U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO INC.,
`Patent Owner.
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,166,081
`
`
`
`
`
`
`

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`TABLE OF CONTENTS
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`Page
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`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................. 2
`III.
`FEE AUTHORIZATION ............................................................................... 4
`IV. GROUNDS FOR STANDING ....................................................................... 4
`V.
`PRECISE RELIEF REQUESTED ................................................................. 4
`VI. THE CHALLENGED PATENT .................................................................... 5
`VII. PATENT PROSECUTION HISTORY .......................................................... 8
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`IX. PRIORITY DATE ........................................................................................ 10
`X.
`CLAIM CONSTRUCTION ......................................................................... 10
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES ............................................................................................. 11
`A. Noreen (Ex-1005) ............................................................................... 11
`B.
`Crosby (Ex-1006) ............................................................................... 13
`C.
`Ellis-2002 (Ex-1007) .......................................................................... 15
`D.
`Ellis-2005 (Ex-1008) .......................................................................... 16
`XII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER § 325(D) TO DENY HEARING THESE INVALIDITY
`ISSUES FOR THE FIRST TIME IN THIS PETITION .............................. 18
`XIII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS ................................................................................................... 22
`A. Grounds 1 and 2: Claims 9, 15, and 23 are rendered obvious by
`Noreen (Ex-1005) (Ground 1) or Noreen in view of Crosby
`(Ex-1006) (Ground 2). ........................................................................ 23
`1.
`A POSITA would have been motivated to combine the
`teachings of Noreen and Crobsy, and would have had a
`reasonable expectation of success in doing so. ........................ 23
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`TABLE OF CONTENTS
`(continued)
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`Page
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`B.
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`C.
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`B.
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`C.
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`Independent Claim 9 ................................................................ 23
`2.
`Dependent Claims 15 and 23 ................................................... 32
`3.
`Ground 3: Claims 10 and 11 are rendered obvious by Noreen
`(Ex-1005) in view of Crosby (Ex-1006) and Ellis-2002 (Ex-
`1007). .................................................................................................. 35
`1.
`A POSITA would have been motivated to combine the
`teachings of Noreen, Crosby, and Ellis-2002, and would
`have had a reasonable expectation of success in doing so....... 35
`Dependent Claims 10-11 .......................................................... 36
`2.
`Grounds 4 and 5: Claims 9-11, 15, and 23 are rendered obvious
`by Ellis-2005 (Ex-1008) alone (Ground 4) or Ellis-2005 in view
`of Crosby (Ex-1006) (Ground 5). ....................................................... 40
`1.
`A POSITA would have been motivated to combine the
`teachings of Ellis-2005 and Crosby, and would have had
`a reasonable expectation of success in doing so. ..................... 40
`Independent Claim 9 ................................................................ 40
`2.
`Dependent Claims 10-11, 15, and 23 ....................................... 52
`3.
`XIV. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER GENERAL PLASTIC ........................................... 57
`XV. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................. 60
`A. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted ....................................... 60
`Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision .................................... 61
`Investment in the parallel proceeding by the court and the
`parties ................................................................................................. 62
`D. Overlap between issues raised in the petition and in the parallel
`proceeding .......................................................................................... 64
`E. Whether the petitioner and the defendant in the parallel
`proceeding are the same party ............................................................ 65
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`TABLE OF CONTENTS
`(continued)
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`Page
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`F.
