000.
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`Claims
`24 and 28
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`Basis
`35 U.S.C. § 103(a)
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`References
`Birrell, Seidensticker, Proehl,
`Johnson, and Looney
`See Pet. 1–2. The grounds in the First Petition based on Looney are nearly
`identical to the grounds asserted in this Petition. The only difference is the
`addition in this Petition of claim 17 to the obviousness challenge based on
`Looney and Proehl.
`
`On December 6, 2016, in IPR2016-01407, we instituted trial on
`claims 2, 3, 5, 7, and 17–28 of the ’433 patent (all challenged claims) on the
`obviousness grounds based on Birrell and Seidensticker. Case IPR2016-
`01407, slip op. at 12–25 (PTAB Dec. 6, 2016) (Paper 13) (“First Pet. Dec.”).
`We denied institution on the grounds based on Looney alone, or in
`combination with Proehl and Johnson, because we concluded Petitioner had
`not shown the cited references disclose “a portable media player,” a term
`appearing in all challenged claims. See id. at 9–12.
`
`Here, Petitioner relies on a different embodiment of Looney to meet
`the “portable media player” limitation than it relied on in the First Petition.
`Pet. 4. Petitioner asserts that, otherwise, much of the analysis is identical to
`that presented in the First Petition. Id. at 4, 7. Petitioner relies on the same
`expert declaration submitted with the First Petition, along with a
`supplemental declaration from the same witness, Benjamin B. Bederson,
`Ph.D. (Ex. 1017). Id. at 5. While recognizing the Board’s discretion to deny
`institution under U.S.C. § 325(d), Petitioner seeks to distinguish the present
`circumstances from situations in which the Board has exercised that
`discretion to decline institution. Id. In particular, Petitioner contends that:
`(i) the present Petition was filed months in advance of the § 315(b) bar date;
`(ii) Petitioner reasonably did not foresee the construction of “portable media
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`player” adopted by the Board would exclude the embodiments of Looney
`relied upon in the First Petition; and (iii) the instant Petition relies on an
`embodiment of Looney not relied upon in the First Petition to meet the
`“portable media player” limitation, as that term is construed in the First
`Petition. See id. at 5–9.
`
`Patent Owner responds that exercising our discretion under 35 U.S.C.
`§ 325(d) to deny institution is warranted because this Petition involves the
`same prior art and arguments as the First Petition. Prelim. Resp. 1. Patent
`Owner argues Petitioner has improperly used our Decision on the First
`Petition as a roadmap to present arguments here that should have been made
`in the First Petition or at least in a request for rehearing of the prior
`Decision. Id. at 3–4. Patent Owner further asserts this Petition uses the
`prior Decision and Patent Owner’s arguments presented in IPR2016-01407
`to fix deficiencies and bolster arguments on a variety of issues. Id. at 4–7.
`Additionally, Patent Owner argues our Decision on the First Petition did not
`result from an “unexpected” claim construction, but instead was due to the
`fact that Petitioner intentionally chose to rely on embodiments of Looney
`that could not simultaneously be “portable” and a “media player.” Id. at 9–
`10.
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). The Board has previously considered the
`following factors in deciding whether to exercise discretion not to institute
`review:
`(a) the finite resources of the Board;
`(b) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review;
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`(c) whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`(d) whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should have
`known of it;
`(e) whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`(f) the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing of
`the second petition; and
`(g) whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same
`claims of the same patent.
`See, e.g., NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB
`May 4, 2016) (Paper 9). After evaluating these factors, we determine the
`circumstances here weigh against institution.
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`1. Factors (a) and (b)
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`The Board has limited resources to meet its obligation to issue a final
`determination in an inter partes review not later than one year after the date
`of institution. In general, “it is more efficient for the parties and the Board
`to address a matter once rather than twice.” Samsung Elec. Co. v.
`Rembrandt Wireless Techs., LP, Case IPR2015-00114, slip op. at 6 (PTAB
`Jan. 28, 2015) (Paper 14). Petitioner’s piecemeal approach of filing a
`second Petition to remedy deficiencies with its original Petition—especially
`after review was instituted on all claims challenged in the original Petition—
`is inconsistent with that objective of efficiency. Therefore, these factors
`weigh against institution.
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`2. Factors (c) and (d)
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`Factors (c) and (d) also weigh significantly against institution. Not
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`only did the First Petition challenge exactly the same claims as the instant
`Petition, it challenged those claims with the same prior art that is now
`reasserted. See First Pet. Dec. 4–5, 25; compare Pet. 17, with First. Pet. Dec.
`4–5. We accord these factors particular weight because even Petitioner’s
`new application of Looney would not result in the addition of any
`challenged claim to the instituted proceeding.
