`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________________
`IPR2021-00716
`U.S. Patent No. 8,688,028
`____________________
`
`
`PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`
`
`
`
`
`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 2
`A.
`Broadcast Segment ................................................................................ 2
`1.
`The claims do not support PO’s additional limitations. ............. 3
`2.
`The specification does not support PO’s additional limitations. 5
`3.
`PO’s admissions contradict its proposed construction. .............. 7
`“receiving a broadcast stream comprising the at least one broadcast
`segment and associated media content” ................................................ 7
`“associating/associated” ........................................................................ 8
`C.
`“corollary” ............................................................................................. 9
`D.
`III. Takahisa Anticipates Challenged Claims 11, 14-16, and 18 (Ground 1). .....10
`A.
`Takahisa Discloses the Preamble of Claim 11. ...................................10
`B.
`Takahisa Discloses Claim Element 11[d]: “each identifying data
`aggregate associated with … the at least one broadcast segment” .....12
`Takahisa Discloses Claim 16. .............................................................16
`C.
`IV. Mackintosh Renders Obvious Challenged claims 11, 14-16, and 18 (Ground
`2). ...................................................................................................................18
`A. Mackintosh Discloses the Preamble of Claim 11. ..............................19
`B. Mackintosh Discloses Claim Element 11[d]: “each identifying data
`aggregate associated with … the at least one broadcast segment” .....20
`C. Mackintosh Renders Obvious Claim 11. ............................................23
`D. Mackintosh Discloses Claim 16. .........................................................25
`Conclusion .....................................................................................................29
`
`I.
`II.
`
`V.
`
`
`B.
`
`
`
`
`
`- i -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`PETITIONER’S UPDATED EXHIBIT LIST
`Exhibit No. Description
`U.S. Patent No. 8,688,028
`1001
`File History of U.S. Patent No. 8,688,028
`1002
`Declaration of Dr. Vijay Madisetti
`1003
`U.S. Patent No. 5,579,537 (Takahisa)
`1004
`U.S. Patent No. 6,317,784 (Mackintosh)
`1005
`Sand Revolution II, LLC v. Continental Intermodal Grp. – Trucking
`1006
`LLC, IPR2019-01393, Patent Owner’s Supplemental Brief
`[Proposed] Second Amended Joint Scheduling Order
`1007
`Volkswagen’s Motion to Dismiss, or Transfer, for Improper Venue
`1008
`September 3, 2021 Email Stipulation re IPR Grounds
`1009
`Declaration of Mark Hannemann in support of pro hac vice
`1010
`admission
`Declaration of Thomas R. Makin in support of pro hac vice
`admission
`Intentionally Left Blank
`Declaration of Dr. Vijay Madisetti in Support of Petitioner’s Reply
`to Patent Owner’s Response (“Madisetti Reply Decl.”).
`Deposition Transcript of John C. Hart, taken March 31, 2022.
`
`1011
`1012-1017
`1018
`1019
`
`
`
`- ii -
`
`

`

`
`
`I.
`
`
`
`
`
`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`
`INTRODUCTION
`The Petition demonstrated that all challenged claims of the ’028 patent are
`
`unpatentable. The Patent Owner Response (POR) confirms this. Rather than
`
`address the merits of the Petition and the Board’s Institution Decision, the POR
`
`presents a misguided interpretation of “broadcast segment” that ignores
`
`fundamental canons of claim construction in an unavailing attempt to salvage the
`
`claims. PO reads numerous limitations into this simple term that are inconsistent
`
`with the claims and specification. PO’s expert provides little help. Statements in
`
`his declaration are conclusory and during deposition, he was unable to provide any
`
`examples that would satisfy his construction. EX1019, 38:17-40:23.
`
`Moreover, little weight should be given to his opinions as he failed to
`
`consider the entire prosecution history including parent patents, failed to consider
`
`the claim construction briefs and Markman order in the co-pending district court
`
`litigation, and acknowledged having limited broadcast-related experience.