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`Other circumstances that impact the Board’s exercise of
`discretion, including the merits .......................................................... 65
`XVI. CONCLUSION ............................................................................................. 66
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`iii
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS1
`
`Ex-1001 U.S. Patent No. 8,166,081 B2, issued Apr. 24, 2012 (“’081 Patent”)
`Ex-1002 Declaration of Dr. Kevin Almeroth
`Ex-1003 Curriculum Vitae of Dr. Kevin Almeroth
`Ex-1004 Prosecution History of U.S. Patent No. 8,166,081
`Ex-1005 U.S. Patent No. 5,303,393 A, issued Apr. 12, 1994 (“Noreen”)
`Ex-1006 U.S. Patent No. 6,628,928 B1, issued Sept. 30, 2003 (“Crosby”)
`Ex-1007 WO Publication No. 2002/067447 A2, published Aug 29, 2002
`(“Ellis-2002”)
`Ex-1008 U.S. Patent Publication No. 2005/0227611 A1, published Oct. 13,
`2005 (“Ellis-2005”)
`Ex-1009 Email from Albright Clerk, dated May 4, 2021
`Ex-1010
`[INTENTIONALLY LEFT BLANK]
`Ex-1011
`[INTENTIONALLY LEFT BLANK]
`Ex-1012
`[INTENTIONALLY LEFT BLANK]
`Ex-1013
`[INTENTIONALLY LEFT BLANK]
`Ex-1014
`[INTENTIONALLY LEFT BLANK]
`Ex-1015
`[INTENTIONALLY LEFT BLANK]
`Ex-1016
`[INTENTIONALLY LEFT BLANK]
`Ex-1017
`[INTENTIONALLY LEFT BLANK]
`Ex-1018
`[INTENTIONALLY LEFT BLANK]
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`1 Four-digit pin citations that begin with 0 are to the page stamps added by
`Hyundai in the bottom right corner of the exhibits. All other pin citations are to
`original page, column, paragraph, and/or line numbers.
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
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`[INTENTIONALLY LEFT BLANK]
`Ex-1019
`Ex-1020 Plaintiff’s Preliminary Infringement Contentions, dated May 13,
`2021, including Claim Chart for ’081 Patent (“Infringement
`Contentions”)
`Ex-1021 Petitioner’s Stipulation Letter to Patent Owner, dated July 16, 2021
`Ex-1022 U.S. Patent No. 5,948,061 A, issued Sept. 7, 1999 (“Merriman”)
`Ex-1023 U.S. Patent No. 5,778,181 A, issued July 7, 1998 (“Hidary”)
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`v
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Hyundai Motor America (“Petitioner”) requests inter partes review (“IPR”)
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`of Claims 9-11, 15, and 23 of U.S. Patent No. 8,166,081 (“the ’081 Patent”) (Ex-
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`1001), currently assigned to StratosAudio, Inc. (“Patent Owner”).
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`The ’081 Patent relates to systems “configured to associate a secondary
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`media signal” (for example, an advertisement) “to a primary media signal (for
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`example, a radio broadcast).” Particularly, the patent includes a receiver system
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`that is capable of presenting concurrently multiple discrete media content on output
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`modules such as a speaker and display. Unique identifiers can be implemented as
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`part of a database that allows for the storage and/or retrieval of the identifier and/or
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`its associated data, and for reports to be generated relating to the performance of
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`various aspects of the system by the unique identifiers. These embodiments of the
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`’081 Patent, such as combining multiple media content, concurrently presenting
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`the same to a user, and using unique identifiers to retrieve associated data, were
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`well-known in the art. The ’081 Patent attempts to claim simple combinations of
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`these prior art components.
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`The prior art in this Petition demonstrates that Claims 9-11, 15, and 23 of the
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`’081 Patent involved well-known design choices in the art of media enhancement
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`technology. This prior art also shows that a POSITA understood how to use these
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`design choices to address well-known interactive streaming and/or targeted content
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`issues in media enhancement technologies. Ex-10022 ¶¶44-51; Exs-1022-1023.
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`This Petition presents grounds of unpatentability not addressed, and not
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`cumulative to those addressed, during patent prosecution, as discussed further in
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`Section XII below. The grounds presented in this Petition are more than reasonably
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`likely to prevail and this Petition should be granted.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
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`interest: Hyundai Motor America and Hyundai Motor Company.
