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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`NOTICE is hereby given, pursuant to 37 C.F.R. §§ 90.2 and 90.3, that Patent
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`Owner StratosAudio, Inc., appeals to the United States Court of Appeals for the
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`Federal Circuit under 35 U.S.C. §§ 141, 142, and 319 from the Final Written
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`Decision of the Patent Trial and Appeal Board (“Board”) entered on January 23,
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`2023 (Paper 39), and from all other underlying orders, decisions, rulings, and
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`opinions regarding U.S. Patent No. 8,166,081 (“the ’081 Patent”) at issue in inter
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`partes review IPR2021-01267.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that
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`the expected issues on appeal will include, but are not limited to, (1) the Board’s
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`determinations that Petitioner proved by a preponderance of the evidence that
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`claims 9-11, 15, and 23 of the ’081 Patent are unpatentable; (2) the Board’s
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`construction and application of the claim language; (3) the Board’s consideration
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`and analysis of the expert testimony, prior art, and other evidence in the record;
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`(4) the Board’s factual findings, conclusions of law, or other determinations
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`supporting or relating to the above issues; and (5) all other issues decided
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`adversely to Patent Owner in any orders, decisions, rulings, or opinions.1
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`1 Patent Owner is also filing, concurrently herewith, a Notice of Appeal in a
`separate but related proceeding involving Inter Partes Review No. IPR2021-00721
`(U.S. Patent No. 8,166,081).
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
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`filed with the Director of the United States Patent & Trademark Office and with
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`the Patent Trial and Appeal Board through the P-TACTS System. In addition, a
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`copy of this Notice will be filed with the Clerk’s Office for the United States Court
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`of Appeals for the Federal Circuit, pursuant to Fed. Cir. R. 15(a)(1).
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`White & Case LLP does not represent StratosAudio, Inc. for purposes of any
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`appeals.
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Dated: March 24, 2023
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`Respectfully submitted,
`
`
`WHITE & CASE LLP
`
`/John Scheibeler/ (Electronically signed)
`John Scheibeler, Reg. No. 35,346
`Lead Counsel
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`(212) 819-8200
`
`Jonathan Lamberson, Reg. No. 57,352
`Back-Up Counsel
`White & Case LLP
`2 Palo Alto Square, Suite 900
`3000 El Camino Real
`Palo Alto, CA 94306-2109
`(650) 213-0384
`
`Hallie Kiernan (pro hac vice)
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`(212) 819-8200
`
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Notice of Appeal were served on March 24, 2023, by filing these
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`documents through the P-TACTS System, and by delivering a copy via electronic
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`mail upon the following attorneys of record for Petitioner:
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`Ryan Yagura (Reg. No. 47,191)
`Nicholas J. Whilt (Reg. No. 72,081)
`Clarence A. Rowland (Reg. No. 73,775)
`Benjamin Haber (Reg. No. 67,129)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
` (213) 430-6000
`ryagura@omm.com
`nwhilt@omm.com
`crowland@omm.com
`bhaber@omm.com
`
`Caitlin P. Hogan (Reg. No. 61,515)
`O’Melveny & Myers LLP
`Time Square Tower, 7 Times Square
`New York, NY 10036
`(212) 326-2000
`chogan@omm.com
`
`Bradley Berg (admitted pro hac vice)
`O’Melveny & Myers LLP
`610 Newport Center Dr., 17th Floor
`Newport Beach, CA 92660
`(949) 823-6900
`bmberg@omm.com
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`IPR2021-01267
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`William W. Fink (Reg. No. 72,332)
`O’Melveny & Myers LLP
`1625 I Street, NW
`Washington, D.C. 20006
`(202) 383-5300
`tfink@omm.com
`StratosAudioHyundaiOMM@omm.com
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`And via Priority Mail Express to:
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`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Respectfully submitted
`
`/John Scheibeler/ (Electronically signed)
`John Scheibeler
`Reg. No. 35,346
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`Trials@uspto.gov
`571-272-7822
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`Paper 39
`Date: January 23, 2023
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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.
`
`IPR2021-01267
`Patent 8,166,081 B2
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`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2021-01267
`Patent 8,166,081 B2
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`INTRODUCTION
`I.
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner, Hyundai Motor America, has shown by a preponderance of the
`evidence that claims 9–11, 15, and 23 (the “challenged claims”) of U.S.
