IPR2021-00716
`U.S. Patent No. 8,688,028
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC., MAZDA MOTOR
`OF AMERICA, INC., SUBARU OF AMERICA, INC., and
`VOLVO CAR USA, LLC,1
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`
`IPR2021-00716
`U.S. Patent No. 8,688,028
`
`
`
`
`
`PATENT OWNER SUR-REPLY
`
`
`
`
`
`
`
`1 Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`USA, LLC filed a motion for joinder and a petition in Case IPR2022-00204,
`which were granted, and, therefore, have been joined as petitioners in this
`proceeding.
`
`
`
`
`
`
`U.S. Patent No. 8,688,028
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC., MAZDA MOTOR
`OF AMERICA, INC., SUBARU OF AMERICA, INC., and
`VOLVO CAR USA, LLC,1
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`
`IPR2021-00716
`U.S. Patent No. 8,688,028
`
`
`
`
`
`PATENT OWNER SUR-REPLY
`
`
`
`
`
`
`
`1 Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`USA, LLC filed a motion for joinder and a petition in Case IPR2022-00204,
`which were granted, and, therefore, have been joined as petitioners in this
`proceeding.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00716
`U.S. Patent No. 8,688,028
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`A.
`“broadcast segment” .............................................................................. 1
`Patent Owner’s construction of “broadcast segment”
`comports with the prosecution histories ..................................... 2
`The claims do not refute Patent Owner’s construction ............... 3
`The specification does not refute Patent Owner’s
`construction ................................................................................. 6
`Patent Owner’s statements do not contradict its proposed
`construction ................................................................................. 9
` CLAIMS 11, 15, 16 AND 18 ARE NOT ANTICIPATED BY TAKAHISA
`(GROUND 1) ................................................................................................. 10
`A.
`Takahisa does not disclose the preamble of claim 11 ......................... 10
`B.
`Takahisa does not disclose Element 11[d] .......................................... 13
`C.
`Takahisa does not disclose claim 16 ................................................... 14
` CLAIMS 11 AND 15-18 ARE NOT OBVIOUS OVER MACKINTOSH
`(GROUND 3) ................................................................................................. 15
`A. Mackintosh does not disclose the preamble of Claim 11 .................... 16
`B. Mackintosh does not disclose Element 11[d] ...................................... 17
`C. Mackintosh does not render claim 11 obvious .................................... 18
`D. Mackintosh does not render claim 16 obvious .................................... 19
`CONCLUSION .............................................................................................. 23
`
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`TABLE OF AUTHORITIES
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`
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`Page(s)
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`CASES
`Beachcombers, Int’l, Inc. v. WildeWood Creative Prods.,
`31 F.3d 1154 (Fed. Cir. 1994) .............................................................................. 4
`Clearstream Wastewater Systems, Inc. v. Hydro-Action, Inc.,
`206 F.3d 1440 (Fed. Cir. 2000) ............................................................................ 4
`Fidelity Nat’l Info. Servs, Inc., v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ................................................. 1
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`ii
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`UPDATED TABLE OF EXHIBITS
`
`2002
`
`2005
`
`2006
`
`Exhibit Description
`2001 E-mail from Court Clerk Setting CMC, Markman Hearing, and Trial
`Date in the Parallel W.D. Tex. Litigations (May 4, 2021)
`Volkswagen’s Petition for Writ of Mandamus to Direct the United
`States District Court for the Western District of Texas to Rule on
`Motion to Dismiss for Improper Venue (Jun. 4, 2021)
`2003 E-mail from W.D. Tex. Court Clerk Denying Request to Stay Pending
`Motion to Dismiss for Improper Venue (May 17, 2021)
`2004 Transcript of Hearing for Motion to Dismiss/Transfer for Improper
`Venue in Parallel W.D. Tex. Litigations (Jun. 23, 2021)
`Interview with Judge Albright on Patent Litigation and Seventh
`Amendment, IAM (Apr. 7, 2020)
`Joint Scheduling Order of Parallel W.D. Tex. Litigations (July 15,
`2021)
`2007 Notice of Serving Preliminary Infringement Contentions in Parallel
`W.D. Tex. Litigations (May 13, 2021)
`2008 Hyundai Notice of and Stipulation for Hyundai U.S. Patent No.