`
`Related Matters: Patent Owner has asserted the ’081 Patent against
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`Petitioner in StratosAudio Inc. v. Hyundai Motor America, No. 6:20-cv-01125-
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`ADA (W.D. Tex.). The ’081 Patent has also been asserted by Patent Owner against
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`(1) Volkswagen Group of America, Inc. in StratosAudio, Inc. v. Volkswagen
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`Group of America, Inc., No. 6:20-cv-1131; (2) Mazda Motor of America, Inc. in
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`StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 6:20-cv-01126; (3)
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`Subaru of America, Inc. in StratosAudio, Inc. v. Subaru of America, Inc., No. 6:20-
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`cv-01128; and (4) Volvo Cars of North America, LLC and Volvo Cars USA, LLC
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`in StratosAudio, Inc. v. Volvo Cars of North America, LLC, No. 6:20-cv-01129, all
`
`
`2 The Petition is supported by a declaration from Dr. Kevin Almeroth, an expert in
`computer science, networked multimedia systems, streaming media, and enhanced
`multimedia-based applications. Id. ¶¶1-30; Ex-1003.
`
`2
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`of which are pending in the United States District Court for the Western District of
`
`Texas. Moreover, Petitioner Volkswagen Group of America, Inc. filed a petition
`
`for inter partes review of the ’081 Patent in Volkswagen Group of America, Inc. v.
`
`StratosAudio, Inc., IPR2021-00721 (PTAB Apr. 16, 2021) (“the 721 IPR”).
`
`Lead and Back-Up Counsel:
`• Lead Counsel: Ryan K. Yagura (Reg. No. 47,191), O’Melveny &
`
`Myers LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA
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`90071 (Telephone: 213-430-6000; E-Mail: ryagura@omm.com).
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`• Backup Counsel: Nicholas J. Whilt (Reg. No. 72,081), O’Melveny &
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`Myers LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA
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`90071 (Telephone: 213-430-6000; E-Mail: nwhilt@omm.com);
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`Caitlin P. Hogan (Reg. No. 61,515), O’Melveny & Myers LLP, 7
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`Times Square, Times Square Tower, New York, NY 10036
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`(Telephone: 212-326-2000; E-Mail: chogan@omm.com); Clarence A.
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`Rowland (Reg. No. 73,775), O’Melveny & Myers LLP, 400 South
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`Hope Street, 18th Floor, Los Angeles, CA 90071 (Telephone: 213-
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`430-6000; E-Mail: crowland@omm.com).
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`Service Information: Petitioner consents to electronic service by email to
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`StratosAudioHyundaiOMM@omm.com. Please address all postal and hand-
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`delivery correspondence to lead counsel at O’Melveny & Myers LLP, 400 South
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`Hope Street, 18th Floor, Los Angeles, CA 90071, with courtesy copies to the email
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`address identified above.
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`III. FEE AUTHORIZATION
`Pursuant to 37 C.F.R. § 42.15(a) and § 42.103(a), the PTO is authorized to
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`charge any and all fees to Deposit Account No. LA500639.
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`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’081 Patent is available for IPR, this Petition is
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`timely filed, and Petitioner is not barred or estopped from requesting IPR on the
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`grounds presented.
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`V.
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`PRECISE RELIEF REQUESTED
`Petitioner requests cancellation of Claims 9-11, 15, and 23 of the ’081 Patent
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`under 35 U.S.C. § 103 on the following grounds:
`
`•
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`Grounds 1 and 2: Claims 9, 15, and 23 are rendered obvious by U.S.
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`Patent No. 5,303,393 (“Noreen”) alone and/or Noreen in view of U.S. Patent No.
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`6,628,928 (“Crosby”);
`
`•
`
`Ground 3: Claims 10 and 11 are rendered obvious by Noreen in view
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`of Crosby and WO Publication No. 2002/067447 (“Ellis-2002”);
`
`•
`
`Grounds 4 and 5: Claims 9-11, 15, and 23 are rendered obvious by
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`U.S. Patent Publication No. 2005/0227611 (“Ellis-2005”) alone and/or Ellis-2005
`
`in view of Crosby. See also Ex-1002 ¶¶35-39, 43.
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`
`VI. THE CHALLENGED PATENT
`The ’081 Patent generally relates to “systems and methods for associating an
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`advertising media signal with another media signal.” Ex-1001, 1:19-20. The ’081
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`Patent describes one embodiment wherein “a radio station transmits a song that is
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`received by a user-enabled device, such as a cellular phone with a radio.” Id. 3:27-
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`29.