`Patent No. 8,166,081 B2 (Ex. 1001, “the ’081 Patent”) are unpatentable. See
`35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`A. Procedural History
`The Petition (Paper 2, “Pet.”) requested inter partes review of the
`challenged claims of the ’081 Patent. Patent Owner, StratosAudio, Inc.,
`filed a Preliminary Response. Paper 8. Based upon the record at that time,
`we instituted inter partes review on all challenged claims on the grounds
`presented in the Petition. Paper 9 (“Institution Decision” or “Dec.”).
`After institution, Patent Owner filed a Response (Paper 17,
`“PO Resp.”), Petitioner filed a Reply (Paper 20, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 25, “PO Sur-reply”).
`With our authorization, Patent Owner filed a Supplemental Brief
`(Paper 31, “PO Supp. Br.”) and Petitioner filed a Responsive Supplemental
`Brief (Paper 33, “Pet. Supp. Br.”) to address certain claim interpretation
`issues.
`On October 24, 2022, an oral hearing was held. A transcript of the
`hearing is made part of the record. See Paper 38.
`B. Related Matters
`The parties identify the following as related matters: StratosAudio Inc.
`v. Hyundai Motor America, No. 6:20-cv-01125-ADA (W.D. Tex.);
`StratosAudio, Inc. v. Volkswagen Group of America, Inc., No. 6:20-cv-1131
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`Patent 8,166,081 B2
`(W.D. Tex.); StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 6:20-
`cv-01126 (W.D. Tex.); StratosAudio, Inc. v. Subaru of America, Inc., No.
`6:20-cv-01128 (W.D. Tex.); and StratosAudio, Inc. v. Volvo Cars of North
`America, LLC, No. 6:20-cv-01129 (W.D. Tex.). Pet. 2–3; Paper 5, 1.
`The parties also indicate that the ’081 Patent is the subject of an inter
`partes proceeding, Volkswagen Group of America, Inc. v. StratosAudio, Inc.,
`IPR2021-00721 (PTAB Apr. 16, 2021) (“the ’721 IPR”). Pet. 3; Paper 5, 1.
`C. The ’081 Patent
`The ’081 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:18–20. The
`’081 Patent explains that it is generally desirable to associate products with
`specific characteristics, and such associations may increase the chance that a
`potential customer will decide to purchase a product when the product is
`associated with a favorable characteristic. Id. at 1:22–30. In view of this,
`the ’081 Patent states that an advertisement may be more effective if it is
`associated with an image of a celebrity or another media element that
`exhibits favorable characteristics. Id. at 1:30–34.
`The ’081 Patent describes a media enhancement system that is
`configured to associate a secondary media signal (e.g., an advertisement) to
`a primary media signal (e.g., a radio broadcast). Id. at 3:8–12. The ’081
`Patent explains that the secondary media signal may be based on the content
`of the primary media, user characteristics (e.g., demographic and/or
`geographic information), and/or third party preferences (e.g., the goals of
`advertisers). Id. at 3:17–21.
`The ’081 Patent discloses one example in which a radio station
`transmits a song in a first media signal that is received by a user enabled-
`device (e.g., a cellular phone with a radio). Id. at 3:27–30. A media
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`Patent 8,166,081 B2
`association system analyzes the song to determine what media elements can
`be associated with the song, and the media association system provides a
`second media signal (e.g., an advertisement) to the user enabled-device. Id.
`at 3:30–36. While the user enabled-device is playing the song, the user
`enabled-device displays the media content in the second media signal (e.g., a
`still or moving picture of the advertised product). Id. at 3:37–40. The ’081
`Patent discloses another embodiment in which a user enabled-device is
`playing a song from a first media signal, media content from a second media
`signal (e.g., a still or moving picture with selectable audio of an advertised
`product) is displayed by the user enabled-device, and the audio track for the
`first media signal is paused upon selection of the second media signal audio.
`Id. at 3:41–47.
`Figure 1A of the ’081 Patent is reproduced below.
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`Figure 1A, above, is a block diagram that depicts signals and
`identifiers correlated and transmitted between elements of a media
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`enhancement system. Id. at 2:41–43. The system can include first
`transmitter 3, control management system 100, media association system 2,
`primary device 4, and advertisement entity 6. Id. at 8:11–16. First
`transmitter 3 can be broadcast content from a radio station, from over the
`internet, through a cable line, or satellite, and/or through other
`communication methods. Id. at 8:17–24. For instance, first transmitter 3
`can send first media signal 111 that is received by primary device 4. Id. at
`8:41–43.