`8,688,028 with reference to IPR2021-01303
`2009 Defendants’ Disclosure of Invalidity Contentions Cover Pleading in
`Parallel W.D. Litigations (July 8, 2021)
`2010 Transcript of hearing in ParkerVision v. Intel Corp., 6:20-cv-00108
`(W.D. Tex. September 2, 2020) (J. Albright)
`[Intentionally Left Blank]
`[Intentionally Left Blank]
`[Intentionally Left Blank]
`
`2011
`2012
`2013
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`iii
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`U.S. Patent No. 8,688,028
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`2014
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`[Intentionally Left Blank]
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`2015 Order Resetting Markman Hearing 6:20-cv-01131(W.D. Tex.
`September 10, 2021) (J. Albright)
`2016 Third Proposed Amended Joint Scheduling Order of Parallel W.D. Tex.
`Litigations (September 15, 2021)
`2017 Memorandum Opinion and Order Denying Volkswagen Motion to
`Dismiss (W.D. Tex. September 20, 2021) (J. Albright)
`2018 Declaration of Hallie Kiernan in Support of Patent Owner’s Motion for
`Admission Pro Hac Vice
`2019 Declaration of Dr. John Hart dated January 24, 2022
`2020 Excerpt from Random House Webster’s Unabridged Dictionary (2nd ed.
`1998)
`
`2021 Transcript of Deposition, Vijay Madisetti, Ph. D., May 25, 2022
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`IPR2021-00716
`U.S. Patent No. 8,688,028
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`
`
`INTRODUCTION
`StratosAudio, Inc. (“Patent Owner”) submits this Sur-Reply in response to
`
`the Reply to Patent Owner Response (Paper 33, hereafter the “Reply”) filed by
`
`Volkswagen Group of America, Inc. (“Petitioner”), which was in reply to the
`
`Patent Owner Response (Paper 28, hereafter “POR”). The Petition and Reply do
`
`not establish by a preponderance of evidence that any challenged claim is
`
`unpatentable.
`
`Patent Owner notes that the Reply cites to large swaths of the Reply
`
`Declaration (EX1018), which appears to be almost double the page-length of the
`
`Reply. Patent Owner objects to the extent Petitioner may be attempting to violate
`
`the governing word-count limitations by such citations. See Fidelity Nat’l Info.
`
`Servs, Inc., v. Datatreasury Corp., IPR2014-00489, Paper 9 at 9 (PTAB Aug. 13,
`
`2014) (declining “to consider information presented in a supporting declaration,
`
`but not discussed sufficiently in a petition” because it would allow party to
`
`circumvent page and word limits). Patent Owner provides the following sur-reply
`
`to the arguments in Petitioner’s Reply.
`
` CLAIM CONSTRUCTION
`A.
`“broadcast segment”
`Patent Owner’s Response established that the term “broadcast segment”
`
`should be construed to mean “a discretely identifiable portion of programming as
`
`
`
`1
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`broadcasted.” POR 17-20 (citing EX2019, ¶¶60-65). The Reply alleges that this
`
`proposed construction impermissibly rewrites the claims and improperly imports
`
`limitations therein. Reply 2-7. Patent Owner disagrees for the following reasons.
`
`
`
`Patent Owner’s construction of “broadcast segment”
`comports with the prosecution histories
`Petitioner’s first argument – that little weight should be given to Patent
`
`Owner’s expert’s claim construction opinions because he allegedly failed to
`
`consider the entire prosecution history – is criticism without substance.
`
`Patent Owner’s expert explicitly stated that he reviewed the prosecution
`
`history of the ’028 patent. EX2019, ¶8 (“I have reviewed the Declaration of Vijay
`
`Madisetti, Ph.D. (EX1003) (the ‘Madisetti Declaration’), the Petition, the prior art
`
`references cited therein, the specification, claims, and prosecution history of the
`
`’028 patent, and the PTAB’s Institution Decision.”). He stated he likely did not
`
`review the prosecution of related applications because the Petitioner’s expert did
`
`not cite any material from those prosecution histories. EX1019, 30:24-31:17.
`
`The Petition and Reply cite nothing in the prosecution histories of the
`
`challenged patent or related applications contradicting Patent Owner’s claim
`
`construction positions. Petitioner’s expert did not cite the prosecution history of
`
`the ’028 patent or related patents in his declaration (EX1018) supporting the Reply.
