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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`IPR2021-00720
`U.S. Patent No. 9,355,405
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`PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.’S REPLY TO
`PATENT OWNER’S RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2021-00720
`U.S. Patent No. 9,355,405
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`LEE ANTICIPATES THE CHALLENGED CLAIMS (GROUND 1). ......... 1
`A.
`Lee Discloses Limitation 12[c]. ............................................................ 1
`B.
`Lee Discloses Limitation 12[d]. .......................................................... 10
`C.
`Lee Anticipates Claims 13, 14, 15, and 16. ........................................ 14
`1.
`Claim 13 .................................................................................... 14
`2.
`Claim 15 .................................................................................... 17
`III. BARNES ANTICIPATES CLAIMS 12, 15, AND 16 (GROUND 3). ......... 19
`A.
`Barnes Discloses Limitation 12[f]....................................................... 19
`B.
`Barnes Anticipates Claim 15. .............................................................. 23
`IV. BARNES IN VIEW OF THE RBDS STANDARD RENDERS
`OBVIOUS CLAIMS 13 AND 14 (GROUND 5). ......................................... 25
`CONCLUSION .............................................................................................. 28
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`I.
`II.
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`V.
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`
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`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
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`1009
`1010
`1011
`1012
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`1013
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`1014
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`1015
`1016
`1017
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`1018
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`1019
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`Case IPR2021-00720
`U.S. Patent No. 9,355,405
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`LIST OF EXHIBITS
`Description
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`U.S. Patent No. 9,355,405
`File History of U.S. Patent No. 9,355,405
`Declaration of Dr. Tim A. Williams
`U.S. Patent No. 6,374,177 (Lee)
`U.S. Patent App. Pub. No. 2003/0220835 (Barnes)
`United States RBDS Standard, April 9, 1998
`U.S. Patent No. 5,572,194 (Shiota)
`Sand Revolution II, LLC v. Continental Intermodal Grp. – Trucking
`LLC, IPR2019-01393, PO’s Supplemental Brief
`[Proposed] Second Amended Joint Scheduling Order
`Volkswagen’s Motion to Dismiss, or Transfer, for Improper Venue
`September 3, 2021 Email Stipulation re IPR Grounds
`Declaration of David H. Layer, Exhibit 1 (1998 RBDS Standard) and
`Exhibit 2 (NRSC Standards Website (April 5, 2003))
`Declaration of Duncan Hall, Exhibit A (NRSC Standards Website
`(April 5, 2003)) and Exhibit B (1998 RBDS Standard, publicly
`available on the NRSC Standards website as of October 10, 2003)
`Email from Kelly Christensen to Thomas Smyth, dated February 9,
`2001, with attachment (rbds1998.pdf)
`Declaration of Mark Hannemann in support of pro hac vice admission
`Declaration of Thomas R. Makin in support of pro hac vice admission
`Declaration of Dr. Tim A. Williams in Support of Petitioner’s Reply
`to Patent Owner’s Response
`Transcript of the Deposition of Todd K. Moon, Ph.D., March 24,
`2022
`Universal Mobile Telecommunications System (UMTS);
`Policy and charging control over Gx reference point
`(3GPP TS 29.212 version 7.2.0 Release 7) (3GPP Technical
`Specification)
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`IPR2021-00720
`U.S. Patent No. 9,355,405
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`I.
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`INTRODUCTION
`Patent Owner’s (“PO’s”) arguments in its Response rely on an improper
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`narrowing of the claims, contrived hypotheticals, and a willfully blind approach to
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`the teachings of the prior art. The Board should reject PO’s arguments and find the
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`challenged claims unpatentable.
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`II. LEE ANTICIPATES THE CHALLENGED CLAIMS (GROUND 1).
`A. Lee Discloses Limitation 12[c].
`Contrary to PO’s assertions, Lee discloses “the second media content
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`received discretely from the first media content.” Pet., 30-33; EX1003, ¶¶98-101.
