`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
`____________________
`IPR2021-00721
`U.S. Patent No. 8,166,081
`____________________
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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 & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Case IPR2021-00721
`U.S. Pat. No. 8,166,081
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`C.
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`V.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`PO’s Attempts to Improperly Rewrite the Claims .......................................... 3
`II.
`III. Claim Construction – First Receiver Module and Second Receiver Module . 5
`A.
`PO Fails to Provide an Actual Construction ......................................... 5
`B.
`PO Ignores the Specification’s Clear Description that “Modules” Are
`Not Necessarily Separate Physical Components................................... 6
`The Claimed “Output System” Does Not Limit the Claimed First and
`Second Receiver Modules ...................................................................11
`IV. Mackintosh Anticipates the Challenged Claims (Ground 1).........................13
`A. Mackintosh Discloses the Claimed “Second Receiver Module” ........13
`B. Mackintosh Discloses the Claimed “Output System” .........................15
`C. Mackintosh Discloses “Data Enabling the Identification of a Specific
`Instance of the First Media Content” ..................................................17
`D. Mackintosh Discloses Claim 10 ..........................................................19
`DeWeese Anticipates the Challenged Claims (Ground 3) ............................21
`A.
`DeWeese Discloses “Data Enabling the Identification of a Specific
`Instance of the First Media Content” ..................................................21
`DeWeese Discloses the Claimed “Second Receiver Module” ............23
`DeWeese Discloses the Claimed “Output System” .............................25
`DeWeese Discloses the Claimed “Second Media Content Received
`Discretely From the First Media Content” .........................................27
`DeWeese Discloses Claim 10 .............................................................28
`E.
`VI. Conclusion .....................................................................................................29
`
`B.
`C.
`D.
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`U.S. Pat. No. 8,166,081
`PETITIONER’S UPDATED EXHIBIT LIST
`Exhibit No. Description
`U.S. Patent No. 8,166,081 to Christensen et al. (“’081 Patent”)
`1001
`File History of U.S. Patent No. 8,166,081 (“Prosecution History”)
`1002
`Declaration of Dr. Tim Williams
`1003
`U.S. Patent No. 6,349,329 to Mackintosh et al. (“Mackintosh”)
`1004
`U.S. Patent Publication No. 2005/0262542 to DeWeese et al.
`1005
`(“DeWeese”)
`IP Address: Your Internet Identity, R. Smith (Mar. 29, 1997)
`1006
`TCP/IP Illustrated Vol. 1, W.R. Stevens (1994)
`1007
`Data-Over-Cable Service Interface Specifications, DOCSIS 1.1,
`Radio Frequency Interface Specification, September 7, 2005
`(“DOCSIS Standard”)
`Sand Revolution II, LLC v. Continental Intermodal Grp. –
`Trucking LLC, IPR2019-01393, Patent Owner’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 Mark Hannemann in Support of Petitioner
`Volkswagen Group of America, Inc.’s Motion for Unopposed
`Admission Pro Hac Vice, filed December 23, 2021.
`Declaration of Thomas R. Makin in Support of Petitioner
`Volkswagen Group of America, Inc.’s Motion for Unopposed
`Admission Pro Hac Vice, filed December 23, 2021.
`Deposition Transcript of Todd K. Moon, taken March 24, 2022.
`Declaration of Dr. Tim Williams in Support of Petitioner’s Reply
`to Patent Owner’s Response (“Williams Reply Decl.”).
`U.S. Patent Publication No. 2002/0183059 to Noreen et al.
`(“Noreen”)
`U.S. Patent No. 6,701,355 to Brandt et al. (“Brandt”)
`U.S. Patent Publication No. 2003/0001965 to Cao et al. (“Cao”)
`
`1010
`1011
`1012
`
`1008
`
`1009
`
`1013
`
`1014
`
`1015
`1016
`
`1017
`1018
`1019
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`Case IPR2021-00721
`U.S. Pat. No. 8,166,081
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`I.
`
`INTRODUCTION
`The Board should find all of the challenged claims of the ’081 patent
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`unpatentable. In its POR, Patent Owner (“PO”) has incorrectly premised nearly the
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`entirety of its arguments on faulty claim interpretations that import numerous
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`limitations into the claims. This has resulted in an incomplete and incorrect
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`analysis of the Petition’s grounds of unpatentability.