`
`EX1019, 13:18-14:11, 30:24-32:19, 42:4-44:9, All leading to the conclusion that
`
`PO’s “broadcast segment” construction is simply wrong.
`
`The limited additional POR arguments are inconsistent with the ’028 patent
`
`disclosures and those of the prior art. Furthermore, they mischaracterize the
`
`Petition. But as explained below, the Petition demonstrates that Takahisa and
`
`Mackintosh disclose the challenged claims when proper claim constructions are
`
`
`
`- 1 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`used and even under PO’s flawed claim constructions and mischaracterizations.
`
`Therefore, the Board should find claims 11, 14-16, and 18 of the ’028 patent
`
`unpatentable.
`
`II. CLAIM CONSTRUCTION
`A. Broadcast Segment
`PO proposes that the term “broadcast segment” be construed as a “discretely
`
`identifiable portion of programming as broadcasted.” POR, 17-20. On its face, this
`
`definition is consistent with Petitioner’s construction: “‘a distinguishable piece or
`
`portion of a broadcast stream,’ such as an individual song, speech, or video.” Pet.,
`
`11. Yet PO’s discussion improperly imports additional limitations that should be
`
`rejected. EX1018, ¶¶9-14. The Board should reject these additional limitations
`
`because they amount to an impermissible rewriting of the claims. POR, 17-20; GE
`
`Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1317 (Fed. Cir. 2014).
`
`These additional limitations include:
`
`(1)
`
`each broadcast segment must be “discretely identifiable relative to all
`
`other ‘broadcast segments’ transmitted” and “contextually unique to all
`
`others” (POR, 17-18);
`
`(2) “a broadcast segment can occur once and only once” (id., 18);
`
`(3)
`
`each broadcast segment “must have a temporal component” (id., 19);
`
`and
`
`
`
`- 2 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`(4) broadcast segments must differentiate between different instances of
`
`the same song being broadcast multiple times in a day (id., 18).
`
`The claims and the specification do not support these limitations. EX1018,
`
`¶¶15-31. Further, PO’s admissions contradict the inclusion of such limitations. Id.,
`
`¶¶32-34. Therefore, the Board should reject PO’s construction because it improperly
`
`imports limitations into the claims. Superguide Corp. v. DirecTV Enters., Inc., 358
`
`F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim
`
`limitations that are not a part of the claim.”); E-Pass Techs., Inc. v. 3Com Corp., 343
`
`F.3d 1364, 1369 (Fed. Cir. 2003).
`
`The claims do not support PO’s additional limitations.
`1.
`The claims do not support PO’s additional limitations. EX1018, ¶¶15-20.
`
`For example, claim 16 demonstrates any unique identification of a broadcast
`
`segment is separate from the broadcast segment itself. Id., ¶¶15-17. Therefore,
`
`PO’s requirement that the broadcast segment be uniquely and “discretely
`
`identifiable” by itself is erroneous. Id.; POR, 17-18.
`
`Claim 16 recites:
`
`The method of claim 11, wherein the data stream further comprises
`data that enables a unique identification of the at least one broadcast
`segment.
`
`
`
`- 3 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`
`EX1001, 16:25-27.1
`
`As seen here, the data that uniquely identifies the broadcast segment is
`
`provided in a separate data stream. EX1018, ¶¶16-17. As claim 11 highlights, the
`
`“data stream” is a separate stream of data from the “broadcast stream” that carries
`
`the “broadcast segment.” EX1001, 15:24-29. Thus, contrary to PO’s assertions, the
`
`broadcast segment is not itself discretely identifiable, but rather is identified using
`
`separate identification data received from the data stream. EX1018, ¶¶16-17. The
`
`broadcast segment is instead simply a “‘distinguishable piece or portion of a
`
`broadcast stream,’ such as an individual song, speech, or video.” Pet., 11. Any
`
`unique or discrete identification is separate from the broadcast segment itself.