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`The Petition explains that a broadcast audio advertisement corresponds to
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`the claimed “first media content,” which is received by the “software
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`programmable multiband receiver” of Lee’s “multimedia device 20,” and that data
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`related to the advertisements (represented by the display of soft buttons on the
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`screen and/or advertisement logos) correspond to the claimed “second media
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`content,” which are received by the “gateway communication unit” (“wireless
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`Internet addressable gateway transceiver 130”) of Lee’s “multiband device 20.”
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`Pet., 30-31. The Petition goes on to explain that the claimed first and second media
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`content are received discretely at least because they are received by two separate
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`receiving elements of Lee’s multimedia device. Id., 31-32.
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`Faced with this clear explanation of the operation of Lee’s system, supported
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`by Petitioner’s expert testimony, PO is left to make improper assumptions about
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`U.S. Patent No. 9,355,405
`so-called limitations of Lee’s system. PO’s assumptions, however, are based on
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`two isolated quotes from Lee that PO takes out of context and on a
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`misunderstanding of Lee’s system as a whole. EX1017, ¶¶9-28.
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`First, PO points to Lee’s disclosure that “[a]dvertising databases 196 provide
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`information about advertisements … that are inserted into real-time radio
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`broadcasts and into digital personalized broadcasts” as an alleged indication that
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`the “advertisements, which are being inserted into these broadcasts, cannot
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`constitute a second media content, since they are not received discretely from the
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`first media content.” POR, 39-40 citing EX1004, 11:16-19. As an initial matter,
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`PO’s allegation is facially deficient, since the Petition clearly identified Lee’s data
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`related to the advertisements (represented by the display of soft buttons on the
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`screen and/or advertisement logos) as the claimed “second media content,” not the
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`advertisements themselves. Pet., 30. Nonetheless, even if PO had intended to refer
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`to the data related to the advertisements, such an allegation would still be incorrect,
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`because Lee is clear that the data related to the advertisements is received
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`discretely from the broadcast audio advertisement (the “first media content”).
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`EX1017, ¶12.
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`The “discrete” reception of the data related to the advertisements and the
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`broadcast audio advertisement by Lee’s “multimedia device 20” is illustrated in
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`Figure 1, annotated below.
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`U.S. Patent No. 9,355,405
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`As shown in Figure 1, an audio advertisement broadcast by a radio station is
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`received by software programmable multiband receiver 210 and information from
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`internet gateway 30, including various advertisement-related data, is received by
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`“Gateway Communication Unit.” EX1017, ¶¶13-14; EX1004, 8:25-32, 9:18-20,
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`10:20-30, 10:44-48, 11:16-33, FIG. 1. PO’s expert also confirmed that information
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`received from two separate receivers are received separately and discretely, and
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`thus information received from internet gateway 30 is received discretely from
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`audio advertisement broadcast by a radio station. EX1018, 189:11-190:11.
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`This understanding of Lee’s system is further confirmed by comparing
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`Figures 1 and 3, annotated below.
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`As can be seen in Figure 1, internet gateway 30 (boxed in red) can transmit
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`information to the “gateway communication unit” (boxed in orange) through any
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`of three transmission protocols (boxed in blue). EX1017, ¶16. These three
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`transmission protocols (again, boxed in blue) are also shown as towers in Figure 3
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`(depicting a system diagram of internet gateway network), along with advertiser
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`databases 196 (boxed in green). Id.
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`Accordingly, Lee’s discussion regarding the “insertion” of advertising
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`information into real-time broadcasts does not imply, as PO suggests, that internet
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`gateway 30 transmits the advertising information first to a broadcaster, which then
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`transmits it to software programmable multiband receiver 210. Id., ¶17. Rather,
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`Lee’s figures show that the advertisement information from advertiser databases
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`196 is transmitted to Lee’s multimedia device 20, contemporaneous with the radio
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`broadcast, through internet gateway 30 to the device’s “gateway communication
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`unit.” Id. There is simply no support for PO’s suggestion.
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`PO next argues that one particular passage in Lee “does not include
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`advertising-related data represented by action button labels or advertising logos in
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`the list of ‘information’ transmitted or received by the Internet gateway network
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`30.” POR, 38. However, PO’s argument is inconsistent with other admissions
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`made in the POR. Indeed, elsewhere, PO in fact admits that enhanced
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`advertisement information “may be sent from the internet gateway to the device.”