`
`The expert also confirmed during deposition that he did not cite any portion of the
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`
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`2
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`prosecution history of the related patents supporting his positions. See EX2021,
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`12:4-11, 14:25-15:14. He also did not recall the specifics of anything in the
`
`prosecution history of the related applications. See EX2021, 8:3-9:15. The only
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`prosecution history that Petitioner marked as an exhibit in these proceedings was
`
`of serial no. 13/889,176, which is the application that was issued as the ’028
`
`patent. Petitioner never provided any other document from the prosecution history
`
`as an exhibit.
`
`
`The claims do not refute Patent Owner’s construction
`In arguing that other claims refute Patent Owner’s construction, the
`
`Petitioner has violated claim differentiation principles. Petitioner contends that
`
`the “discretely identifiable” portion of Patent Owner’s proposed construction is
`
`erroneous because dependent claim 16 requires that any unique identification of a
`
`broadcast segment be separate from the broadcast segment itself. Reply 3-4.
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`According to the Petitioner, because claim 16 says a separate data stream carries
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`data uniquely identifying the broadcast, the broadcast segment is not itself
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`discretely identifiable but instead is identified using different identification data
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`received from the data stream. Reply 3-5.
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`Petitioner’s argument violates the principle of claim differentiation by
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`improperly limiting independent claim 11 based on text from dependent claim 16.
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`Claim differentiation applies to all claims in a patent and generally prevents “the
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`
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`3
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`
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`narrowing of broad claims by reading into them the limitations of narrower
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`claims.” Clearstream Wastewater Systems, Inc. v. Hydro-Action, Inc., 206 F.3d
`
`1440, 1446-47 (Fed. Cir. 2000). Claim 16 specifies that “the data stream further
`
`comprises data that enables a unique identification of the at least one broadcast
`
`segment.” Claim 16, as indicated by use of the term “further comprises,”
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`provides both a narrowing and more explicit detail regarding the elements
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`disclosed in claim 11, including data in the data stream that enables a unique
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`identification of the broadcast segment.
`
`Petitioner’s suggestion at page 4 of the Reply that the broadcast segment is
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`not
`
`itself discretely
`
`identifiable but rather
`
`is
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`identified using separate
`
`identification data received from the data stream improperly reads a limitation
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`from dependent claim 16 into independent claim 11. Petitioner’s assertion, if
`
`adopted, would collapse claims 11 and 16 into the same subject matter. This
`
`violates the law that each claim constitutes a separate invention. See
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`Beachcombers, Int’l, Inc. v. WildeWood Creative Prods., 31 F.3d 1154, 1162
`
`(Fed. Cir. 1994) (interpretation of claim that resulted in it having the same scope
`
`as another claim was improper, instead claim should be interpreted to give
`
`“significance to the distinction between claims 1 and 9”).
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`
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`4
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`Petitioner’s argument that other portions of claim 11 refute Patent Owner’s
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`construction is unpersuasive. Petitioner asserts that “[w]hile 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.”
`
`Reply 4. According to Petitioner, a person of ordinary skill in the art (“POSITA”)
`
`would have understood this information to be included in the “data stream”
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`because it carries information about the broadcast segment, such as “media
`
`content identifying data” and/or a “unique identification.” Reply 4-5.
`
`To the extent Petitioner’s argument relies on the data stream including data
`
`that enables unique identification of the broadcast segment, the argument violates
`
`claim differentiation by reading into independent claim 11 the limitation from
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`claim 16.
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`Petitioner’s remaining arguments miss the point. Patent Owner asserted that
`
`the claim language “a temporal position of the corollary broadcast segment,”
`
`distinguishes different occurrences of broadcast segments. See POR 19 (citing
`
`EX2019, ¶63). Petitioner nowhere disputes this, nor could Petitioner. That a
`
`broadcast segment has a component of temporal position supports Patent Owner’s
`
`construction that a broadcast segment is “a discretely identifiable portion of
`
`programming as broadcasted.” It also shows that Petitioner’s construction (“a
`
`
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`5
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`distinguishable piece or portion of a broadcast stream, such as an individual song,
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`speech, or video”) is incomplete. Indeed, when asked about the meaning of the
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`term “distinguishable” in Petitioner’s construction, Petitioner’s expert could say
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`little more than “it just means distinguishable,” “[i]t doesn’t have to be
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`distinguishable from anything.” EX2021, 16:13-17:10. The expert could not point
`
`to any parameters a POSITA would look at to determine whether a portion of a
`
`broadcast stream is distinguishable. EX2021, 17:11-18:13; 19:23-20:15.