`Figure 1B of the ’081 Patent is reproduced below.
`
`
`According to the ’081 Patent, Figure 1B, above, is a block diagram
`illustrating that media association system 2 can send or transmit secondary
`or related media signal 114, using information regarding the media content
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`Patent 8,166,081 B2
`of first media signal 111, to primary device 4 and/or ancillary device 5
`through an Internet connection. Id. at 9:34–37, 9:39–48. Advertisement
`entity 6 can send advertisement signal 113 to media association system 2 so
`advertisement signal 113 is provided to primary device 4 upon the latter
`receiving a specific song from first transmitter 3 via first media signal 111.
`Id. at 10:24–29.
`The ’081 Patent explains that unique identifier 115 can be provided
`for each media signal (i.e., first media signal 111 and advertisement media
`signal 113) to facilitate the assignment and/or sending of advertisement
`media signal 113 with first media signal 111. Id. at 12:66–13:3. According
`to the ’081 Patent, unique identifier 115 can be stored in a database and/or
`other location, such as control management system 100, along with other
`relevant information. Id. at 13:13–15. The ’081 Patent discloses that unique
`identifier 115 can be used by media association system 2, advertisement
`entity 6, first transmitter 3, and/or primary device 4 and/or control
`management system 100 to track and/or record the results of any signal and
`to determine whether the signal should be provided to primary device 4
`and/or the user. Id. at 13:16–22.
`Figure 3 of the ’081 Patent is reproduced below.
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`Figure 3, shown above, is an illustration that depicts primary device 4,
`such as a radio-enabled cellular phone, with display panel 450 that is
`connected to media association system 2. Id. at 2:50–51, 18:55–57, 19:11–
`13, 19:17. Primary device 4 receives first media signal 111 (not shown in
`Fig. 3) via receiver 455 and/or wire data connection 470. Id. at 18:57–59.
`First media signal 111 includes, for example, a radio program that primary
`device 4 can play to a user via speaker 453. Id. at 18:61–63. Display panel
`450 can show information relating to the radio program being played. Id. at
`19:13–15. For instance, upper portion 451 of the display panel can include
`textual information corresponding to the radio’s music. Id. at 19:17–22.
`The information about the radio’s music may be obtained from a Radio
`Broadcast Data System (RBDS) and/or Radio Data System (RDS) signal
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`accompanying first media signal 111 when the latter is in the form of a radio
`signal. Id. at 24:63–65. Lower panel 452 displays advertisement media
`signal 113 (not shown in Fig. 3), which may comprise any form of media
`content. Id. at 12:40–42, 19:45–46.
`Primary device 4 can also send signals to transmitter 3, media
`association system 2, control management system 100, and/or advertisement
`entity 6. Id. at 15:9–12. For example, the signals from primary device 4 can
`be responses to interactive media signals. Id. at 15:12–14. Primary device 4
`can transmit user behavior, can report location, direction of motion, and/or
`speed, and can detect other information about a user and/or the user’s
`location and/or environment. Id. at 15:17–27. The ’081 Patent explains that
`this information can be used by media association system 2 to determine
`what media and/or advertisements to send to primary device 4 to obtain a
`user’s reaction and/or what media and/or advertisements are likely to elicit a
`positive reaction at a given time and/or when the user is in a given state or
`environment. Id. at 15:27–34.
`D. Challenged Claims
`Petitioner challenges claims 9–11, 15, and 23. Claim 9 is the only
`independent claim challenged, and is set out below:
`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
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`Patent 8,166,081 B2
`content, the second media content received
`discretely from the first media content;
`9[c] 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[d] an input module configured to receive at least a
`response input responsive to the second media
`content; and
`9[e] 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. 23–30) (claim corrected as indicated in the Certificate of Correction; see
`Ex. 1001, p. 35).
`E. Evidence
`Petitioner relies upon the following evidence:
`(1) U.S. Patent No. 5,303,393, issued April 12, 1994 (“Noreen”)
`(Ex. 1005);
`(2) U.S. Patent No. 6,628,928 B1, issued September 30, 2003
`(“Crosby”) (Ex. 1006);
`(3) World Intellectual Property Organization Publication No.
`WO 02/067447 A2, published August 29, 2002 (“Ellis-2002”) (Ex. 1007);
`(4) U.S. Patent Application Publication No. 2005/0227611 A1,
`published October 13, 2005 (“Ellis-2005”) (Ex. 1008); and
`(5) Declarations of Kevin C. Almeroth, Ph.D. (Exs. 1002, 1026).
