Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 47
`Entered: August 15, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., SUBARU OF
`AMERICA, INC., and VOLVO CAR USA, LLC,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.
`Patent Owner.
`____________
`
`IPR2021-007211
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Request for Supplemental Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 IPR2022-00203 was joined with this proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 47
`Entered: August 15, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., SUBARU OF
`AMERICA, INC., and VOLVO CAR USA, LLC,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.
`Patent Owner.
`____________
`
`IPR2021-007211
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Request for Supplemental Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 IPR2022-00203 was joined with this proceeding.
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`
`Petitioner, Volkswagen Group of America, Inc., filed a Petition (Paper
`1, “Pet.”) requesting inter partes review of claims 9–11 and 23 (the
`“challenged claims”) of U.S. Patent No. 8,166,081 B2 (Ex. 1001, “the ’081
`Patent”). Patent Owner, StratosAudio, Inc., filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). Pursuant to an Order, Paper 11, Petitioner filed a
`Preliminary Reply, Paper 12, and Patent Owner filed a Preliminary Sur-
`reply, Paper 14, to address certain issues raised in Patent Owner’s
`Preliminary Response. On October 22, 2021, inter partes review was
`instituted on all claims and all grounds raised in the Petition. Paper 16.
`Claim 9 is the only independent claim of the ’081 Patent challenged in
`the Petition. Independent claim 9 recites:
`9[pre] A system for combining multiple media comprising:
`9[a] a first receiver module configured to receive at least a first media
`content and data enabling the identification of a specific
`instance of the first media content from a first broadcast
`medium;
`9[b] a second receiver module configured to receive at least a second
`media signal content and uniquely identifying data specific to at
`least the second media content,
`9[c] the second media content received discretely from the first media
`content;
`9[d] an output system configured to present concurrently the first
`media content and the second media content on an output of the
`first receiver module or the second receiver module;
`9[e] an input module configured to receive at least a response input
`responsive to the second media content; and
`
`2
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`
`9[f] a transmitting module configured to transmit a response message
`having at least the uniquely identifying data specific to the
`second media content to a computer server.
`Ex. 1001, 35:22–41 (bracketed labelling designated by Petitioner; see Pet.
`15–42).
`After institution, Patent Owner filed a Response, Paper 27
`(“Response” or “Resp.”), Petitioner filed a Reply, Paper 31 (“Reply”), and
`Patent Owner filed a Sur-reply, Paper 36 (“Sur-reply”). We provide a brief
`summary of the parties’ arguments with respect to particular limitations of
`claim 9 for context.
`In its Response, Patent Owner argues that claim 9 “recites a structural
`limitation of the system: that the first receiver module and the second
`receiver module each have a corresponding output” and that “[t]he system is
`further configured to concurrently display the first and second media content
`on one of these two outputs.” Resp. 13 (citing Ex. 2019 ¶ 52). Patent
`Owner argues that “[t]he specification explains that either the primary
`device 4 or the ancillary device 5 may have the capability to present both the
`first and second media content.” Id. at 14. “As drafted,” Patent Owner
`argues, “claim 9 is directed to those instances when the ancillary device
`receives the second media content separately and discretely from the first
`media content.” Id. (citing Ex. 2019 ¶ 53).
`Figure 3 of the ’081 Patent is shown below.
`
`3
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`
`
`The ’081 Patent explains that “the embodiment of a primary device
`presented in [Figure] 3 is a radio-enabled cellular phone with a display panel
`450.” Ex. 1001, 19:11–13. The ’081 Patent also explains that ancillary
`device 5 “may take the form of any device such as those defined for primary
`device 4 or an adjunct to a primary device 4 such as a personal computer,
`server, digital media player docking station, video player, printer, clock,
`telephone, answering machine, recorder, remote control and/or the like.” Id.
`at 8:53–57.
`
`4
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`
`In its Response, Patent Owner goes on to argue that
`Element 9[d], however, requires two outputs. Ex. 2019 ¶ 78.
`Element 9[d] recites a structure of the claimed system: it must
`have a first “output” of the “first receiver module” and a second
`“output” of the “second receiver module.” Each output must
`have
`the capability of presenting—audibly, visibly or
`otherwise— media content. Ex. 2019 ¶ 78. Further, at least one
`of these “outputs” must have the capability to perform concurrent
`presentation of two pieces of media content— e.g., audibly and
`visibly. Ex. 2019 ¶ 78.
`
`Resp. 31.
`In Reply, Petitioner argues that “outputting the first/second media
`content using a single device—as opposed to two separate devices—
`sufficiently satisfies the claim.” Reply 12 (citing Ex. 1016 ¶¶ 31–35). For
`example, Petitioner argues that
`outputting audio data (“first media content”) via a speaker with
`corresponding visual data (“second media content”) via a display
`using a single device would satisfy the claim. Ex. 1016 ¶¶ 31–
`35; Ex. 1001, [Fig.] 3 (depicting a primary device 4 receiving
`multiple media content and outputting the content concurrently
`via a split screen display and/or a display with a speaker).