`
`EX1018, ¶¶16-17.
`
`The other elements of claim 11 also do not support PO’s construction. For
`
`example, PO points to claim element 11[f], which recites a “temporal position of
`
`the corollary broadcast” and argues that this suggest that “the broadcast segment
`
`must have a temporal component that can distinguish different occurrences of
`
`broadcast segment[s].” POR, 19. But the claim language does not provide such an
`
`inference. EX1018, ¶¶18-20. While claim element 11[f] explains that temporal
`
`position information may be optionally output, there is no suggestion that such
`
`information would be included in the broadcast segment. Id., ¶18. Rather, a POSA
`
`
`1 All emphasis in this document is added, except where otherwise indicated.
`
`
`
`- 4 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`would have understood this information to be included in the “data stream”
`
`because it carries information about the broadcast segment, such as “media content
`
`identifying data” and/or a “unique identification.” Id., ¶19; EX1001, 15:24-29,
`
`16:25-27. Therefore, claim element 11[f] does not support PO’s construction.
`
`EX1018, ¶19.
`
`2.
`
`The specification does not support PO’s additional
`limitations.
`The specification uses the term “broadcast segment” twice. EX1001, 6:1-4.
`
`Neither of these support PO’s claim construction. Further, none of PO’s cited
`
`passages support broadcast segments that are themselves “discretely identifiable.”
`
`POR, 18-19; EX1018, ¶¶21-31. For example, PO relies on the assignment of a
`
`“unique identifier to each specific broadcast segment or song.” EX1001, 5:64-6:2
`
`(emphasis added).
`
`This statement, however, does not suggest that the broadcast segment itself
`
`includes the unique identifier or is discretely identifiable. Rather, the “unique
`
`identifier” that PO references is transmitted in the separate “data stream” as
`
`indicated by claim 16. EX1001, 16:25-27. Therefore, the assignment of a unique
`
`identifier does not support PO’s construction. EX1018, ¶¶21-23.
`
`PO additionally argues that its construction is motivated by the “purpose of
`
`data mining.” POR, 18 (citing EX1001, 3:10-16, 3:52-55, 9:34-36). First, none of
`
`these passages discuss “broadcast segments” or provide any details supporting
`
`
`
`- 5 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`PO’s additional “broadcast segment” limitations. EX1018, ¶¶24-29. While the
`
`passages describe “data mining” to track sales transactions, this does not import
`
`any limitations or further narrow the concept of a “broadcast segment.” Id. These
`
`passages do not provide any definition or explanation for a “broadcast segment.”
`
`Id. Second, “data mining” is not even relevant to claim 11’s “communication
`
`device” receiving a broadcast segment. Id. The data mining described in the
`
`specification occurs on a back-end broadcaster system and not on claim 11’s
`
`“communication device.” Id.; EX1001, 3:8-55, 8:59-65, 10:37-44. Therefore, these
`
`passages still do not describe claim 11’s communication device performing any
`
`data mining or receiving any broadcast segment with “discretely identifiable”
`
`properties. EX1018, ¶¶24-29. Further, the data mining occurs when a user
`
`performs a transaction using the communication device in claim 11. Id. But to
`
`perform such a transaction—as seen from claim 17—the communication device
`
`transmits “media content identifying” data, which is separate from the broadcast
`
`stream. EX1001, 16:28-32. Therefore, the claims clearly indicate that transactions
`
`are tracked based on separate media identification data—not any unique
`
`identification within a broadcast segment. EX1018, ¶29.
`
`PO also relies on an example not disclosed in the specification, where a song
`
`may be played three times in a broadcast. POR 18. PO argues that this must result
`
`in three discretely identifiable and different broadcast segments. POR, 18-19. But
`
`
`
`- 6 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`when questioned about this example during his deposition, Dr. Hart admitted that
`
`no such example existed in the specification and that he conceived it himself.
`
`EX1019, 60:13-23. Thus, there is no specification support for this requirement to
`
`be present in the claim term “broadcast segment.” EX1018, ¶¶30-31.