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`For the reasons set forth below, however, the claims are directed to well-
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`known and predictable prior art elements in media enhancement systems as
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`reflected, for example, in independent Claim 9. The dependent claims simply add
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`minor functional or structural variations.
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`9. A system for combining multiple media comprising:
`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;
`a second receiver module configured to receive at least a second media
`content and uniquely identifying data specific to at least the second
`media content, the second media content received discretely from the
`first media content;
`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;
`an input module configured to receive at least a response input responsive
`to the second media content; and
`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.
`
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`As described in Claim 9, the combined device is straightforward. It includes
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`a receiver module to receive the first media content along with data identifying a
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`specific instance of the first media content; and a second receiver module to
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`receive the second media content, discretely from the first media content, along
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`with uniquely identifying data specific to the second media content. It also includes
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`an output system to present the first and second media content concurrently on an
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`output module of the first and second receivers; and an input module to receive a
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`response to the second media content. Based on the response, the transmitting
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`module transmits a message to a computer server including data specific to the
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`second media content.
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`In figure 3, the user primary device 4 according to one embodiment of the
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`’081 Patent is shown.
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`
`
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`The patent explains that when a first media signal, such as a radio program, is
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`received by primary device 4 “through a receiver 455 and/or wire data connection
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`470, the contents of first media signal 111 can be presented along with related
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`information to the user on primary device 4.” Id. 18:57-63.
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`Further, the primary device “display panel 450 can show information
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`relating to the radio program being played, and the information can be acquired
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`from an associated media signal 112 and/or from the media association system 2.”
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`Id. 19:13-17. As illustrated in figure 3, “the upper portion of the display panel 451
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`can comprise textual information corresponding to the music being played on the
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`radio,” e.g., “the name of the artist, title of the song or media content, and/or time
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`remaining in the song or media content.” Id. 19:17-22. The lower panel 452 can
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`display an advertisement signal 113, which “can comprise any sort of media” that
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`“can be provided as a static image, scrolling images, text, overlaid audio,
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`interactive media, video, and/or other forms of media.” Id. 19:45-52. Broadcast
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`receiving system 140 “is configured to receive a user selection or user input.” Id.
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`32:38-39. After receiving a user selection or input, broadcast receiving system 140
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`is configured “to transmit to the broadcast response and business system 1101 at
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`least the unique event identifier 115 and/or a user identifier.” Id. 32:39-44.
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`As explained in detail below, the ’081 Patent’s claims would have been
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`obvious in view of the prior art. Ex-1002 ¶¶44, 53-56, 61.
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`VII. PATENT PROSECUTION HISTORY
`The ’081 Patent file history is submitted as Ex-1004. The application leading
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`to the ’081 Patent application, 12/366,535, was filed on February 5, 2009. It claims
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`priority to provisional application, 61/026,449, filed on February 5, 2008.
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`On April 1, 2011, the Examiner issued a non-final rejection, stating that the
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`then-pending claims were anticipated by Manganaris (U.S. Patent No. 7,299,194)
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`under 35 U.S.C. § 102(e). Ex-1004, 152-160. On September 30, 2011, Applicant
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`canceled 8 claims, amended 9 claims, and added 9 new claims to overcome the
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`Examiner’s rejection. Ex 1004, 174-184. The amendments to independent Claim 9
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`8
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`added, among other things, “data enabling the identification of a specific instance
`
`of the first media content”; “uniquely identifying data specific to at least the
`
`second media content, the second media content received discretely from the first
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`media content”; “present concurrently … on an output of the first receiver module
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`or the second receiver module”; “configured to receive … response input
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`responsive to the second media content”; and “configured to transmit a response
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`message having … uniquely identifying data specific to the second media content.”
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`On December 12, 2011, the Examiner issued a notice of allowance, citing
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`Applicant’s claim amendments as the reason for allowance. Ex-1004, 190-197.