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`Id., 41 (arguing not that such information is sent from internet gateway 30 to
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`device 20, but just when such information is sent).
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`Putting aside the internal inconsistency of PO’s argument, its argument is
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`also flawed because it ignores other express teachings in Lee. As explained, e.g.,
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`on page 20 of the Petition, Lee’s internet gateway 30 is designed to, inter alia,
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`“enhance regular audio broadcasts with extended information….” EX1004, 10:44-
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`48. The Petition goes on to explain that one of the enhancements within the
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`purview of internet gateway 30 is the provision of advertisement-related
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`information that is represented by the appearance on the display screen of action
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`button labels. Id., 10:20-30 (“Some examples of action buttons 172 could be:
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`‘INFO’ to save extended information on something that is being broadcast (e.g.,
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`the Internet web address of a band currently playing); … or ‘BUY’ to purchase an
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`item currently being advertised”), FIG. 2; 11:31-33 (“Only those ads offering
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`immediate purchase or additional information will preferably show indicators for
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`these actions”); EX1003, ¶91.
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`PO disregards these teachings, incorrectly limiting the “information
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`transmitted to and from the multimedia device 20 through gateway 30” to the two
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`bulleted lists spanning pages 38 and 39 of its Response. Those two lists are plainly
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`incomplete at least because they do not include a reference to the gateway’s
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`provision of “extended information.” EX1017, ¶23.1
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`In order to reconcile its omission of the “extended information” that is sent
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`via internet gateway 30, PO argues, citing to its expert, but not to Lee itself, that
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`1 Emphasis added unless otherwise indicated.
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`“Lee clearly teaches that the internet gateway 30 does not transmit enhanced
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`advertisement information until after a button is pressed, following which
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`information may be sent from the internet gateway to the device.” POR, 41.
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`Lee contradicts this assertion by explaining that the enhanced information—
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`sent via internet gateway 30 (EX1004, 10:44-48)—is at Lee’s multimedia device
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`(contemporaneously with the broadcasted audio advertisement), and that by
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`pressing the INFO button, a user can “save the enhanced information about
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`selected broadcasts” for later transmission to a server and subsequent retrieval at a
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`different device. EX1004, 7:34-40; EX1017, ¶25. Lee further explains that the
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`Internet gateway network 30 “provides programming, information and Internet
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`access to the multimedia device 20” (EX1004, 5:52-59) and Figure 2 explains that
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`such “other programming information including advertising logos” is displayed on
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`the screen in multimedia device 20 (EX1004, FIG. 2). Thus, PO is wrong because
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`the information must first be sent to the vehicle so that it can be displayed and then
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`transmitted. EX1017, ¶25.
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`PO’s allegation that “the advertising data is only sent after a ‘BUY’ or
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`‘INFO’ button press” (POR, 41) is also directly contradicted by other portions of
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`Lee. For example, Lee explains that the “listener [can] press a button on the
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`multimedia device to transmit and store [enhanced] information on their user
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`pages on the gateway 30.” EX1004, 11:44-51. Thus, Lee explicitly discloses that
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`the user transmits the information, and the user must have the information before
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`the user can transmit it. EX1017, ¶¶27-28. As another example, Lee explains that
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`the “enhanced advertising information” is “pushed to the multimedia device 20
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`from the gateway 30 at set intervals.” EX1004, 11:16-34. If the advertising data
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`were sent only after a button press, as PO suggests, Lee would describe the data as
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`being “pulled” not “pushed.” EX1017, ¶¶27-28. In fact, PO’s expert admits as
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`much. EX1018, 227:3-228:1.
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`Finally, with respect to the advertising logos (a portion of the data related to
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`the advertisements; the “second media content”) PO argues that “a POSITA would
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`have understood that the data underlying the advertising logos was received by
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`multimedia device 20 along with the audio broadcast signal on a subcarrier
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`frequency band, such as RDS/RBDS” because the “advertising logos are presented
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`with station call letters, format, and frequency.” POR, 41-42. PO then concludes
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`that the advertising logos are received at software programmable multiband
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`receiver 210 along with the first media content, as opposed to being received
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`discretely at the “Gateway Communication Unit.” Id. However, PO’s argument is
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`flawed for at least two reasons.