`
`PO’s admissions contradict its proposed construction.
`3.
`PO makes a key admission that contradicts PO’s claim construction:
`
`“An individual song” as broadcasted may serve as one example of a
`“broadcast segment” because the broadcast of the song constitutes a
`discretely identifiable portion of programming as broadcasted.
`
`POR, 20.
`While previously advocating for several requirements to constitute a
`
`“broadcast segment,” PO here admits that the broadcast of an individual song is
`
`sufficient. Id. This is the same claim construction provided in the Petition. Pet., 11.
`
`Therefore, PO has contradicted its own narrow construction if the broadcasting of a
`
`song is sufficient to be an example of a broadcast segment. EX1018, ¶¶32-34.
`
`B.
`
`“receiving a broadcast stream comprising the at least one
`broadcast segment and associated media content”
`The Board adopted an interpretation reading a broadcast segment and the
`
`associated media content as “encompassing the same underlying concept (e.g., a
`
`song) in two different forms,” with the “broadcast segment” referring to the signal-
`
`form and the “media content” referring to the form “discernable to humans.” DI,
`
`
`
`- 7 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`22-23. PO agrees that the Board’s construction is correct, but again imports its
`
`limitations for the term “broadcast segment.” POR, 22. Petitioner agrees with the
`
`Board’s interpretation but disagrees with PO’s additional limitations. EX1018,
`
`¶¶35-38; Section II.A. As this interpretation relates to the “receiving” limitation as
`
`a whole, PO’s construction of “broadcast segment” still conflicts with the
`
`understanding that a “broadcast segment” refers to media content in a signal form.
`
`EX1018, ¶¶35-38. That is, PO never explains how “broadcast segments” in signal
`
`form would be discretely identifiable or how to determine that “each broadcast
`
`segment is unique from every other broadcast segment.” POR, 23; EX1018, ¶¶35-
`
`38. Rather, the claimed “receiving” step simply recites receiving a broadcast
`
`stream with a broadcast segment signal and outputting the associated media
`
`content. EX1018, ¶¶35-38. There is no requirement for separately determining that
`
`the broadcast segment is unique. Id.
`
`“associating/associated”
`C.
`The district court determined that the construction for
`
`“associating/associated” should be the “plain and ordinary meaning” of the term.
`
`EX3001, 1-2. PO proposed this interpretation but now argues for different
`
`constructions, which require “‘implementing a link’ between two or more items.’”
`
`POR, 23. Such a formal link is unnecessary to determine the plain and ordinary
`
`meaning of the term “associated.” EX1018, ¶¶39-41. Rather, a POSA would have
`
`
`
`- 8 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`understood that “associated” would refer to two concepts that were conceptually
`
`connected without the need for a system to store a link. Id. For example, the
`
`specification refers to automotive radios equipped with an APS module 202 and
`
`“associated technologies.” EX1001, 7:27-33. Similarly, the specification refers to
`
`“[a]ssociated books, magazine articles, merchandise and event information” that
`
`can be posted for the user to purchase. Id., 8:12-14. In this manner, the
`
`specification uses the term “associated” with its plain and ordinary meaning to
`
`broadly refer to conceptual connections rather than formally defined and
`
`implemented links. EX1018, ¶¶39-41.
`
`Thus, the Board should apply the plain and ordinary meaning of
`
`“associating” and “associated.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
`
`(Fed. Cir. 2005) (en banc). Regardless, Takahisa and Mackintosh demonstrate that
`
`the claims are unpatentable under PO’s construction. EX1018, ¶41.
`
`“corollary”
`D.
`PO proposes that the term “corollary” should receive its plain and ordinary
`
`meaning and be construed as meaning “correlated.” POR, 24. Petitioner does not
`
`object. EX1018, ¶42.
`
`
`
`- 9 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`III. TAKAHISA ANTICIPATES CHALLENGED CLAIMS 11, 14-16, AND
`18 (GROUND 1).