`
`Id.
`
`In its Sur-reply, Patent Owner states that it “does not dispute”
`Petitioner’s contention that “the specification of the ’081 [P]atent supports a
`reading where one device can have the ‘necessary modules for receiving
`both the first and second media content.’” Sur-reply 2 (quoting Reply 8–
`
`5
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`10). Patent Owner argues that Petitioner’s contention is irrelevant “because
`Patent Owner never argued claim 9 requires two ‘devices.’ Patent Owner
`instead pointed out that the claim requires two distinct modules.” Id. (citing
`Resp. 12–15).
`Oral argument was held on July 22, 2022. During oral argument, the
`parties continued to disagree on the interpretation and scope of claim 9. To
`assist the Board in reaching a final determination on the merits, the parties
`are invited to provide supplemental briefing addressing the following
`questions. The parties should provide their respective responses to the
`questions and also provide their best evidence of record that supports their
`answers to these questions along with a detailed explanation of how that
`evidence supports their response.
`Question 1: Would a single device housing the recited “first receiver
`module” and “second receiver module” fall within the scope of claim 9?
`Question 2: Would a “first receiver module” or a “second receiver
`module” having more than one output fall within the scope of claim 9?
` Question 3: Would an output system configured to present a “first
`media content” on a first output of a “first receiver module” while
`concurrently presenting a “second media content” on a second output of the
`“first receiver module” fall within the scope of claim 9?
`Question 4: Assume primary device 4 depicted in Figure 3 of the ’081
`Patent contains a “first receiver module” and a “second receiver module.”
`Also assume the “first receiver module” and the “second receiver module”
`of primary device 4 each have two outputs. Would such a device fall within
`the scope of claim 9 if its output system was configured to present a “first
`media content” on the first output of the “first receiver module” while
`
`6
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`concurrently presenting a “second media content” on the second output of
`the “first receiver module”?
`Question 5: Please identify where in the substantive papers you
`argued that Mackintosh does, or does not, disclose a “first receiver module”
`and a “second receiver module,” and provide a brief summary of the
`evidence of record you cited in support of those arguments.
`Question 6: Please identify where in the substantive papers you argued
`that Mackintosh does, or does not, disclose an output system configured to
`present concurrently a “first media content” and a “second media content” on
`an output of a “first receiver module,” and provide a brief summary of the
`evidence of record you cited in support of those arguments.
`Question 7: Please identify where in the substantive papers you
`argued that Mackintosh does, or does not, disclose an output system
`configured to present concurrently a “first media content” and a “second
`media content” on an output of a “second receiver module,” and provide a
`brief summary of the evidence of record you cited in support of those
`arguments.
`Question 8: Please identify where in the substantive papers you
`argued that DeWeese does, or does not, disclose a “first receiver module”
`and a “second receiver module,” and provide a brief summary of the
`evidence of record you cited in support of those arguments.
`Question 9: Please identify where in the substantive papers you
`argued that DeWeese does, or does not, disclose an output system
`configured to present concurrently a “first media content” and a “second
`media content” on an output of a “first receiver module,” and provide a
`
`7
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`brief summary of the evidence of record you cited in support of those
`arguments.
`Question 10: Please identify where in the substantive papers you
`argued that DeWeese does, or does not, disclose an output system
`configured to present concurrently a “first media content” and a “second
`media content” on an output of a “second receiver module,” and provide a
`brief summary of the evidence of record you cited in support of those
`arguments.
`
`
`ORDER
`
`It is hereby
`ORDERED that Petitioner and Patent Owner may each file a
`supplemental brief, limited to fifteen pages, addressing the questions set
`forth above by August 29, 2022;
`FURTHER ORDERED that no new evidence may be provided; and
`FURTHER ORDERED that no other briefing is authorized at this
`
`time.
`
`8
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`For PETITIONER:
`Michael Specht
`Ryan Richardson
`Daniel Block
`Daniel Yonan
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`mspecht-ptab@sternekessler.com
`rrichardson-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`dyonan-ptab@sternekessler.com
`
`Matthew Satchwell
`Paul Steadman
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`paul.steadman@dlapiper.com
`
`Lewis Hudnell, III
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`Nicolas Gikkas
`nsg@gikkaslaw.com
`
`For PATENT OWNER:
`John Scheibeler
`Jonathan Lamberson
`Ashley Brzezinski
`Hallie Kiernan
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`hallie.kiernan@whitecase.com
`
`
`
`
`9
`
`
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