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`First, merely presenting two different media content together does not
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`indicate that those media content were received together. EX1017, ¶30. Indeed, the
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`’405 patent describes an example that contradicts this assumption. The ’405 patent
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`explains that primary device 4 can present advertisement signal 113 and first media
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`signal 111 at the same time (EX001, 14:12-21) even though those signals can be
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`received from different sources at different input interfaces (e.g., from association
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`system 2 via receiver 455 and from ancillary device 5 via wired data connection
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`470, respectively) (id., 12:44-47, 8:67-9:4, FIG. 3). PO’s expert even admits that
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`presenting information together does not necessarily indicate that the sources of the
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`information are the same. EX1018, 237:19-238:4.
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`Second, PO’s argument fails to appreciate that Lee discloses that “gateway
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`30 provides a broadcaster relational database 194 containing information about all
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`AM, FM and TV analog audio broadcasts that can be received in a vehicle 184 …
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`(e.g., radio station call letters, programming format, frequency assignment,
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`program listing, etc.).” EX1004, 11:3-8. Because internet gateway 30 connects
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`with multimedia device 20 via the gateway communication unit, the radio station
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`call letters, the programming format, and the frequency assignment provided by
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`relational database 194 of internet gateway 30 could also be received via the
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`gateway communication unit of multimedia device 20, as opposed to (or in
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`addition to) receiver 210. EX1017, ¶31. Therefore, even if presenting two different
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`media content together did indicate that those media content could be received
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`together as PO suggests, Lee still discloses the advertising logos being received at
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`the gateway communication unit discretely from the first media content received at
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`receiver 210. Id.
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`Therefore, for at least the forgoing reasons, PO has failed to overcome
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`Petitioner’s showing that Lee discloses limitation 12[c].
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`Lee Discloses Limitation 12[d].
`B.
`Contrary to PO’s assertions, Lee discloses “determining uniquely identifying
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`data specific to at least the second media content.” Pet., 32-33; EX1003, ¶¶102-
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`109.
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`The Petition explains that “‘[t]he date and time of the button press,’ and ‘the
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`channel selected’ correspond to the claimed ‘uniquely identifying data specific to
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`at least the second media content.’” Pet., 33.
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`While PO concedes that date/time and channel information is logged and
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`transmitted to internet gateway 30 when a user presses the “BUY” or “INFO”
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`buttons (POR, 26), PO nonetheless argues that Lee does not disclose limitation
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`12[d] for two reasons, both of which are flawed.
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`First, PO hypothesizes that, “where the audio advertisement broadcast offers
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`both purchase and additional information,” Petitioner’s explanation is insufficient
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`because it does not explicitly state that additional data indicating which button was
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`pressed (e.g., “BUY” or “INFO”) is transmitted to internet gateway 30. POR, 43.
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`PO’s suggestion is that the “the ‘channel selected’ and date/time will be the same
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`irrespective of which button the user pressed,” and, therefore, that these data
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`cannot constitute uniquely identifying data specific to at least the second media
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`content. Id. This argument is flawed for several reasons.
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`As a threshold matter, PO’s argument is premised on a hypothetical for a
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`specific situation in which both “BUY” and “INFO” buttons are displayed. The
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`implication, according to PO, is that the display of both buttons renders the
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`date/time of the button press and the channel information (without some additional
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`information) not specific to one of the buttons. But, PO’s hypothetical does not
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`account for situations where only one or the other were displayed (e.g., if
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`additional information about the advertisement were available, but immediate
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`purchase were not available). EX1017, ¶37. In such situations, the date/time of the
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`button press and channel information would in fact be specific to one particular
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`button. Id. Again, PO’s expert, Dr. Moon, admitted as much during his deposition.
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`EX1018, 248:18-249:7. And in fact, Lee teaches just such a situation. EX1004,
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`11:31-33 (“Only those ads offering immediate purchase or additional information
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`will prefer ably show indicators for these actions.”).