`A. Takahisa Discloses the Preamble of Claim 11.
`PO’s argument is entirely premised on its construction of “broadcast
`
`segment.” POR, 34-36; EX1018, ¶¶43-51. But PO conflates concepts that do not
`
`distinguish the claims from Takahisa’s teachings. EX1018, ¶¶43-46. For example,
`
`PO argues that Takahisa does not describe “receiving media content identifying
`
`data that discretely identifies a portion of programming as broadcasted.” POR, 35.
`
`But this statement mixes “media content identifying data” with its construction of
`
`“broadcast segment.” POR, 35-36; EX1018, ¶¶43-46; EX1001, 15:24-29. PO again
`
`improperly adds another limitation that requires the claimed “method” to also
`
`include actively extracting “broadcast segment information” to identify the
`
`broadcast segment prior to correlating data. POR, 35-36. PO then alleges that
`
`Takahisa does not perform a “correlating step” because it does not separately
`
`extract this broadcast segment information prior to correlating media content
`
`identifying data with a broadcast segment. EX1018, ¶¶43-46. None of this is
`
`supported in the claims or specification. Id.
`
`Despite PO’s attempts to confuse the issue, Takahisa’s teachings of (1)
`
`receiving a broadcast segment, (2) receiving media content identifying data, and
`
`(3) correlating this data together disclose the preamble. Pet., 24-27;
`
`POR, 36.
`
`
`
`- 10 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`Takahisa’s broadcasted “program material” (such as a song) corresponds to
`
`the claimed “broadcast segment.” Pet., 25-27; EX1004, 1:63-2:9. Along with this
`
`program material, Takahisa also describes receiving “composer, title, and
`
`performer” information, which discloses the claimed “media content identifying
`
`data. EX1004, 6:55-7:7, 7:18-21, 9:42-44. Takahisa’s “pyramid address” is used to
`
`correlate the received media content identifying data with the received broadcast
`
`segment. Id., 7:8-21, 9:13-19; see also supra Section III.B. Thus, Takahisa
`
`discloses the preamble under either Petitioner or PO’s stated constructions for
`
`“broadcast segment.” EX1018, ¶¶47-48; see also Section III.B. PO’s alleged
`
`distinctions are without merit because they are premised on limitations that do not
`
`exist in the claims. EX1018, ¶¶11-34.
`
`Moreover, Takahisa’s pyramid address discloses the “correlating” in the
`
`preamble as well as claim element 11[d] even under PO’s construction. Id., ¶¶49-
`
`51. Under PO’s interpretation, a broadcast segment should be discretely
`
`identifiable. POR, 17-20, 38. But PO does not address Takahisa’s “pyramid
`
`address” and that the pyramid address specifically identifies the program material
`
`as broadcasted. EX1004, 9:13-24; Pet., 22-23, 28-29, 39-41. For example,
`
`Takahisa’s pyramid address corresponds to a “particular selection of program
`
`material.” EX1004, 9:13-24. “Thus, if a musical selection is being broadcast, all
`
`data pertaining to that musical selection will have identical pyramid addresses.” Id.
`
`
`
`- 11 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`As seen from this description, Takahisa’s pyramid address is specific to the
`
`particular media selection and to the broadcast itself. EX1018, ¶¶49-51. The
`
`pyramid address corresponds to each time program material is selected. Id.
`
`Therefore, Takahisa does not limit the pyramid address to being the same each
`
`time a particular song is played. Id. Thus, Takahisa’s pyramid address still
`
`discloses organizing media identifying data based on broadcast segments that are
`
`discretely identifiable. Id. This applies to the preamble and to claim element 11[d].
`
`Lastly, PO has not argued any deficiency with respect to the “receiving”
`
`limitation (claim element 11[a]). Id., ¶51. This claim element refers to “receiving”
`
`a broadcast segment” from a broadcast stream. Id. Without identifying any
`
`deficiency, PO has not disputed that Takahisa actually receives a broadcast
`
`segment even under PO’s construction. Id.
