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
`_____________
`
`Case No. TBD
`Patent No. 6,928,433
`_____________
`
`SONY EXHIBIT 1017
`SONY v. Creative
`
`
`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
`_____________
`
`Case No. TBD
`Patent No. 6,928,433
`_____________
`
`SONY EXHIBIT 1017
`SONY v. Creative
`
`
`
`
`
`
`
`
`
`I, Benjamin B. Bederson, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
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`Sony Corporation, Sony Mobile Communications (USA) Inc. (SoMC-USA), Sony
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`Mobile Communications AB, and Sony Mobile Communications Inc. (collectively,
`
`“Petitioners”), to submit this supplemental declaration in connection with the
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`Petition for Inter Partes Review of claims 2, 3, 5, 7, and 17-28 of U.S. Patent No.
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`6,928,433 (“the ’433 patent”) (Ex. 1001), as amended by Inter Partes
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`Reexamination Certificate (469th) (Ex. 1002). I am being compensated for my
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`time at a rate of $600.00 per hour, plus actual expenses. My compensation is not
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`dependent in any way upon the outcome of the Petition.
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`2.
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`I previously submitted a declaration (“First Declaration”) in
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`connection with Case No. IPR2016-01407 (“First IPR”). This declaration
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`supplements my First Declaration to account for the Board’s construction of the
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`terms “portable media player” and “display screen” set forth in the Institution
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`Decision in the First IPR. IPR2016-01407, Paper 13, 5-9. The information
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`concerning my background and experience and materials reviewed that was
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`presented in my First Declaration remains accurate. The only additional items I
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`considered in preparing this supplemental declaration were the Patent Owner
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`
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`1
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`
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`
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`Preliminary Response in the First IPR, IPR2016-01407, Paper 10, and the Board’s
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`Institution Decision in the First IPR, IPR2016-01407, Paper 13.
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`Portable Media Player
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`I understand that in the Institution Decision in the First IPR, the Board
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`3.
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`construed “portable media player” to mean “a device capable of being easily and
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`conveniently transported that can play media content, such as audio or video
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`content.” Id. at 7. The Board, moreover, specifically rejected Patent Owner’s
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`assertion that a portable media player must be a “hand-held device.” Id. at 6-7.
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`4.
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`Looney describes “a music organizer,” which may be “laptop” device
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`that is “designed for portability,” with a user interface for “playing back music
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`according to a variety of predetermined categories.” Ex. 1009 (“Looney”),
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`Abstract, Fig. 2, 3:21-23, 5:6-25.
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`5.
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`Looney’s “laptop” embodiment is depicted in Fig. 2 (reproduced
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`below):
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`
`
`2
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`
`
`
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`Looney, Fig. 2.
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`6.
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`Looney explains how this “laptop” embodiment incorporates all
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`components needed to play back digitally stored music in a battery-operated,
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`stand-alone device that can be readily transported because of its “laptop” design:
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`With reference to FIG. 2, an alternate embodiment of a center 90 is
`detailed. This is center comprises a laptop arrangement having a base
`92 and a foldable display section 94. This center can comprise, in
`essence, a modified laptop computer with all the basic components of
`a modern multimedia computer system. Certain personal computer
`components not specifically required for the purposes of this
`embodiment can be omitted. For example, a display 96 having buttons
`98 as described above can be provided. A plurality of speakers 100
`can also be provided representing base, midrange, tweeters, etc.
`Volume and screen display controls 102 can also be provided as well
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`
`
`3
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`
`
`
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`as a basic alphanumeric keyboard 104 of conventional design. A
`retracting compact disc tray and reader 106 can also be provided. An
`onboard battery (not shown) provides power while an AC/DC
`converter 108 recharges the unit based upon household current
`provided by a power cord 110. Note that automotive DC current can
`also be used.
`Id. at 5:6-25.
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`7.
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`Looney further explains that this particular embodiment is “an
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`exemplary music organizer and entertainment center designed for portability.” Id.
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`at 3:21-23 (emphasis added).
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`8.