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`The majority of PO’s arguments are premised on an erroneous claim
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`interpretation for the “first receiver module” and “second receiver module,” which
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`the Board has already rejected. POR, 12-15; DI, 43. Specifically, PO reiterates the
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`arguments presented in the POPR that the first and second receiver modules must
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`be “separate and distinct” devices. POR, 12-15; POPR, 23-25; DI, 43. Yet, PO’s
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`arguments, as the Board correctly noted in its Institution Decision, are flawed for
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`numerous reasons.
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`First, PO fails to provide an actual claim construction for either the “first
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`receiver module” or “second receiver module.” Instead, PO merely alleges that
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`“the Board should understand first receiver module and second receiver module as
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`two separate and distinct receiver modules.” POR, 12.1 This, however, is not a
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`1 PO elsewhere alleges that the first and second receiver modules only require “two
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`distinct receiver modules.” POR, 15. PO has offered no explanation for what the
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`proposed claim construction as many potential interpretations for the first receiver
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`module and second receiver module could satisfy this requirement. Additionally,
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`PO’s non-construction also lacks specificity as there is no indication of what it
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`means for these two modules to be “distinct”—e.g., separation of physical
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`components within a single device, physically separate devices, logical separation,
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`etc. PO’s fails to provide such specificity for one simple reason—such an
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`interpretation is not supported by the specification.
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`Moreover, not only does the specification not support PO’s interpretation of
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`the “first receiver module” and “second receiver module,” such an interpretation
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`would actually read out preferred embodiments in the specification. EX1001, 6:47-
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`7:8 (broadly defining “module” to include “logical modules that may be combined
`
`with other modules or divided
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`into sub-modules despite
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`their physical
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`organization); EX1015, 27:4-16, 93:17-25, 95:1-18. The Board should therefore re-
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`apply the findings from the Institution Decision and reject PO’s attempts to
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`improperly narrow the claims.
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`PO then argues that Mackintosh and DeWeese do not disclose the “second
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`receiver module” under its erroneous interpretation. POR, 25-29, 39-41. This is not
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`difference is between receiver modules that are “separate and distinct” versus just
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`“distinct.”
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`true. As further explained below, Mackintosh and DeWeese disclose the “second
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`receiver module” regardless of whether PO’s claim interpretation is adopted.
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`PO additionally alleges that claim terms such as “data enabling the
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`identification of a specific instance of the first media content” and “output system”
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`are not disclosed by the art. But as explained below, these arguments are also
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`premised on improper attempts to inject additional limitations into the claims. The
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`Board should reject such attempts to rewrite the claims.
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`Under the proper interpretation of the claims as already applied by the Board
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`at institution, Mackintosh and DeWeese disclose all of the challenged claim
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`elements. Therefore, the Board should find claims 9-11 and 23 of the ’081 patent
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`unpatentable.
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`II.
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`PO’S ATTEMPTS TO IMPROPERLY REWRITE THE CLAIMS
`The Board should reject PO’s interpretation of “first receiver module,”
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`“second receiver module,” “ an output of the first receiver module or the second
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`receiver module,” and “data enabling the identification of a specific instance of the
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`first media content from a first broadcast medium” in the POR because PO’s
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`interpretations amount to an impermissible rewriting of the claims. GE Lighting
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`Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1317 (Fed. Cir. 2014). The various
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`ways that PO seeks to rewrite independent claims 9 are shown below.
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`Where PO’s
`Arguments Can Be
`Found
`POR, 12-15, 26-29, 39-
`41.
`
`POR, 31-32, 41-43.
`
`POR, 33-35, 38-39.
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`PO’s Proposed Rewritten Claim Term
`
`“a first receiver module configured to receive at least a
`first media content … a second receiver module,
`[separate and] distinct from the first media content,
`configured to receive at least a second media content
`…”2
`“an output system configured to present concurrently
`the first media content and the second media content on
`[[an]] a first output of the first receiver module [[or]]
`and to present either the first media content or the
`second media content on a second output of the second
`receiver module”
`“data enabling the identification of a specific first
`instance of the first media content from a first
`broadcast medium and a specific second instance of the
`first media content from the first broadcast medium,
`and further enabling the first specific instance to be
`distinguished from the second specific instance,
`wherein the data is dynamically determined at the time
`of broadcast by a main facility”
`
`The phrases that PO’s seeks to rewrite are clear and unambiguous in their
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`original form, both on their own and in light of the specification. EX1016, ¶¶9-14.