`
`B.
`
`Takahisa Discloses Claim Element 11[d]: “each identifying data
`aggregate associated with … the at least one broadcast segment”
`PO premises its claim element 11[d] argument on its construction of
`
`“broadcast segment.” POR, 37-41. PO argues that Takahisa does not “contain any
`
`element discretely identifying a portion of the programming as broadcasted.” Id.,
`
`38. Under PO’s construction, PO alleges that Takahisa’s data aggregates—which
`
`organize the media content identifying data elements—“are not associated with the
`
`at least one broadcast segment.” Id., 39-40.
`
`
`
`- 12 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`Takahisa discloses this limitation—even if PO’s flawed “broadcast segment”
`
`construction is applied. Pet., 28-29; EX1018, ¶¶52-61. Takahisa’s receiving of
`
`broadcasted program material satisfies the receipt of a broadcast segment. Pet., 28-
`
`29. As this relates to claim element 11[d] and the aggregation of media content
`
`identifying data, Takahisa also associates the received media content identifying
`
`data with media content and a broadcast segment. Id. Takahisa aggregates
`
`“composer, title, and performer data” with a particular song. EX1004, 7:18-21. As
`
`depicted in Figure 3, “composer, title, and performer data stored in memory 205”
`
`is organized to correspond to the “program material contemporaneously being
`
`received by receiving system 200.” Id.; see also id., 6:15-32.
`
`
`
`- 13 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`
`EX1004, FIG. 3.
`
`
`
`Takahisa also generates a program history, which also aggregates media
`
`content identifying data with a broadcast segment. Pet., 35-36; EX1004, 8:22-24.
`
`These descriptions disclose claim element 11[d]. EX1018, ¶¶52-57.
`
`PO provides several additional flawed arguments, but Takahisa still
`
`discloses claim element 11[d] even under PO’s construction. POR, 38-41; EX1018,
`
`¶¶58-61. For example, Takahisa’s pyramid address discretely identifies a broadcast
`
`segment for the reasons explained in Section III.A. This addresses PO’s correlation
`
`argument, which is reiterated from the preamble. POR, 41.
`
`
`
`- 14 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`PO also argues that Takahisa’s history aggregate does not disclose the
`
`claimed broadcast segment. Id., 39-40. But contrary to PO’s analysis, Takahisa’s
`
`history aggregate precisely discloses the tracking of discrete instances of broadcast
`
`segments. Pet., 35-36. For example, Takahisa describes storing data from previous
`
`program selections for later access by the user. EX1004, 8:22-34. A POSA would
`
`have understood that if multiple instances of the same song were stored, Takahisa’s
`
`system would have distinguished between these multiple instances because it
`
`stores a history of “previous selections.” Id.; EX1018, ¶59. This would therefore
`
`distinguish between broadcast segments even under PO’s construction. EX1018,
`
`¶59.
`
`PO also argues that Takahisa’s “running time” does not disclose identifying
`
`a broadcast segment because it does not specify a “particular start time of a portion
`
`of programming.” POR, 38-39. Not only does this argument introduce yet another
`
`limitation for “broadcast segment,” it mischaracterizes the Petition’s reliance on
`
`Takahisa’s “running time.” Pet., 41. The Petition relies on Takahisa’s running time
`
`to disclose a “temporal position” of the broadcast segment in claim element 11[f],
`
`which PO does not dispute. Id. Therefore, PO’s statements do not identify any
`
`deficiency in Takahisa. EX1018, ¶60.
`
` PO additionally argues that Takahisa does not perform data mining and
`
`would therefore have “no need to aggregate data associated with discretely
`
`
`
`- 15 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`identifiable portions of programming as broadcasted.” POR, 40-41. But as
`
`previously explained, the concept of “data mining” is not relevant to the
`
`functionality of the claimed “method” which simply recites receiving a broadcast
`
`segment. See Section II.A.2. Therefore, PO’s data mining statements do not
`
`identify any deficiency in Takahisa. EX1018, ¶61.