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`In addition, PO’s argument seeks to improperly narrow the claim language
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`by requiring the determination of additional data (i.e., button press data) specific to
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`which button was pressed. This is not a requirement of the claim, and is improper.
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`Continental Circuits LLC v. Intel Corp, 915 F.3d 788, 998 (Fed. Cir. 2019). The
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`claim simply requires “determining uniquely identifying data specific to at least the
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`second media content.” EX1001, Claim 12. As the advertisement-related data
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`represented by the displayed buttons corresponds to the claimed “second media
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`content,” the date/time and channel information logged when the user presses
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`either of the buttons would provide information that is uniquely specific to the
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`advertisement-related data, and would thus satisfy limitation 12[d]. EX1017, ¶38.
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`Moreover, even if additional button press data were required, Lee’s
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`disclosure indicates that data indicative of the particular button press would
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`necessarily be sent, so as to distinguish the particular action of the user. Id., ¶39.
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`Indeed, Dr. Williams testified during his deposition that “device 20 understands the
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`channel that’s being provided, it understands that -- a date and time and it
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`understands the press of the button.” EX2020, 144:21-145:6.
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`When Dr. Williams was asked how the “time and date” of the button press
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`and “channel selected” would differ if the user pressed different buttons, he
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`testified:
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`A. The button press information would be different.
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`…
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`A. … So if you pressed button A, you have got the information that
`button A was pressed at 2:00 p.m., and if you pressed button B, you
`have the information that button B was pressed at 2:00 p.m.
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`Q. So you understand the term “the date and time of the button press”
`to mean that the multimedia device 20 is provided with the date, time
`and the button that is pressed?
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`A. Of course.
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`Id., 142:25-148:11.
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`PO’s expert, Dr. Moon, also confirmed that Lee’s system must provide some
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`indication of which button was pressed so as to not charge a user for a purchase
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`when only the INFO button is pressed. EX1018, 251:2-5.
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`Second, PO argues that “there is no proof here that the ‘date and time of [sic:
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`the] button press’ and ‘the channel selected’ uniquely identify the advertisement
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`related data that Petitioner points to as the second media content.” POR, 43. PO
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`then concludes that the “date and time of button press” and “the channel selected”
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`are used to identify the advertised product, but not the data underlying the action
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`button labels and/or the advertising logos. Id., 44. PO’s allegation is incorrect. As
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`discussed above, the “date and time of button press” and “the channel selected” do
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`provide information about the data underlying the action button labels. EX1017,
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`¶41. Moreover, Lee discloses that “[a]dvertising databases 196 provide information
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`about advertisements (e.g., advertiser name, ad content, time of ad run, etc.)…”
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`EX1004, 11:16-19. Therefore, the “date and time of button press” and “the channel
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`selected” also provide information about the ad content being presented at the time
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`of the button press, which would include the advertising logo. EX1017, ¶41.
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`Further, to the extent that PO argues that a unique identifier cannot uniquely
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`identify both the advertisement and the corresponding advertising data, this is
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`wrong and would contradict the disclosure in the ’405 patent. EX1017, ¶42;
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`EX1001, 11:31-44.
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`Therefore, for at least these reasons, PO has failed to overcome Petitioner’s
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`showing that Lee discloses limitation 12[d].
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`C. Lee Anticipates Claims 13, 14, 15, and 16.2
`Claim 13
`1.
`Contrary to PO’s assertions, Lee discloses “determining an identification of
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`a specific instance of the first media content.” Pet., 46-49; EX1003, ¶¶142-148.
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`The Petition explains two ways in which Lee anticipates claim 13. First, the
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`Petition explains that a POSA would understand that having the “station call letters,
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`format, frequency, and other programming information” relating to the radio
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`broadcast as transmitted via the RDS/RBDS subcarrier channel is “an identification
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`of the specific instance of the first media content” because it provides an
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`identification of the first media content (e.g., “programming information”) with the
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`context surrounding the specific transmission of that instance of the media content,
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`including the time at which the user hears the audio-advertisement. Pet., 46-47.
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`2 PO makes no additional arguments for claims 14 and 16.