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`Thus, no need exists to go beyond the easily understandable language of those
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`phrases. Because all but one of PO’s arguments are premised on these improper
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`2 PO’s interpretation of this phrase is also improper because it provides no
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`indication of what it means for these two modules to be “distinct”—e.g., separation
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`of physical components within a single device, physically separate devices, logical
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`separation, etc.
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`attempts to rewrite the claim limitations, PO’s arguments should be dismissed
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`outright.3
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`III. CLAIM CONSTRUCTION – FIRST RECEIVER MODULE AND
`SECOND RECEIVER MODULE
`PO reiterates its claim interpretation from the POPR and argues that a “first
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`receiver module” and “second receiver module” requires “two separate and distinct
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`receiver modules.” POR, 12-15; POPR, 23-25. In the Institution Decision,
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`however, the Board already rejected PO’s interpretation and explained that “the
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`specification of the ’081 Patent does not support [PO’s] assertion that the recited
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`modules must necessarily be separate physical components.” DI, 43. As further
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`explained below, the Board correctly rejected PO’s attempt to improperly import
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`this limitation into the claims and should do so again.
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`PO Fails to Provide an Actual Construction
`A.
`PO and Dr. Moon do not provide an actual construction for the Board to
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`adopt. POR, 12-15; EX2019, ¶¶50-55; EX1015, 74:1-75:17, 78:22-79:4. As such,
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`there is no construction for the Board to consider.
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`3 The lone argument that PO presents that is not based on one of these improper
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`claim interpretations—relating to whether DeWeese discloses “second media
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`content received discretely from the first media content”—is still flawed for the
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`reasons discussed in Section V.D below.
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`Rather than providing an explicit construction for a first or second receiver
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`module, PO argues that limitations should be added to the terms to narrow their
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`scope. POR, 12-15; POPR, 23-25. Specifically, PO argues that claim 9 requires
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`“two separate and distinct receiver modules.” POR, 12-15. But this interpretation
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`does not clearly delineate the bounds of the claim. EX1016, ¶¶15-18. Rather, this
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`interpretation introduces additional ambiguity as to what constitutes “separate and
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`distinct” receiver modules. Id. When asked to elaborate on this interpretation, Dr.
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`Moon similarly could not define the claim scope for “separate and distinct”
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`receiver modules and whether this required receiver modules that were physically
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`separated in space. EX1015, 80:10-81:3.
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`Thus, rather than providing an actual claim construction, PO attempts to
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`improperly import additional limitations into the claims. EX1016, ¶¶16-18. The
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`Board should reject PO’s overly narrow interpretation. Superguide Corp. v.
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`DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is important not to
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`import into a claim limitations that are not a part of the claim.”); E-Pass Techs.,
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`Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
`
`B.
`
`PO Ignores the Specification’s Clear Description that “Modules”
`Are Not Necessarily Separate Physical Components
`PO does not identify any specification support for its alleged interpretation.
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`POR, 12-15. Rather, PO’s interpretation is premised only on the claim language
`
`and the recitation of the “output system” as further addressed below. Id. But as the
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`Board has already acknowledged, the specification does not support PO’s narrow
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`interpretation. DI, 43. Specifically, the specification does not limit the term
`
`“module” in the way that PO proposes. DI, 43 (“the specification of the ’081
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`Patent does not support [PO’s] assertion that the recited modules must necessarily
`
`be separate physical components”). The Board should therefore reject PO’s
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`interpretation.
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`Specifically, the specification provides an explicit and expansive definition
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`for the term “module”:
`
`[T]he word “module,” as used herein, refers to logic embodied in
`hardware and/or firmware, and/or to a collection of software
`instructions, … Generally, the modules described herein refer to
`logical modules that may be combined with other modules….