`
`C. Takahisa Discloses Claim 16.
`PO’s claim 16 arguments are premised on its construction of
`
`“broadcast segment.” POR, 41-45. PO acknowledges that claim 16 recites data that
`
`includes a unique identification of the broadcast segment, then argues that this
`
`requires a “distinction between two broadcast segments with the same media
`
`content.” Id., 42. PO then argues that Takahisa does not disclose broadcast
`
`segments and therefore does not provide a unique identification. Id., 42-43.
`
`PO’s construction of “broadcast segment” should again be rejected. See
`
`Section II.A. The broadcast segment and the unique identification described in
`
`claim 16 do not require distinguishing between different instances of the same
`
`media content. EX1018, ¶¶62-63. Rather, a unique identification of a broadcast
`
`segment is satisfied by an identifier that uniquely identifies a distinguishable piece
`
`or portion of a broadcast stream, such as a song. Pet., 11, 45. Takahisa’s pyramid
`
`address does just that. Id., 44-46.
`
`
`
`- 16 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`Takahisa describes “data packet 700” which includes pyramid address 710.
`
`EX1004, 9:10-19. The pyramid address is a unique identifier corresponding to the
`
`broadcast segment because it organizes the additional data pertaining to the
`
`received media content. Id.; EX1018, ¶¶64-66. “If a musical selection is being
`
`broadcast, all data pertaining to that musical selection will have identical pyramid
`
`addresses.” EX1004, 9:17-19.
`
`EX1005, FIG. 7.
`
`
`
`As such, Takahisa’s pyramid address discloses the claimed “data that enables
`
`a unique identification of the at least one broadcast segment.” Pet., 44-46. This
`
`pyramid address is further received in a “data stream” because it is provided with
`
`textual media content identifying data (e.g., composer, title, and performer). Pet.,
`
`
`
`- 17 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`44-46; EX1004, 6:55-7:7, 7:18-21, 9:42-44. Therefore, Takahisa discloses claim 16.
`
`EX1018, ¶¶64-66.
`
`Takahisa’s pyramid address discloses claim 16 even under PO’s claim
`
`construction. Id. PO argues that Takahisa’s pyramid address does not disclose a
`
`unique identification because it does not provide a “distinction between two
`
`broadcast segments.” POR, 42-43. But this argument is incorrect. See Section III.A.
`
`Takahisa’s pyramid address corresponds to a “musical selection” which means that
`
`the pyramid address is specific to the broadcast itself and corresponds to each time
`
`program material is selected. EX1018, ¶¶64-66.
`
`PO additionally argues that Takahisa focuses on “static information” rather
`
`than “dynamic information” and therefore does not disclose claim 16. POR, 44-45.
`
`But this distinction is irrelevant to the actual language of the claim or to Takahisa’s
`
`disclosures. EX1018, ¶66. PO’s discussion does not discuss Takahisa’s pyramid
`
`address and therefore does not identify any deficiency in Takahisa. Id.
`
`IV. MACKINTOSH RENDERS OBVIOUS CHALLENGED CLAIMS 11,
`14-16, AND 18 (GROUND 2).
`PO’s Mackintosh-based arguments are similar to its Takahisa-based
`
`arguments, largely relying on its flawed “broadcast segment” construction.
`
`However, PO encounters the additional problem that Mackintosh uses nearly
`
`identical language as the ’028 patent to describe aspects of its invention—that is,
`
`Mackintosh refers to each broadcast song or advertisement as a “segment” and
`
`
`
`- 18 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`explains that “cut codes” “uniquely identify a segment.” EX1005, 2:50-58, 21:13-
`
`24. PO’s attempts to draw distinctions with Mackintosh’s disclosure are
`
`unavailing. EX1018, ¶¶67-101.