`
`
`
`specification does not refute Patent Owner’s
`The
`construction
`The specification explicitly states that an Automatic Purchase System (APS)
`
`server 144 “assigns a unique identifier to each specific broadcast segment or song.”
`
`EX1001, 6:1-2. The specification’s statement that a unique identifier is assigned to
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`each broadcast segment supports Patent Owner’s proposed construction that a
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`broadcast segment is “a discretely identifiable portion of programming as
`
`broadcasted.” The discretely identifiable nature of the broadcast segment permits
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`for the assignment of a unique identifier.
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`Rather than address this argument, Petitioner’s Reply once again falls back
`
`on the claim-differentiation-violating argument that the unique identifier must be
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`in the separate data stream because dependent claim 16 says so. Reply 5. That
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`6
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`argument violates claim differentiation and, in any event, fails to address the merits
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`of Patent Owner’s contentions.
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`The Patent Owner’s response also explained
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`that Patent Owner’s
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`construction of broadcast segment comports with the specification’s stated
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`objective of data mining. POR 17-19 (citing EX2019, ¶¶56, 62-64). In particular,
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`a POSITA would have understood that a broadcast segment must be a discretely
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`identifiable portion of
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`the programming because data mining
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`requires
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`understanding not only the content purchased but also the particular portion of
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`programming as broadcasted that triggered a response (for example, a response to
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`an ad or song), and this is particularly important where the same media content is
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`broadcasted multiple times a day. POR 18 (citing EX2019, ¶62).
`
`The Reply does not dispute that the patent has a stated object of data mining.
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`Instead, the Reply insists that none of the data mining passages in the patent
`
`imports any limitations or further narrows the concept of “broadcast segment.”
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`Reply 6. However, as Patent Owner’s response explained, to perform data mining,
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`information discretely identifying the portion of programming as broadcasted tells
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`which particular portion of programming triggered the response. POR 18 (citing
`
`EX2019, ¶62). The Reply does not address this.
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`
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`7
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`The Reply also says that data mining is not relevant to claim construction
`
`because data mining occurs on a back-end broadcaster system and not on claim
`
`11’s method. But the citations Petitioner relies on as showing data mining on a
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`back-end server, namely EX1001, 3:8-55, 8:59-65, 10:37-44, all rely on the use of
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`“technology enabled servers” or in conjunction with a “technology enabled radio”
`
`(“TER”). See EX1001, 3:8-16, 3:48-52; and 9:30-34. The patent uses the term
`
`“technology enabled radio” or TER to refer to devices implementing the claimed
`
`invention. See EX1001, 2:62-3:3. Petitioner’s expert confirmed these terms refer
`
`to an embodiment of the invention. EX2021, 51:22-52:16; 52:10-23. Thus, the
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`back-end systems described in the specification that Petitioner relies on all appear
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`to utilize the claimed invention.
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`Petitioner also relies on claim 17 as purportedly indicating that transactions
`
`are tracked based on “media content identifying” data, not any unique
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`identification within a broadcast segment. Reply 6. While Petitioner states that the
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`data mining occurs when a user performs a transaction using the method in claim
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`11, Petitioner nowhere shows how claim 17 relates to such data mining. At any
`
`rate, claim 17 explicitly recites “selecting the at least one broadcast segment”
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`which would include data discretely identifying the portion of programming as
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`broadcasted. Even if claim 17 indicated that transactions are tracked based on
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`
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`8
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`media content identifying data, this does not preclude use of other information,
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`such as broadcast segment identification, for such tracking. Petitioner’s expert
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`confirmed that the data packet in claim 17 can include data other than the media
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`content identifying data. EX2021, 53:9-54:6.
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`Petitioner criticizes Patent Owner’s use of an example where a song is
`
`played three times during a broadcast because it does not appear in the
`
`specification. Reply 6-7. While not explicitly in the specification, the example
`
`demonstrates what the specification intended via the use of “broadcast segment” in
`
`the claims and specification. It also shows that “broadcast segment” in the claims
`
`has a specific meaning not captured by the definition proposed by Petitioner.
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`Petitioner’s expert seems to agree that where the same song is played multiple
`
`times in a day, each playing of the song can be a distinct broadcast segment.