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`Second, the Petition cites to Lee’s explanation of “broadcaster relational
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`databases” that, inter alia, are continuously updated with “constantly changing
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`program listings” and “advertising databases” that include, e.g., the “advertiser
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`name, ad content, time of ad run, etc.,” which provide information
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`contemporaneously with the real-time broadcasts. Pet., 48-49 (quoting EX1004,
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`11:1-19).
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`With respect to the first explanation given in the Petition, PO argues that, “if
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`the same advertisement is played multiple times throughout the day, Petitioner
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`does not explain how ‘station call letters, format, frequency, and other
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`programming information’ would differentiate between the different occurrences
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`of that advertisement.” POR, 45. This hypothetical is irrelevant, as PO does not
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`dispute that when an advertisement is played only once, the advertising
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`information would identify a specific instance of the first media content. EX1017,
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`¶¶46-47. Regardless, this argument is another attempt to improperly narrow the
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`claim by reading in a requirement that a second instance of transmission of the
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`advertisement be identified. This is again improper. Continental Circuits, 915 F.3d
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`at 998; InterDigital Comms., LLC v. ITC, 690 F.3d 1318, 1324 (Fed. Cir. 2012).
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`In essence, PO seeks to impermissibly rewrite the claim as follows:
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`“determining an identification of a specific first instance of the first media content
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`and a specific second instance of the first media content, and distinguishing the
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`specific first instance from the specific second instance.” GE Lighting Solutions,
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`LLC v. AgiLight, Inc., 750 F.3d 1304, 1317 (Fed. Cir. 2014). Contrary to PO’s
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`argument, all that is required of claim 13 is determining an identification of a
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`specific instance of the first media content.
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`With respect to the second explanation given in the Petition, PO concedes
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`that Lee “stores information relating to the advertisement such as ‘advertiser name,
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`ad content, time of ad run, etc.’” POR, 46. PO nonetheless argues that “Lee’s
`
`database is not storing information about a specific instance of media content
`
`played on a receiver, but instead an all-inclusive list of when media content may be
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`played.” POR, 46. But, PO does not dispute that when the media content is played
`
`at a specified time, then the database identifies a specific instance of the first media
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`content. EX1017, ¶48.
`
`PO also argues that the advertisement database cannot distinguish between
`
`three of the same McDonalds advertisements. POR, 46. Lee contradicts PO’s
`
`argument because it discloses that the advertising databases include information
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`such as the “radio station call letters,” “frequency assignment,” “advertiser name,
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`ad content, time of ad run, etc.” EX1004, 11:1-19. Lee’s databases provide an
`
`identification of the “specific instance of the first media content”—even under PO’s
`
`improper narrow interpretation—because the databases contain all of the
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`information that would be needed to identify each instance of transmission of the
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`first media content. EX1017, ¶48.
`
`Claim 15
`2.
`Contrary to PO’s assertions, Lee discloses “outputting of the first media
`
`content and second media content based on at least one criteria.” Pet., 50-52;
`
`EX1003, ¶¶157-165.
`
`The Petition explains that “Lee discloses that information contained in ‘user
`
`profile databases 198’ includes criteria that dictate the output of multimedia device
`
`20, including radio channels and advertisements available to each device.” Pet., 51
`
`(citing EX1004, 11:34-43; EX1003, ¶157). It is simply not credible for PO to argue
`
`that user-preference-information that dictates which advertisements (and thus,
`
`concomitantly, which advertisement-related-information) are presented to the user
`
`does not constitute the claimed “at least one criteria” that affects the output of the
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`first and second media content. EX1017, ¶50.
`
`And, contrary to PO’s characterization of Petitioner’s explanation as
`
`“perfunctory,” the Petition goes on to provide examples of how the user-preference
`
`information in the “user profile databases” dictates the transmission of the first and
`
`second media content to Lee’s multimedia device:
`
`In one example, the information in user profile databases 198 will
`“block[] out from view all unwanted [radio] formats and stations.” Ex.
`1004, 6:62-65; Ex. 1003, ¶158. In another example, “[i]nformation in
`
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`advertising databases can be compared against a user’s purchasing
`interest profile through an adaptive profiler 200 so that advertisements
`inserted into delayed personalized digital broadcasts mesh with that
`individual’s buying interests.” Ex. 1004, 11:36-42.