`
`A. Mackintosh Discloses the Preamble of Claim 11.
`PO reiterates much of its previous preamble arguments and premises
`
`Mackintosh’s alleged deficiencies again on its claim construction for “broadcast
`
`segment.” POR, 46-47. PO argues that “Mackintosh does not describe a ‘segment’
`
`as discretely identifying a portion of programming as broadcasted.” Id. Again, the
`
`Board should reject PO’s construction as improperly narrow. See Section II.A.
`
`Mackintosh discloses the preamble of claim 11 for the reasons presented in the
`
`Petition. Pet., 48-51. For example, Mackintosh describes correlating “supplemental
`
`materials” with received media content corresponding to the broadcast segment.
`
`Pet., 51; EX1005, 2:45-58, 5:67-6:4, 22:55-60. This therefore discloses the
`
`preamble of claim 11. Pet., 48-51; EX1018, ¶¶69-75.
`
`Even under PO’s construction, however, Mackintosh discloses a “broadcast
`
`segment” and the preamble of claim 11. Pet., 48-51. While PO addresses the
`
`relevant passages from Mackintosh, PO appears to ignore Mackintosh’s literal
`
`identification of “segments” using an “event code” or “cut code” to uniquely
`
`identify the segments. Id., 48-51, 71-75; EX1005, 2:45-58, 5:18-6:4, 21:13-24.
`
`Specifically, Mackintosh states that “each song or advertisement... comprises a
`
`
`
`- 19 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`distinct segment [with a] cut code corresponding to and uniquely identifying a
`
`segment.” EX1005, 21:18-34.
`
`As seen from these passages, Mackintosh discloses the claimed “broadcast
`
`segment” even under PO’s claim construction. EX1018, ¶¶69-74; Pet., 48-51.
`
`Mackintosh’s cut codes explicitly disclose uniquely identifying segments that are
`
`broadcasted. EX1018, ¶¶69-74; EX1005, 2:45-58, 5:18-6:4, 9:8-18, 21:13-24.
`
`Therefore, Mackintosh discloses discretely identifiable broadcast segments.
`
`EX1018, ¶¶69-74. Additionally, Mackintosh correlates received media identifying
`
`data with these broadcast segments when it retrieves and presents supplemental
`
`materials. Pet., 54-56; EX1005, 5:52-50, 5:67-6:4, 22:55-60.
`
`Further, PO has not argued any deficiency with respect to the “receiving”
`
`limitation (claim element 11[a]). EX1018, ¶75. Without identifying any deficiency,
`
`PO has not disputed that Mackintosh actually receives a broadcast segment even
`
`under PO’s construction. Id.
`
`B. Mackintosh Discloses Claim Element 11[d]: “each identifying data
`aggregate associated with … the at least one broadcast segment”
`PO again premises its claim element 11[d] argument on its construction of
`
`“broadcast segment.” POR, 47-56. PO argues that Mackintosh does not “contain
`
`any element discretely identifying a portion of programming as broadcasted.”
`
`POR, 47. Under PO’s construction, PO argues that Mackintosh’s history
`
`
`
`- 20 -
`
`

`

`Case IPR2021-00716
`U.S. Pat. No. 8,688,028
`aggregates of supplemental material data “are not associated with a specific
`
`broadcast segment.” POR, 48-49.
`
`PO’s interpretation of “broadcast segment” is improperly narrow and should
`
`be rejected. See Sections II.A, III.B. This is also true for claim element 11[d]. As
`
`seen from the claim language, all that is required is the storage of aggregated
`
`media content identifying data with an association with media content and a
`
`broadcast segment. EX1001, 15:33-40.
`
`Mackintosh performs this same aggregation. Pet., 58-61; EX1018, ¶¶76-84.
`
`Mackintosh describes aggregating supplemental materials for a particular song and
`
`a broadcast segment. Pet., 59. Mackintosh’s “history bar” or history component
`
`525 as depicted in FIG. 12 discloses such aggregation. EX1