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`EX2021, 22:8-23:7.
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`
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`Patent Owner’s statements do not contradict its proposed
`construction
`Petitioner argues that Patent Owner’s statement, “‘[a]n 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,” contradicts Patent Owner’s construction. Reply 7 (citing POR,
`
`20). Patent Owner disagrees. Throughout the Patent Owner Response, the Patent
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`9
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`Owner made clear “a POSITA would understand that a broadcast segment and [a]
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`song are not necessarily the same.” POR 19 (citing EX2019, ¶64). The distinction
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`here is that the term “broadcast segment” requires “a discretely identifiable portion
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`of programming as broadcasted.” Where a song is identified by data discretely
`
`identifying the portion of programming as broadcasted, then the song may be an
`
`example of a broadcast segment. By contrast, where song is identified by name
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`and artist alone, such identification is insufficient to identify the portion of
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`programming as broadcasted.
`
` CLAIMS 11, 15, 16 AND 18 ARE NOT ANTICIPATED BY
`TAKAHISA (GROUND 1)
`A. Takahisa does not disclose the preamble of claim 11
`Patent Owner’s response established that Takahisa does not meet the
`
`preamble of claim 11. See POR 34-36. Petitioner’s arguments in reply do not
`
`change this fact.
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`Patent Owner’s response established that Takahisa does not show receiving
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`media content identifying data that discretely identifies a portion of programming
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`as broadcasted. POR 35-36. Patent Owner has not, as Petitioner alleges at page 10
`
`of the Reply, mixed the term “media content identifying data” with the construction
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`of “broadcast segment” and has not added limitations to the claim. Patent Owner’s
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`comments do not require a method of extracting broadcast segment information and
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`10
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`identify the broadcast segment information prior to correlating according to the
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`claim. Rather, Patent Owner’s comments exemplified that Takahisa never
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`describes a discretely identifiable portion of programming as broadcasted.
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`Because Takahisa never describes a broadcast segment, it cannot meet the
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`preamble, which requires correlating a broadcast segment with media content
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`identifying data.
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`Petitioner’s allegation at page 11 of the Reply that Takahisa’s “pyramid
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`address” is used to correlate the received media content identifying data with the
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`received broadcast segment is without merit. Takahisa indicates that “all data
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`pertaining to [the same] musical selection will have identical pyramid addresses.”
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`EX1004, 9:17-19 (emphasis added). Thus, Takahisa’s musical selection with its
`
`associated pyramid address does not represent a discretely identifiable portion of a
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`broadcast stream, and consequently does not disclose a broadcast segment required
`
`by claim 11.
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`Petitioner’s Reply takes a new position, not in the original Petition, that
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`Takahisa uses the words “musical selection” to connote a particular occurrence of
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`content rather than the identity of a song or advertisement. Petitioner originally
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`equated Takahisa’s “musical selection” to the identity of a song or advertisement.
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`For example, Petitioner said, “Takahisa’s radio broadcast contains a stream of
`
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`11
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`multiple ‘selections’ (i.e., multiple songs).” Petition 26; see also id. at 23, 25.
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`Petitioner now argues that “Takahisa’s pyramid address is specific to the particular
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`media selection and to the broadcast itself” and “Takahisa does not limit the
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`pyramid address to being the same each time particular song is played.” Reply 12
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`(emphasis added).
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`Petitioner’s new position regarding the term “musical selection” in Takahisa
`
`defies the teachings of the reference. Takahisa specifically refers to the identity of
`
`content as a “musical selection.” For example, Takahisa refers to the piece
`
`entitled, “Concertino for Piano and Chamber Ensemble,” as a “musical selection.”
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`EX1004, 5:34-42. Takahisa further refers to multiple broadcasts of the same
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`content as multiple broadcasts of the same “musical selection.” Specifically,
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`Takahisa states, “if there is to be a public performance of ‘Concertino for Piano &
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`Chamber Ensemble’ at a local symphony hall that fact may be entered into screen
`
`storage database 156 so that whenever this musical selection is played, this
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`information will be transmitted for display on the user’s receiver.” EX1004, 5:58-
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`63 (emphasis added). When questioned about this passage, Petitioner’s expert
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`refused to agree or disagree that the passage contemplates multiple airings of the
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`piece “Concertino for Piano and Chamber Ensemble,” saying only that the
`
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`12
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`specification speaks for itself. EX2021, 59:14-61:7. Accordingly, Takahisa does
`
`not support Petitioner’s position.