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`The laptop embodiment of Looney is a device capable of being easily
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`and conveniently transported. The laptop embodiment of Looney is also a device
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`“that can play media content, such as audio or video content” while being easily
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`and conveniently transported, including due to the speakers and on-board battery
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`of the device.
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`9.
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`In my opinion, the “laptop” embodiment depicted in Fig. 2 and
`
`described at column 5, lines 6-25 of Looney is a “portable media player,” as that
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`term has been construed by the Board. IPR2016-01407, Paper 13 at 9.
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`
`
`Display Screen
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`10.
`
`I understand that in the Institution Decision, the Board construed
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`“display screen” to mean “a particular set of user interface elements presented on
`
`the display of a device.” IPR2016-01407, Paper 13 at 9.
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`
`
`4
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`
`
`
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`11.
`
`In my First Declaration, I described various instances in which
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`Looney, either by itself or in combination with Proehl and/or Johnson, depicted
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`what I referred to as a First Display Screen, a Second Display Screen, and a Third
`
`Display Screen. In each of those instances, each of the First Display Screen, the
`
`Second Display Screen, and the Third Display Screen is a different “display
`
`screen,” as the Board has construed that term, because each such screen includes a
`
`different particular set of user interface elements presented on a display of a
`
`device.
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`12.
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`In my First Declaration, the First Display Screen depicted in
`
`paragraph 60 includes a first particular set of user interface elements that includes
`
`user interface elements for a group of “Categories” that are presented on the
`
`display of the Looney device, including Looney’s laptop embodiment. The Second
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`Display Screen depicted in paragraph 61 of my First Declaration includes a second
`
`particular set of user interface elements that includes user interface elements for a
`
`group of “Subcategories” that are presented on the display of the Looney device,
`
`including Looney’s laptop embodiment. The Third Display Screen depicted in
`
`paragraph 62 of my First Declaration includes a third particular set of user
`
`interface elements that includes user interface elements for a group of “Items” that
`
`are presented on the display of the Looney device, including Looney’s laptop
`
`embodiment. Each of these three Display Screens includes a different particular
`
`
`
`5
`
`
`
`
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`set of user interface elements presented on a display of a device. In my opinion,
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`each of these three Display Screens qualifies as a different “display screen” under
`
`the Board’s construction of that term.
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`13.
`
`I understand that in the Patent Owner’s Preliminary Response in the
`
`First IPR, IPR2016-01407, Paper 10 (“the First POPR”), Patent Owner asserted the
`
`Second and Third Display Screens noted above are not different “display screens”
`
`under a proper construction of that term. I understand that Patent Owner
`
`specifically argued with respect to what I identified as Looney’s Third Display
`
`Screen (First Declaration, ¶62) that populating what it referred to as a “search list
`
`container” with “one or more rows of text corresponding to songs” does not result
`
`in the display of additional user interface elements, and thus does not constitute a
`
`new “display screen” or a Third Display Screen. First POPR at 19. I disagree with
`
`Patent Owner’s conclusion and its characterization of Looney.
`
`14.
`
` According to Looney, the user is able to interact with each of the
`
`song entries in the search list, e.g., by clicking on them, so as to cause the
`
`corresponding songs to be added to the play list. Looney, 9:58-60 (“Songs from
`
`the search list can be appended to the end of the play list 430 by, for example
`
`clicking on their entry in the search list 451”). The song entries in the search list
`
`therefore are not merely static text, but instead each enable new functionality.
`
`
`
`6
`
`
`
`
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`15.
`
` I understand, and a person having ordinary skill in the art (POSA) at
`
`the time of the invention would have understood, each song entry in the song list to
`
`be a new user interface element when added to the display of the device. Each
`
`song entry is a new user interface element at least because it is new text presented
`
`on the display, and this new text is a new user interface element. I understand, and
`
`a POSA would have understood, that text would be a new user interface element. I
`
`note this is even consistent with the definition of “user interface element” supplied
`
`by Patent Owner’s declarant, Mr. Eric Bear, in connection with the First POPR.