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`3. Factor (e)
`
`In preparing the instant Petition, Petitioner benefitted from the
`opportunity to evaluate both Patent Owner’s Preliminary Response to the
`First Petition and our Decision instituting review based on the First Petition.
`Petitioner acknowledges that it used that opportunity to adjust not only
`arguments presented in this Petition, but also testimony of its witness, Dr.
`Bederson. See Ex. 1017 (testifying that both Patent Owner’s Preliminary
`Response and the Board’s Institution Decision in IPR2016-01407 were
`considered in preparing the supplemental declaration). Furthermore, as
`discussed in our analysis of factors (f) and (g) below, Petitioner uses our
`Decision on the First Petition as a road-map to fix deficiencies in the First
`Petition with the identification of the claimed “portable media player” in the
`prior art. We are mindful of the potential inequity that results when a
`petitioner files multiple challenges against a patent, while having the
`opportunity to adjust positions along the way based on a patent owner’s
`contentions and our decision on a prior challenge. See NVIDIA, slip op. at 8.
`Therefore, this factor weighs strongly against institution.
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`4. Factors (f) and (g)
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`These factors also weigh against institution, particularly because
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`Petitioner inadequately explains its failure to identify an embodiment of
`Looney that supported its position in the First Petition. Our construction of
`“portable media player” as “a device capable of being easily and
`conveniently transported that can play media content, such as audio or video
`content,” was based on such routine considerations as the ordinary meaning
`of “portable” and express language in the Specification describing the type
`of content that can be played by the portable media player. See First Pet.
`Dec. 6–7. We are not persuaded that there was anything unexpected in our
`approach that might justify a second petition on the basis of surprise.
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`Petitioner did not present a specific construction of “portable media
`player” in the First Petition. Instead, Petitioner took the position that any
`proper interpretation of this term under the broadest reasonable
`interpretation standard would necessarily encompass the media playing
`devices of Looney. First. Pet. 11.
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`Petitioner now asserts it did not anticipate that the embodiments
`described by Looney as “playback devices” or “playback units” would fail to
`qualify as “portable media players.” Pet. 7. Petitioner does not explain why
`our construction of “portable media player” was unexpected. Rather,
`Petitioner failed to recognize that the embodiments of Looney relied on in
`the First Petition do not show portable units that are themselves capable of
`playing media content, but instead describe units that must be docked with
`other devices (speakers, amplifiers, or a main audio system) to enable music
`to be played. First. Pet. Dec. 11; see Ex. 1009, 12:59–63, 13:22–26. We
`agree with Patent Owner that Petitioner should have presented its arguments
`that the laptop embodiment disclosed in Looney meets the “portable media
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`player” limitation in the First Petition. We are not persuaded by Petitioner’s
`contention that it reasonably did not foresee our claim construction would
`exclude embodiments of Looney relied on in the First Petition. See Pet. 6.
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`5. Conclusion
`
`Although there may be circumstances where a “second bite” for a
`petitioner is appropriate, this case is not one of them. Evaluating the
`respective Nvidia factors, we conclude that they weigh strongly against
`instituting a second review.
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`For the foregoing reasons, we exercise our discretion under 35 U.S.C.
`§ 314(a) and 37 C.F.R. § 42.108(a) not to institute an inter partes review in
`this proceeding with respect to claims 2, 3, 5, 7, and 17–28 of the ’433
`patent.
`B. Motion for Joinder under 35 U.S.C. 315(c)
`
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`Joinder with another inter partes review is appropriate only when the
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`petition sought to be joined “warrants institution of an inter partes review.”
`35 U.S.C. § 315(c). For the reasons discussed previously, the Petition does
`not warrant institution of an inter partes review. Accordingly, we deny
`Petitioner’s Motion for Joinder.
`III. ORDER
`In view of the foregoing, it is
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`ORDERED that Petitioner’s request for inter partes review of claims
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`2, 3, 5, 7, and 17–28 of U.S. Patent 6,928,433 is denied; and
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`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`denied.
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`IPR2017-00595
`Patent 6,928,433
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`PETITIONER:
`
`Randy Pritzker
`Michael Rader
`Robert Abrahamsen
`Andrew Tibbetts
`WOLF, GREENFIELD & SACKS, P.C.
`rpritzker-ptab@wolfgreenfield.com
`mrader-ptab@wolfgreenfield.com
`rabrahamsen-ptab@wolfgreenfield.com
`atibbetts-ptab@wolfgreenfield.com
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`PATENT OWNER:
`
`Jonathan Baker
`Gurtej Singh
`FARNEY DANIELS PC
`jbaker@farneydaniels.com
`tsingh@farneydaniels.com
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`Russ Swerdon
`CREATIVE LABS, INC.
`russ_swerdon@creativelabs.com
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`12
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