`Patent Owner relies on the Declaration of Todd K. Moon, Ph.D.
`(Ex. 2016).
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`Patent 8,166,081 B2
`F. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`9, 15, 23
`103(a)
`Noreen
`9, 15, 23
`103(a)
`Noreen, Crosby
`10, 11
`103(a)
`Noreen, Crosby, Ellis-2002
`9–11, 15, 23
`103(a)
`Ellis-2005
`9–11, 15, 23
`103(a)
`Ellis-2005, Crosby
`Pet. 4.
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that “[o]ne of ordinary skill in the art would have
`had a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or a related field, and at least two years of experience in
`the communications or Internet-related industries, or the equivalent, with
`additional education substituting for experience and vice versa.” Pet. 9–10
`(citing Ex. 1002 ¶¶ 34, 40–42). Patent Owner “does not object to the level
`of skill proposed by Petitioner.” PO Resp. 14.
`Petitioner’s description of the level of ordinary skill is generally
`consistent with the subject matter of the ’081 Patent. In another proceeding
`involving the ’081 patent, IPR2021-00721, we determined the level of
`ordinary skill was a bachelor’s degree in computer science or electrical
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`engineering or a related field, and approximately three years of experience
`working in the communications or Internet-related industries, or other
`equivalent industry experience in the field. This description of the level of
`ordinary skill is similar to Petitioner’s description.
`For consistency, we determine that a person of ordinary skill in the art
`is a person with a bachelor’s degree in computer science or electrical
`engineering or a related field, and approximately three years of experience
`working in the communications or Internet-related industries, or other
`equivalent industry experience in the field. A person with a master’s degree
`in one of these fields with less industry experience would also qualify as a
`person of ordinary skill in the art.
`B. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). Under Phillips, claim terms are generally given their
`ordinary and customary meaning as would be understood by one with
`ordinary skill in the art in the context of the specification, the prosecution
`history, other claims, and even extrinsic evidence including expert and
`inventor testimony, dictionaries, and learned treatises, although extrinsic
`evidence is less significant than the intrinsic record. Phillips, 415 F.3d at
`1312–17. Usually, the specification is dispositive, and it is the single best
`guide to the meaning of a disputed term. Id. at 1315.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(in the context of an inter partes review, applying Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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` In the Petition, Petitioner states that it “does not believe that any term
`requires explicit construction to resolve the issues presented in this Petition.”
`Pet. 11 (citing Ex. 1002 ¶¶ 31–33). In its Response, Patent Owner states that
`“[f]or the purposes of this proceeding, Patent Owner agrees” with Petitioner
`that no terms require explicit construction in order “[t]o resolve the
`particular grounds presented in [the] Petition.” PO Resp. 14 (citing Ex. 2016
`¶ 43).
`Patent Owner, however, subsequently requested, and with our
`approval, filed a Supplemental Brief changing its previously stated position
`on claim construction. In its Supplemental Brief, Patent Owner now argues
`that “Patent Owner asserted the ’081 patent against Subaru of America Inc.
`(‘Subaru’) in a district court litigation,”1 and in “the briefing [in that case]
`raised the same claim construction dispute that is also at issue in this
`proceeding regarding the proper construction of the term ‘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’ in claim element 9[c] of the ’081 patent.” PO Supp. Br. 2.
`Patent Owner states that “Subaru argued that the word ‘or’ in the portion of
`the limitation reciting ‘an output of the first receiver module or the second
`receiver module’ should be changed to ‘and/or.’” Id. at 2–3 (citing
`Ex. 2018, 8).
`In its Responsive Supplemental Brief, Petitioner argues that “the
`Board should disregard Patent Owner’s Supplemental Brief (Paper 31) and
`new Exhibits 2018-2021” as “inadmissible and irrelevant,” because
`
`
`1 See StratosAudio, Inc. v. Subaru of America, Inc., 6:20-cv-01128-ADA
`(W.D. Texas).
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`“[w]hatever Subaru said in its motion to strike (Ex. 2018), filed in a district
`court action not involving Petitioner, is inadmissible hearsay and useless as
`evidence of claim construction.” Pet. Supp. Br. 1.