`
`EX1001, 6:47-7:8 (emphasis added). Nothing limits “modules” to separate and
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`distinct devices or imposes such a requirement. EX1016, ¶¶19-24. Rather, the
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`specification contemplates two logical modules implemented using common
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`hardware and/or software. EX1001, 6:47-7:8, 16:60-17:3; EX1016, ¶¶19-24. In
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`fact, Dr. Moon confirmed as much during his deposition. EX1015, 27:4-16, 93:17-
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`25, 95:1-18. Therefore, the specification provides an explicit definition for the term
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`“module” as used in claim 9, which encompasses overlapping hardware and
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`software that implements the first and second receiver modules. EX1016, ¶¶19-24.
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`The specification additionally supports the claimed receiver module
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`functionality occurring at a single hardware device. EX1001, 14:40-46; 14:63-
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`15:3, 22:45-23:35. For example, “FIG. 1B and FIG. 1C illustrate the media
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`association system 2 transmitting the advertisement media signal 113 and the
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`related media signal 114 to the primary and/or ancillary devices 4, 5.” EX1001,
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`14:40-46; 14:63-15:3. The use of the term “and/or” indicates that a single device
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`(such as primary device 4) may have the necessary modules for receiving both
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`advertisement media signal 113 and related media signal 114—corresponding to
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`the claimed “second media content.” EX1016, ¶25.
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`EX1001, FIG. 1B and FIG. 1C
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`The specification’s description with respect to Figure 4A also depicts a
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`single device (primary device 4) having modules for receiving both first media
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`content and second media content (e.g., related media signal 114, advertisement
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`signal 113). EX1001, 22:45-23:35.
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`EX1001, FIG. 4A
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`
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`For example, “primary device 4 can receive a variety of inputs, comprising a
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`first media signal 111, a related media signal 114, [and] an advertisement signal
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`113….” EX1001, 22:48-51. These signals correspond to audio and/or video
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`received at the primary device 4, and correspond to the claimed first and second
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`media content. Id., 23:1-18, 4:50-63. Thus, the specification contemplates a single
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`device having the necessary modules for receiving both the first and second media
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`content. EX1016, ¶¶26-27.
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`Further, the specification describes a single device discretely receiving a first
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`media signal and an advertisement message. EX1001, 4:50-63. Even when the
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`media content is “separate and discrete,” “the device receives both the first media
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`signal and the advertisement message and presents them to the user.” Id. The
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`specification therefore also describes the functionality of the claimed first and
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`second receiver modules occurring at a single device which uses multiple receiver
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`modules to receive both sets of media content. EX1016, ¶¶28-29. Thus, the
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`specification does not limit the claims in the manner that PO proposes.4
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`4 Claims 1 and 12 and the doctrine of claim differentiation also demonstrate
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`that claim 9 does not require multiple user devices. Ancora Techs., Inc. v. Apple,
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`Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (applying claim differentiation to different
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`independent claims and explaining that a difference in claim terms “tends to
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`reinforce” different claim interpretations). Claims 1 and 12 explicitly recite a
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`“plurality of user devices.” EX1001, 34:21-22, 34:33-40, 35:50-51, 35:61-36:12.
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`Had the patentee intended to limit claim 9 to require multiple devices, it could have
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`done so using the same language. See EX1001. Claim 9, however, recites
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`“modules,” which is broader than “user devices.”
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`C. The Claimed “Output System” Does Not Limit the Claimed First
`and Second Receiver Modules
`Claim element 9[d] recites “an output system configured to present
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`concurrently the first media content and the second media content on an output of
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`the first receiver module or the second receiver module.” EX1001, 35:32-35
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`(emphasis added). In arguing that the first and second receiver modules must reside
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`on two separate devices, PO relies on this “output system.” POR, 13-15. PO argues
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`that the recitation of “an output of the first receiver module or the second receiver
`
`module” necessitates that the first and second receiver modules be separate and
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`discrete so that they can have their own outputs. Id. But this interpretation
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`effectively imports additional limitations and rewrites the claim as shown in
`
`Section II. PO misinterprets the claims and fails to recognize that the claimed
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`“output system” need only output the first and second media content on a single
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`output to be satisfied. EX1016, ¶¶30-35. Therefore, PO’s improperly narrow
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`interpretation of claim element 9[d] should be rejected and does not support its
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`overall theory that the first and second receiver module must reside in separate
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`devices. Id.