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`On March 8, 2012, Applicant filed an amendment after allowance under 37
`
`C.F.R. § 1.312, which canceled 8 claims, amended 11 claims, and added 4 new
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`claims “to more fully define the Applicant’s invention.” Ex-1004, 239-247. On
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`April 2, 2012, the Examiner considered and entered Applicant’s amendment. Ex-
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`1004, 251-252. On May 1, 2013, a certificate of correction was filed by Applicant
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`to correct typos in the specification and claims. Ex-1004, 263-264; Ex-1002 ¶59.
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`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art would have had a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a related field,
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`and at least two years of experience in the communications or Internet-related
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`industries, or the equivalent, with additional education substituting for experience
`
`and vice versa. Ex-1002 ¶¶34, 40-42.
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`IX. PRIORITY DATE
`In the concurrent litigation, Patent Owner claims priority to the earliest
`
`possible priority for the ’081 Patent: provisional patent application 61/026,449
`
`filed on February 5, 2008. Ex-1020 at 3. Petitioner thus relies on this date for
`
`purposes of the invalidity arguments presented in this petition. In determining what
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`constitutes prior art, this Petition applies pre-AIA 35 U.S.C. § 102. All prior art
`
`references asserted in this petition are U.S. patents or WO or U.S. patent
`
`publications that were issued or published more than one year before the earliest
`
`possible priority date of the ’081 Patent, and are thus prior art under § 102(b). Ex-
`
`1002 ¶52.
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`X. CLAIM CONSTRUCTION
`Petitioner interprets the claims of the ’081 Patent according to the Phillips
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`claim construction standard. See 37 C.F.R. § 42.100(b). Only terms subject to a
`
`legitimate dispute need to be construed for the purposes of IPR. Nidec Motor Corp.
`
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
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`Terms not expressly construed should be given their plain and ordinary meaning.
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`Petitioner does not believe that any term requires explicit construction to resolve
`
`the issues presented in this Petition.3 Ex-1002 ¶¶31-33.
`
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES
`A. Noreen (Ex-1005)
`Noreen, titled “Integrated Radio Satellite Response System and Method,” is
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`U.S. Patent No. 5,303,393, issued on April 12, 1994. Noreen qualifies as prior art
`
`under at least 35 U.S.C. § 102(b), based on its issue date.
`
`Noreen discloses a radio response system configured to “simultaneously
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`receive two channels: a time division multiplex (TDM) data channel and an
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`assignable channel.” Ex-1005, 6:3-5. Media content transmitted over the TDM data
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`channel includes, e.g., “stock updates, sports reports, travel advisories, and
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`emergency alerts,” whereas media content transmitted over the assignable channel
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`includes, e.g., “high quality digital program data such as music.” Id. 6:13-15, 9:65-
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`10:1. The two channels use independent demodulators and decoders to generate
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`discrete TDM-data and assignable-data signals that are concurrently outputted to a
`
`
`3 Claim construction disclosures have only just started in the district court, with the
`parties identifying terms for construction one day before this filing. Petitioner
`respectfully reserves the right to revisit claim construction depending on any
`potential claim construction(s) proposed in district court or in response to Patent
`Owner’s arguments as necessary. Petitioner will request leave to submit the district
`court’s claim construction order as soon as it becomes available.
`
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`visual display, digital interface, handset, or audio amplifier such as a speaker. Id.
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`3:38-56, 8:30-31, 9:41-42, 13:38-42, 14:33-35.
`
`Noreen further discloses that “identification information” is processed from
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`the program signals of the two channels and can be sent on a “subchannel of the
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`program signal[s],” which may include, e.g., “identification of the program signal
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`and particular program to which the user is listening,” “a code identifying the
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`advertisement or solicitation, or any other information which may be used for
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`identifying the program signal and a particular time and/or advertisement to which
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`a user is responding.” Id. 12:45-52, 13:21-33.