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`Mr. Bear stated that “a user interface element or GUI component is object or code
`
`having a graphical representation that can be displayed on a device’s display, and
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`can often interact with the user.” Ex. 1018 (Declaration of Eric J. Gould Bear) at
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`¶61. I do not necessarily concede that Mr. Bear’s definition is correct. But, it at
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`least supports my conclusion that a POSA would have understood the text of
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`Looney’s song list to be a user interface element. Mr. Bear’s definition clearly
`
`encompasses text like Looney’s, as text is an “object … having a graphical
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`representation that can be displayed on a device’s display.” It is irrelevant whether
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`or not the text is interactive, because Mr. Bear’s definition states that user interface
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`elements are only “often” interactive and are not necessarily interactive.
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`Nonetheless, a POSA would have understood each song entry to also qualify as a
`
`user interface element, and each song entry also qualifies as a user interface
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`
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`7
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`
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`
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`element at least under Mr. Bear’s definition of that term, because, as I discussed in
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`the previous paragraph, each song entry is interactive and enables new
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`functionality. I understand, and a POSA would have understood, that addition of
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`these new user interface elements would result in a different particular set of user
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`interface elements presented on a display of a device.
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`16. The generation of a group of song entries in Looney’s search list
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`window, and the addition of these song entries to a display, constitutes the addition
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`of a new set of user interface elements to the display. This change in the set of
`
`user interface elements presented on a display of a device results in a different
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`particular set of user interface elements being presented on a display of a device,
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`and resulted in presentation of a new “display screen,” as that term has been
`
`construed.
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`Proehl
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`I understand that in the First POPR, Patent Owner argued that
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`17.
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`Proehl’s “sort options” would have been understood by a person having ordinary
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`skill in the art to be merely a “sort” rather than a hierarchical filtering or
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`navigation. First POPR at 28-30. I disagree.
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`18. Proehl allows a user to navigate a media collection using a plurality of
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`subcategories within the selected top-level category. Specifically, Proehl describes
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`that when a particular top-level category is selected as a “sort option,” “a plurality
`
`
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`8
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`
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`
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`of sub-options” may be displayed to refine the results to particular subcategories.
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`Proehl, 5:64-66. Proehl describes this functionality in the context of a “genre”
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`sort: for example, “upon the selection of a genre sort, a plurality of sub-options,
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`including various genres to choose from, are displayed.” Proehl, 5:64-66.
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`Selection of one of the subcategories, in turn, leads to display of albums included
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`within the selected subcategory. Id. at 6:2-5. Proehl’s Fig. 4 illustrates albums
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`displayed following selection of the “rock” subcategory within the “genre”
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`category. Id. (“As shown in Fig. 4, the user has selected the genre ‘rock,’ …”).
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`19. Accordingly, while Proehl labels its hierarchical navigation as
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`“sorting,” a POSA would understand from its description of top-level options and
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`sub-options that the functionality is not mere sorting and is more akin to
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`hierarchical filtering or navigation.
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`20. My conclusion that Proehl describes a hierarchical filtering or
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`navigation is not undermined by Proehl’s description that one of its top-level
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`categories is “position of the CD within player” and that this category would not
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`include a sub-category. Proehl, 5:61. Merely because one or more of the multiple
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`categories does not include a sub-category does not detract from Proehl’s
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`description that the other top-level categories do include subcategories as “sub-
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`options.” Even with the discussion of “position of the CD within the player,” a
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`POSA would have understood Proehl to describe hierarchical navigation.
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`
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`9
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`
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`I understand and have been warned that willful false statements and the like
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`are punishable by fine or imprisonment, or both (18 U.S.C. § 1001). I declare that
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`all statements made herein of my own knowledge are true and that all statements
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`made on information and belief are believed to be true, and further, that these
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`statements were made with the knowledge that willful false statements and the like
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`so made are punishable by fine or imprisonment, or both, under § 1001 of title 18
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`of the United States Code.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`
`
`
`
`/Benjamin B. Bederson/
`Benjamin B. Bederson
`
`Executed on January 5, 2017
`
`
`10
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`
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