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`Indeed, the claimed “output system” simply recites two pieces of media
`
`being concurrently presented by an output of the first and/or second receiver
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`module—i.e., presenting can occur on a single device or multiple devices. Id., ¶31;
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`EX1001, 35:32-35. This is clear from the “or” in claim element 9[d], which
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`indicates that outputting the first/second media content using a single device—as
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`opposed to two separate devices—sufficiently satisfies the claim. EX1016, ¶¶31-
`
`35. To illustrate an example, outputting audio data (“first media content”) via a
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`speaker with corresponding visual data (“second media content”) via a display
`
`using a single device would satisfy the claim. Id.; EX1001, FIG. 3 (depicting a
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`primary device 4 receiving multiple media content and outputting the content
`
`concurrently via a split screen display and/or a display with a speaker). This is
`
`because all that is required is a concurrent presentation of both media on a single
`
`device’s output. EX1016, ¶¶31-35.
`
`PO’s arguments ignore the embodiments in the specification that clearly
`
`contemplate a single device receiving multiple media signals and outputting them
`
`concurrently. Section III.B. PO’s attempt at excluding these single user-device
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`embodiments from the scope of claim 9 is impermissible. Knowles Electronics
`
`LLC v. Iancu, 886 F. 3d 1369, 1375 (Fed. Cir. 2018) (“A claim construction that
`
`does not encompass a disclosed embodiment is … rarely, if ever, correct.”)
`
`(quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1320 (Fed. Cir.
`
`2005)).
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`IV. MACKINTOSH ANTICIPATES THE CHALLENGED CLAIMS
`(GROUND 1)
`A. Mackintosh Discloses the Claimed “Second Receiver Module”
`PO first argues that Mackintosh does not disclose the claimed “second
`
`receiver module” because it is not “distinct from a first receiver module.” POR, 25-
`
`29. But PO’s entire argument is premised on its improperly narrow interpretation
`
`of the claim language. Id. For example, PO argues that Mackintosh’s
`
`“communications interface” located within a user terminal or computer is
`
`insufficient to disclose a second receiver module because Mackintosh only
`
`includes a “single interface that receives external data.” Id. First, PO’s
`
`interpretation of the claimed “second receiver module” is incorrect for the reasons
`
`explained in Section III. Second, PO ignores the precedent cited by the Board that
`
`allows a single element in the prior art to satisfy multiple claim limitations. DI, 44.
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`And third, Mackintosh discloses the claimed “second receiver module” even under
`
`PO’s narrow interpretation. EX1016, ¶¶36-41.
`
`As previously explained, claim 9 does not require that the first and second
`
`receiver modules be “separate and distinct.” Mackintosh therefore discloses the
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`claimed “second receiver module” for the reasons presented in the Petition. Pet.,
`
`25-32. Mackintosh’s communication interface discloses the claimed “second
`
`receiver module” and receives “supplemental materials,” which disclose the
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`claimed “second media content.” Id.; EX1004, 2:57-62, 3:19-26, 5:50-54, 5:59-6:2,
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`7:16-20, 9:7-59,10:37–40, FIG. 5, 21:47–67, 22:11–60, FIG. 10, 23:26-55, 24:55-
`
`58.
`
`While PO incorrectly argues that the Petition relies on Mackintosh’s
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`communication interface to disclose the first and second receiver modules—which
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`it does not—this distinction fails in view of the clear precedent already
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`acknowledged by the Board. DI, 44; POR, 25. When analyzing prior art, “a single
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`element, feature, or mechanism can ordinarily satisfy multiple claim limitations,
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`including by performing multiple claimed functions.”5 PO has not addressed this
`
`precedent, but rather continues with the same rationale and arguments that the
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`Board has already rejected. DI, 42-45. Thus, PO has not identified any deficiency
`
`in Mackintosh. EX1016, ¶¶36-39.