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`Moreover, Noreen discloses a user interface having “an input device 416,”
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`which allows a user to order, e.g., a compact disc corresponding to the music
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`played over the assignable channel, by pushing a button. Id. 14:38-53. This action
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`generates a “user-data signal” which is a “combination of the identification
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`information and the user-input signal.” Id. 13:58-60. The “user-data signal” is
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`transmitted by data-transmitter 404 to processing center 422, which “determines
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`[the] identification information.” Id. 12:54-68, 15:9-15. Identification information
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`may include, e.g., “broadcast transmitter 411, the carrier frequency of the program
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`signal, or any other information which would identify the advertisement,
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`solicitation, or other communication inviting a response.” Id. 14:61-68. Processing
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`center 422 uses this information “to identify the program signal to which the user
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`has responded” and process the order or other response. Id. 15:15-19, 15:28-34;
`
`Ex-1002 ¶¶62-65.
`
`B. Crosby (Ex-1006)
`Crosby, titled “Internet-Based Interactive Radio System for Use with
`
`Broadcast Radio Stations,” is U.S. Patent No. 6,628,928, issued on September 30,
`
`2003. Crosby qualifies as prior art under at least 35 U.S.C. § 102(b), based on its
`
`issue date.
`
`Crosby discloses an “interactive radio system” for a mobile device that
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`allows subscribers to respond to displayed media content. See, e.g., Ex-1006,
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`Abstract. Specifically, the system allows subscribers to “select various
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`advertisements, musical selections or the like while listening to the radio” using
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`input mechanisms on their mobile unit (e.g., “INFO” and “ORDER” buttons) and
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`“review information pertaining to the various program segments that have been
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`selected” at a later time on the Internet, by way of unique program segment
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`identifiers that are associated with specific instances of the media content received
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`by the subscriber and stored in the system. Id. 3:59-4:19, 9:14-19, 12:60-66.
`
`Crosby discloses that “[w]hile listening to a radio broadcast,” subscribers
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`may “transmit commands or other responsive signals” to network operations center
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`110. Id. 6:4-9. Network operations center 110 includes program segment
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`identification database 202, depicted in figure 5, which stores “a program segment
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`ID, the date and time of broadcast of the program segment, and the broadcaster ID
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`for the broadcaster of the segment.” Id. 9:14-19.
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`
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`Once the selected program segment is identified, the “program segment ID”
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`is forwarded to program segment information unit 212, “which accesses the vendor
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`information database using the program segment ID to extract information”
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`pertinent to the segment, including, e.g., “web site addresses associated with the
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`vendor as well as the names of goods or services offered by the vendor” such as
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`song names and performers. Id. 10:7-15. This information as well as the date and
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`time of day of the broadcast are forwarded to “subscriber interface unit 214, which
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`also receives the subscriber ID” by way of a “subscriber identifier signal received
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`by receiver 206.” Id. 10:15-20, 10:31-35. The feedback unit “then provides the
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`vendor information to the subscriber either within a web page accessible by the
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`subscriber and/or within individual e-mail messages transmitted directly to an e-
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`mail account of the subscriber.” Id. 10:20-24; Ex-1002 ¶¶66-69.
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`C. Ellis-2002 (Ex-1007)
`Ellis-2002, titled “Enhanced Radio Systems and Methods,” is WO Patent
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`Publication No. 2002/067447, published on August 29, 2002. Ellis-2002 qualifies
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`as prior art under at least 35 U.S.C. § 102(b), based on its publication date.
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`Ellis-2002 discloses “enhanced radio reception and processing features,
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`utilizing multiple radio receivers, digital storage of radio content,” “listener
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`profiles, and two-way communication features.” Ex-1007, 1:9-12. Specifically,
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`Ellis-2002 discloses “[m]ultiple receivers 4206” that “may simultaneously receive
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`the multiple radio stations 4204, and store them digitally into buffers 4208 in
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`computer digital storage device 4209.” Id. 14:6-8. Moreover, “the output of digital
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`radio receivers 110, may be stored in memory 120.” Id. 15:25-26.
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`Ellis-2002 also states that the system allows users to limit the media content
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`outputted by the receivers based on certain criterion, e.g., the system may “store a
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`user rating for the item” indicating “whether the user likes or dislikes the item” and
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`“be configured to skip over undesirable content.” Id. 7:11-12, 34:6-8; see also id.
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`35:16-18. Further, “a parent may define a group in a child’s” enhanced radio
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`system “based on an unacceptable parental advisory level, and the system may be
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`configured to skip over all content in that group.” Id. 35:18-20; Ex-1002 ¶¶70-72.