`
`Finally, that Patent Owner has not argued Takahisa fails to meet element
`
`11[a] should not be used against Patent Owner’s argument regarding the preamble,
`
`as Petitioner alleges at page 12 of the Reply. Patent Owner clearly laid out its
`
`positions regarding the preamble and the Petitioner’s Reply cites no authority to
`
`impute Patent Owner’s decision not to challenge a separate claim element into the
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`arguments for the preamble.
`
`B.
`Takahisa does not disclose Element 11[d]
`For element 11[d], the Reply presents the same arguments raised in the
`
`petition and several additional points, including the argument that Takahisa meets
`
`claim element 11[d] even under Patent Owner’s construction. None of these
`
`arguments changes the fact that Takahisa does not meet this claim element.
`
`Petitioner argues that Takahisa’s history aggregate “precisely discloses” the
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`tracking of discrete instances of broadcast segments, and 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.” Reply 15. Takahisa, however, shows no embodiment in the history
`
`aggregate discussion where multiple instances of the same content are stored.
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`Even if such an embodiment existed, Takahisa explicitly teaches that the pyramid
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`13
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`address would be the same for each instance where the song was played. EX1004,
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`9:9-24 (explaining that, in a preferred embodiment, “if a musical selection is being
`
`broadcast, all data pertaining to that musical selection will have identical pyramid
`
`addresses”). Thus, the aggregates for such instances would not discretely identify
`
`a portion of the program as broadcasted.
`
`Petitioner’s other comments are unavailing. Petitioner’s argument that “data
`
`mining” is not relevant to the functionality of the claimed subject matter ignores
`
`the specification of the ’028 patent. In the ’028 patent, the media content
`
`identifying data for each tagged/selected song are used for “data mining” or
`
`“aggregating data” to form aggregates that correlate each song to its associated
`
`media segment. See EX1001, 9:34-37. These aggregates of data provide
`
`information
`
`indicating discretely
`
`identifiable portions of programming as
`
`broadcasted and can be sold to “interested parties such as trade publications and
`
`record companies.” EX1001, 9:34-37.
`
`Petitioner’s Reply arguments therefore do not change the outcome that
`
`Takahisa fails to meet element 11[d].
`
`C. Takahisa does not disclose claim 16
`Petitioner’s Reply repeats its argument from the Petition, but also presents a
`
`new theory that Takahisa discloses claim 16 even under Patent Owner’s
`
`construction of the term “broadcast segment.” This argument fails for the same
`
`
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`14
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`reasons as discussed above. See Section III.A (discussing Petitioner’s new
`
`argument that the words “musical selection” in Takahisa connote occurrence rather
`
`than identity).
`
`Petitioner criticizes Patent Owner’s point that Takahisa focuses on “static
`
`information” rather than “dynamic information” on the ground that the distinction
`
`is irrelevant to the language in claim 16. Reply 18. Patent Owner’s discussion in
`
`this regard shows that by relying on static information, Takahisa fails to disclose a
`
`discretely identifiable portion of the broadcast stream. Patent Owner also showed
`
`that Takahisa’s pyramid address is insufficient to enable a unique identification of
`
`the broadcast segment because the same pyramid address is used for all data
`
`pertaining to a musical selection. EX1004, 9:17-19.
`
`Petitioner’s Reply arguments therefore do not change the outcome that
`
`Takahisa fails to meet claim 16.
`
` CLAIMS 11 AND 15-18 ARE NOT OBVIOUS OVER MACKINTOSH
`(GROUND 3)
`Patent Owner’s response showed that Mackintosh fails to disclose several
`
`elements of claim 11. Because Petitioner provided no additional references or
`
`reasoning making up for these deficiencies, claim 11 is non-obvious over
`
`Mackintosh. The Reply does not change this outcome.
`
`
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`15
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`A. Mackintosh does not disclose the preamble of Claim 11
`Patent Owner’s response showed that Mackintosh never identifies a
`
`broadcast segment as properly construed and consequently does not meet the
`
`preamble of claim 11. POR 46-47. Petitioner asserts that Patent Owner has
`
`ignored Mackintosh’s literal identification of “segments,” such as Mackintosh’s
`
`disclosure that “each song or advertisement . . . comprises a distinct segment [with
`
`a] cut code corresponding to and uniquely identifying a segment.” Reply 19-20
`
`(citing EX1005, 21:18-34).