`
`Even if PO’s erroneous interpretation were adopted, Mackintosh still
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`discloses two distinct receiver modules. EX1004, 19:59-20:22, FIG. 8; EX1003,
`
`¶¶88-89; EX1016, ¶¶40-41. For example, and in direct response to PO’s
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`unsupported claim interpretation, Mackintosh discloses a “player” that “includes
`
`several modules for receiving materials, coordinating materials, and playing the
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`materials via the player.” EX1004, 19:63-66, FIG. 8 (emphasis added).
`
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`5 DI, 44 (citing numerous cases).
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`EX1004, FIG. 8.
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`As depicted in Figure 8, the player includes a “received broadcast module
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`404” configured to receive a broadcast and a “get-data module 414,” which
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`retrieves information pertaining to supplemental materials. Id., 20:3-22. Thus,
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`Mackintosh discloses two separate and discrete receiver modules even under PO’s
`
`interpretation. EX1016, ¶¶40-41.
`
`B. Mackintosh Discloses the Claimed “Output System”
`PO’s “output system” arguments are premised on the incorrect claim
`
`interpretation that requires two devices to each have a separate output for
`
`outputting first and second media content. Section III.C; EX1016, ¶¶42-46. PO
`
`reiterates these same arguments as an alleged deficiency in Mackintosh. POR, 30-
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`U.S. Pat. No. 8,166,081
`33. PO again states that claim element 9[d] “requires two outputs” and argues that
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`Mackintosh discloses a “singular device” that “presents both the first media
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`content and second media content via various presentation methods.” Id. PO then
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`argues that Mackintosh does not disclose a “second device with its own separate
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`speakers and/or display.” Id. These observations, however, are not relevant when
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`correctly interpreting the claim as being satisfied when a single device
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`concurrently presents the first and second media content. EX1016, ¶42. Under this
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`proper interpretation, Mackintosh discloses the claimed “output system” for the
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`reasons described in the Petition. Pet., 36-38.
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`As explained in the Petition, Mackintosh’s player 510 presents first media
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`content when playing audio through speakers and concurrently presents second
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`media content when visually displaying “supplemental materials.” Id.; EX1004,
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`21:56-67, 22:13-23:6, FIG. 12. Mackintosh’s “speakers” and “display” collectively
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`correspond to the claimed “output system,” and separately correspond to the
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`claimed “an output of the first receiver module or the second receiver module.”
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`EX1016, ¶¶43-44. The “speakers” disclose a first receiver module output and the
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`“display” disclose a second receiver module output. Id.; Pet., 37. This sufficiently
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`discloses the claimed “output system” under the proper interpretation of the term.
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`EX1016, ¶¶43-44.
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`U.S. Pat. No. 8,166,081
` Nonetheless, even under PO’s improper claim interpretation, Mackintosh
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`still discloses this limitation. Mackintosh discloses a player that provides broadcast
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`material (“first media content”) and “supplemental materials” (“second media
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`content”) to “peripheral devices 422.” EX1004, 20:10-13, 20:23-31. Mackintosh
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`therefore discloses multiple devices capable of concurrently presenting first and
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`second media content. EX1016, ¶¶45-46. Thus, even under PO’s improper
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`interpretation, Mackintosh still discloses claim element 9[d].
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`C. Mackintosh Discloses “Data Enabling the Identification of a
`Specific Instance of the First Media Content”
`PO’s argument for this claim limitation is again premised on limitations not
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`present in the claims. POR, 33-35. PO argues that this claim limitation “requires
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`data distinguishing between each occurrence of the media content.” Id. This
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`interpretation is wrong and therefore leads to an erroneous analysis of
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`Mackintosh’s teachings. EX1016, ¶47.
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`PO argues that Mackintosh does not disclose the claimed “data” because the
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`claim requires differentiation between “two instances of the same song.” POR, 34-
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`35. PO also argues that the claim requires “dynamically determining” the claimed
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`data “at the time of broadcast.” Id. But the claims do not recite such limitations.
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`EX1016, ¶48; Section V.A (discussing why “dynamically determining” is not
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`required by claim 9). Rather, all that is recited in the claim is data that identifies a
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`single “specific instance” of the first media content. EX1016, ¶48. If Mackintosh
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`describes data that identifies one instance of the first media content, Mackintosh
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`discloses this claim element. Id. Dr. Moon confirmed that the claim does not recite
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`analyzing multiple instances and that identifying a single specific instance satisfied
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`the claim. EX1015, 133:4-9; see also id., 131:18-134:20.