`
`Pet., 51.
`
`While it is uncontested that user profile database 198 and tuner 164 govern
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`the output of the first media content (i.e., the broadcast advertisements), PO
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`appears to contend that this does not necessarily mean that the advertisement-
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`related-info associated with the broadcast advertisements is also output based on
`
`the same criteria. POR, 47-48. But it is clear that advertisement-related-
`
`information is only ever displayed in conjunction with its associated advertisement.
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`EX1017, ¶52. Thus, when an advertisement is, or is not, output based on a user’s
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`preference, its associated information will likewise either be output or not. Id.
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`PO’s argument again boils down to an improper narrowing of the claim.
`
`With respect to this limitation, PO attempts to read in that the only criteria on
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`which the “outputting of the first media content and second media content” can be
`
`based is “limiting the display, limiting the audio, or limiting other sensory
`
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`outputs.”3 POR, 55. But, the plain and ordinary meaning of this claim term applies,
`
`and, therefore, it would be improper to exclude “user preferences” as a criterion on
`
`which the outputting of the first and second media content can be based. EX1017,
`
`¶53. In fact, PO’s expert, Dr. Moon, agreed that claim 15 does not require
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`“limiting” the first and second media content, but instead merely requires that the
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`media content be output “based on” at least one criteria. EX1018, 309:11-310:6.
`
`III. BARNES ANTICIPATES CLAIMS 12, 15, AND 16 (GROUND 3).4
`A. Barnes Discloses Limitation 12[f].
`Contrary to PO’s assertions, Barnes discloses “presenting concurrently the
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`first media content and the second media content using an electronic output
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`device.” Pet., 60-62; EX1003, ¶¶193-202.
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`Barnes discloses that “[t]he present invention is a multi-function
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`communications device 101 that includes conventional mobile phone and personal
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`digital assistant (PDA) capabilities….” EX1005, ¶33. The Petition specifically
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`explains that Barnes’s “device 101” includes both audio output and a high-
`
`
`3 PO’s improper claim construction would be unavailing anyway, as Lee
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`teaches an on/off knob, which would meet even PO’s narrow construction. Pet.,
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`52; EX1004, FIG. 2.
`
`4 PO makes no separate argument for claim 16.
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`resolution color display and dynamic touch screen. Pet., 60-61. Figure 1 of Barnes,
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`showing, inter alia, “Display 175” and “Audio Out 170,” is reproduced below:
`
`
`
`
`
`The Petition cites and clearly describes Barnes’s teachings of receiving and
`
`playing radio signals (Pet., 55), as well as Barnes’s teaching of receiving and
`
`displaying point-of-interest information (id., 56-57), and that these are done
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`concurrently (id., 60-62).
`
`While PO admits (1) that Barnes’s “device 101” includes software and
`
`hardware for receiving radio transmissions (POR, 29), and (2) that Barnes
`
`discloses both point-of-interest information, based on location (id., 33), and
`
`receiving user input relating to that point-of-interest (id., 34-35), PO maintains the
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`position that Barnes does not teach audibly playing the radio while concurrently
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`displaying point-of-interest information. Id., 49. However, PO’s position is
`
`contradicted both by the express disclosure of Barnes, and by PO’s own expert’s
`
`admissions.
`
`First, paragraph 65 of Barnes discloses:
`
`Thus, the contemporaneous wireless communication links of the
`present invention permits the user to participate in a conversation via a
`voice communication link (e.g., via a 3G, 2.5G, or 2G network) while
`simultaneously using a data communication link … Thus, the user can
`also receive and transmit live audio/visual data--such as live video
`transmissions (e.g., a video telephone call, receive a television
`transmission,
`transmit video camera data), and
`live audio
`transmissions (e.g., a telephone call, receive radio transmission,
`transmit voice data)--while also transmitting and receiving computer
`data … the data from the multiple transmissions is presented to the
`user and received from the user in the same time periods (or
`overlapping
`time periods), which
`is herein referred
`to as
`contemporaneous transmission and/or reception.
`
`This passage discloses several, non-exhaustive examples of what Barnes’s “multi-
`
`fun
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