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`
`D. Ellis-2005 (Ex-1008)
`Ellis-2005, titled “Music Information System for Obtaining Information on a
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`Second Music Program While a First Music Program is Played,” is U.S. Patent
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`Publication No. 2005/0227611, published on October 13, 2005. Ellis-2005
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`qualifies as prior art under at least 35 U.S.C. § 102(b), based on its publication
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`date.
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`Ellis-2005 discloses “interactive music information systems that use two
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`tuners for obtaining in-band data.” Ex-1008 ¶2. Specifically, Ellis-2005’s system
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`“provides users with the opportunity to listen to one music channel while viewing
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`music information for another.” Id. ¶5; see also Fig. 10 (step 430). Music
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`information may include, e.g., “track information, title information, artist
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`information, graphics, web links, ordering information or other information related
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`to the music programming carried on the music channel.” Id. ¶8. Further, Ellis-
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`2005 states that information for each track “is transmitted in packets on the digital
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`television channel” which “contain packet identifiers (‘PIDs’) identifying the track
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`that each packet belongs to.” Id. ¶41.
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`In figure 3, Ellis-2005 provides an “illustrative arrangement for user music
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`equipment” and “devices it may include” (id. ¶42):
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`
`
`As explained at ¶¶42-52, “tuner 50 of set-top box 28 may be tuned to a desired”
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`channel. Id. ¶42. User music equipment 22 also may “have a second tuner, tuner
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`51,” at least partially controlled “by the interactive music application for obtaining
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`in-band data.” Id. ¶43.
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`Ellis-2005 discloses that the user may be provided “an opportunity to
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`purchase music merchandise (e.g., an album, record, CD, concert tickets, etc.) …
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`associated with a music program,” identified, e.g., “by identifiers, graphics, or
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`other information included in an in-band data stream on a music channel.” Id. ¶87;
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`see also id. Fig. 8; Ex-1002 ¶¶73-76.
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`U.S. Patent No. 8,166,081
`Petition for Inter Partes Review
`XII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION UNDER
`§ 325(d) TO DENY HEARING THESE INVALIDITY ISSUES FOR
`THE FIRST TIME IN THIS PETITION
`In considering its discretion under § 325(d), “the Board uses the following
`
`two-part framework: (1) whether the same or substantially the same art previously
`
`was presented to the Office or whether the same or substantially the same
`
`arguments previously were presented to the Office; and (2) if either condition of
`
`first part of the framework is satisfied, whether the petitioner has demonstrated that
`
`the Office erred in a manner material to the patentability of challenged claims.”
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`
`01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`On the first prong of the Advanced Bionics analysis, the Board has held that
`
`where “neither [the combination references] nor similar prior art was before the
`
`examiner … the prosecution history does not include any overlapping arguments
`
`directed to this prior art.” Godbersen-Smith Constr. Co. d/b/a/ Gomaco Corp. v.
`
`Guntert & Zimmerman Const. Div., Inc. IPR2021-00050, Paper 24 at 19-21 (PTAB
`
`May 7, 2021). And in such a case, where the first prong of Advanced Bionics is not
`
`met, the Board “need not address part two of the analysis.” Id. at 21.
`
`Here, the first Advanced Bionics prong is not met. Three of the four
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`references relied upon in this petition (i.e., Crosby, Ellis-2002, and Ellis-2005)
`
`were not before the Examiner. Nor were any similar disclosures or teachings
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`U.S. Patent No. 8,166,081
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`discussed by the Examiner. Ex-1002 ¶57. For example, as to the independent
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`claims, no prior art reference that was before the examiner discloses explicitly the
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`uniquely identifying data of Crosby. Nor do any prior art references that were
`
`before the Examiner make disclosures cumulative to Ellis-2002 and Ellis-2005.
`
`Accordingly, none of the grounds or arguments based on these disclosures were
`
`previously presented to the Examiner, yet they are directly material to
`
`patentability. Because the first Advanced Bionics prong is not met, the Board need
`
`not move to the second prong. See, e.g., Oticon Me