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`With this understanding, Mackintosh’s cut codes or cut numbers disclose the
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`claimed “data.” Pet., 21-25; EX1004, 8:40-49, 9:48-50, FIGs. 5, 10; EX1016, ¶49.
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`Mackintosh’s “program data” includes “cut numbers” assigned by radio stations
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`that identify “recorded components that air on their station.” EX1004, 9:7-12,
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`21:11-24; Pet., 22-23; EX1003, ¶68. The “cut number … identifies the particular
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`cut” while “program data” can additionally include “format information,” and a
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`“station ID” that “uniquely identif[ies] that station.” EX1004, 9:18-19, 9:25-47,
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`21:11-24; EX1003, ¶68. The station ID allows for “cut number[s] or other codes
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`from different stations [to] be differentiated.” EX1004, 10:11-13, 21:11-24;
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`EX1003, ¶68.
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`Apparently overlooked by PO, Mackintosh discloses that each song or other
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`audio content transmitted by a radio station “comprises a distinct segment” (i.e., a
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`specific instance of transmission) and that a “cut code corresponding to and
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`uniquely identifying a segment from the standpoint of the radio station is
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`transmitted … concurrently with the transmission of the corresponding segment.”
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`EX1004, 21:18-25 (emphasis added); Pet., 22-23; EX1003, ¶68. The “uniquely
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`identifying” cut code and the station ID, therefore, disclose identifying different
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`segments transmitted from the radio station and/or multiple instances of media.
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`Pet., 23; EX2020, 93:12-94:22; EX1016, ¶¶50-51. Additionally, the cut codes are
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`themselves dynamically determined even under PO’s interpretation because they
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`correspond to transmitted radio station segments and are dynamically generated to
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`identify these real-time segments. EX1004, 21:18-25; EX1016, ¶52. Thus,
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`Mackintosh’s cut code and station ID disclose the claimed data enabling
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`identification of a specific instance of the first media content even under PO’s
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`interpretation. Pet., 23; EX1016, ¶52.
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`Regardless, as previously explained, the claims only require an identification
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`of a single instance of the first media content such as a song. Pet., 23; EX1016,
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`¶53. Mackintosh’s cut code and station ID would uniquely identify this single
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`instance of media—for example, when a song is played only once. EX1004, 21:18-
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`25; EX1016, ¶53. PO does not address such a situation but improperly presumes
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`that the claim must recite multiple instances of a song. Id., ¶53. It does not.
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`EX1001, 35:23-26.
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`D. Mackintosh Discloses Claim 10
`PO’s claim 10 arguments related to “limiting” the output of the first and
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`second media content based on a “criterion” are again premised on an improperly
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`narrow claim interpretation. EX1016, ¶54; POR, 35-38. Mackintosh discloses
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`claim 10 for the reasons stated in the Petition. Pet., 47-49; EX1003, ¶¶103-106.
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`PO argues that Mackintosh fails to teach claim 10 by first citing various
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`examples of “limiting” from the specification. POR, 35-36. These examples,
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`however, do not explain or demonstrate any deficiency in Mackintosh. EX1016,
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`¶55. Rather, PO summarizes these example embodiments and reiterates that all that
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`is required is “limiting the presentation of both the first and second media content
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`on the given outputs.” POR, 36-37. This does not refute Mackintosh’s teachings.
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`EX1016, ¶55.
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`Rather, PO’s citation to the specification underscores why Mackintosh
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`discloses claim 10. Id., ¶¶56-58. For example, PO cites an example where the
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`limiting criterion is satisfied by a user input that chooses media to output—display
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`selection module 406 can use “user inputs” to “choose output media.” POR, 36
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`(citing EX1001, 22:65-67). One such input would be the user changing the channel
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`or turning off the presentation of the first/second media content as described in
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`Mackintosh. Pet., 47-49; EX1004, 12:47-50, FIG. 13.
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`The setting of Mackintosh’s “tuner button or knob” discloses a criterion for
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`limiting the output of the first and second media content. Pet., 48-49; EX1004,
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`12:47-50, FIG. 13. Changing the station us
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