`
`Patent Owner has not ignored any portion of Mackintosh. The Patent Owner
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`Response explained that while Mackintosh uses the term “segments” in connection
`
`with songs, commercials, promotions (see, e.g., EX1005, 9:13-15) and also uses
`
`segments interchangeably with “tracks” (see, e.g., EX1005, 2:55-56), Mackintosh
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`nowhere describes a “segment” as a discretely identifiable portion of programming
`
`as broadcasted. POR 46-47. The text relied on by Petitioner that each song or
`
`advertisement comprises a “distinct segment” does not change the outcome. No
`
`aspect of this text shows that Mackintosh was identifying a particular occurrence
`
`of the content. Rather, this text – along with the other citations in Mackintosh –
`
`confirm that Mackintosh uses the term “segments” to mean a portion of
`
`programming (songs, commercials, promotions, or other cuts) but not a discretely
`
`identifiable portion of programming as broadcasted.
`
`
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`16
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`Further, that Patent Owner did not argue that Mackintosh fails to meet
`
`element 11[a] should not be used against Patent Owner’s argument regarding the
`
`preamble, as Petitioner alleges at page 20 of the Reply. Patent Owner clearly laid
`
`out its positions regarding the preamble and the Reply cites no authority for this
`
`allegation.
`
`B. Mackintosh does not disclose Element 11[d]
`Patent Owner’s response established that Mackintosh did not meet element
`
`11[d] because none of the alleged data aggregate elements (namely, artist name,
`
`album name, song name, image and provider link) discretely identifies a portion of
`
`the programming as broadcasted. POR 48. Petitioner’s Reply does not change
`
`this.
`
`The Reply repeats the Petition’s argument that Mackintosh’s history bar or
`
`“history component” as depicted in Figure 12 discloses media content identifying
`
`data aggregates. Compare Pet. 59 with Reply 21. As Patent Owner pointed out,
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`the history aggregates that Petitioner relies upon are merely Mackintosh’s
`
`“supplemental materials” that identify the songs or advertisements, none of
`
`which is shown associated with a specific broadcast segment, as properly
`
`construed. See POR 48.
`
`Petitioner also relies on Mackintosh’s history bar to argue that Mackintosh
`
`describes element 11[d] even under Patent Owner’s construction of the term
`
`
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`17
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`“broadcast segment.” Reply 22-23. According to Petitioner, Patent Owner’s
`
`argument that if the same song appeared twice in two different places, the
`
`supplemental material would be the same in both instances mischaracterizes the
`
`requirements of the claim. Reply 23. Petitioner, however, ignores that the proper
`
`construction of the term “broadcast segment” requires discretely identifying a
`
`portion of the programming as broadcasted. Mackintosh’s history bar display
`
`shows the order in which the “supplemental materials” were received; it does not
`
`discretely identify the portion of programming as broadcasted. Consequently,
`
`Mackintosh’s history bar does not meet element 11[d].
`
`C. Mackintosh does not render claim 11 obvious
`In replying to Patent Owner’s arguments, Petitioner again repeats a number
`
`of positions from the Petition. Petitioner also makes several additional points to
`
`which Patent Owner responds below.
`
`Petitioner asserts that data server 116 includes “event codes” or “cut codes”
`
`corresponding to the broadcast material and it would have been obvious to transmit
`
`such codes from data server 116 to the user equipment 112 or player 510 as
`
`described with reference to FIG. 10 and the transmission of a cut code over signal
`
`line 507. Reply 24-25. First, Petitioner’s assertion that data server 116 includes
`
`event code or cut codes is not supported by the portion of the specification relied
`
`on by Petitioner. That portion (EX1005, 5:51-6:4) says the data server 116 utilizes
`
`
`
`18
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`
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`IPR2021-00716
`U.S. Patent No. 8,688,028
`data received from program provided 104 to retrieve supplemental materials and to
`
`provide the supplemental materials to user equipment 112. EX1005, 5:51-56. No
`
`disclosure shows that the data server “includes” event codes or cut codes, as
`
`Petitioner alleges, and no disclosure shows the data server transmitting such codes
`
`to user equipment 112. This is discussed further below in Section IV.D
`
`Finally, Petitioner’s repeated
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