`For purposes of this Final Written Decision, we do not find it
`necessary to expressly construe any claim terms. We agree with the parties’
`original positions on claim construction, as expressed in the Petition and
`Patent Owner Response, that no terms require express construction in order
`to resolve the patentability of the challenged claims in this proceeding. See
`Pet. 11; PO Resp. 14. Because it is not necessary to expressly construe any
`claim terms in order to resolve the patentability of the challenged claims, the
`issues raised by the parties in their supplemental briefing are moot. 2
`C. Patentability Challenges
`As indicated above, Petitioner presents five grounds challenging the
`patentability of particular claims of the ’081 Patent under 35 U.S.C.
`§ 103(a). Petitioner challenges (Ground 1) claims 9, 15, and 23 as obvious
`over Noreen; (Ground 2) claims 9, 15, and 23 as obvious over Noreen and
`Crosby; (Ground 3) claims 10 and 11 as obvious over Noreen, Crosby, and
`Ellis-2002; (Ground 4) claims 9–11, 15, and 23 as obvious over Ellis-2005;
`and (Ground 5) claims 9–11, 15, and 23 as obvious over Ellis-2005 and
`Crosby. Pet. 4
`1. Principles of Law on Obviousness
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`
`2 The parties’ supplemental briefing pertains to limitation 9[c], which is
`undisputed with respect to the asserted ground based on Ellis-2005 and
`Crosby addressed herein. See infra Section II.D.1.iv.
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`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. Reaching this conclusion, however, requires more than a mere
`showing that the prior art includes separate references covering each
`separate limitation in a claim under examination. Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`requires the additional showing that a person of ordinary skill at the time of
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`invention. Id.
`2. Relevant Prior Art
`i. Crosby (Ex. 1006)
`Crosby is a U.S. Patent that issued on September 30, 2003, more than
`one year before the earliest priority date of the ’081 Patent. Ex. 1001, codes
`(22), (60); Ex. 1006, code (45). Petitioner asserts that Crosby is prior art
`under pre-AIA 35 U.S.C. § 102(b). Pet. 13.
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`Crosby relates to an interactive radio system. Ex. 1006, code (57).
`For example, “[w]hile listening to a radio broadcast” on a user’s mobile unit,
`the user “selects program segments of interest,” e.g., advertisements, “by
`pressing an interactive radio control button” so that the user may later
`review those selected program segments of interest. Id. at code (57), 3:59–
`63. In particular, when the user selects program segments of interest, those
`selections, i.e., “commands,” are forwarded to an interactive radio network
`operations center by the user’s mobile unit. Id. at 6:4–9.
`In addition to transmitting user commands responding to program
`segments of interest, if the radio “broadcast itself includes information
`encoded therein identifying the program segments,” then “the mobile
`unit . . . generates a program attribute signal which specifically identifies the
`content of the [selected] program segment” to send to the network operations
`center. Id. at 4:51–58; see id. at 8:53–46. For example, broadcast
`digital radio signals are preferably encoded with signals
`identifying the broadcaster and the specific program segment
`being transmitted. If so . . . the network operations center
`directly accesses the program segment and vendor information
`databases based upon the program segment identified by the
`digital radio signals to retrieve information associated with the
`program segment selected by the [user].
`Id. at 11:44–54.
`In the alternative case that the radio broadcast does not include
`information which specifically identifies the selected program segments,
`then the network operations center identifies the selected program segment
`in an alternative manner. Id. at 8:48–43, 11:37–43. In particular, when the
`user selects program segments of interest, the mobile unit transmits, to the
`network operations center,
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`a broadcast attribute signal identifying a carrier frequency of the
`radio broadcast and the date and time the broadcast was received;
`a location attribute signal identifying the geographical location
`of the mobile unit in GPS coordinates at the date and time the
`broadcast was received; and a subscriber identifier signal
`providing a subscriber ID or a mobile unit ID.
`Id. at 7:27–37, 9:42–46. “In response to the signals, the network operations
`center determines the identity of the broadcaster based upon the carrier
`frequency of the broadcast and the geographical location of the mobile unit”
`using a broadcaster identification database. Id. at 7:37–41, 9:48–53. Next,
`the network operations center can “determine[] the specific program
`segment selected by the subscriber based upon the identity of the broadcaster
`and the date and time of the broadcast” using a program segment identifier
`database. Id. at 7:41–44, 9:46–61. The program segment identifier database
`includes “a program segment ID, the date and time of broadcast of the
`program segment, and the broadcaster ID for the broadcaster of the
`segment.” Id. at 9:15–19, Fig. 5.
`ii. Ellis-2005 (Ex. 1008)
`Ellis-2005 is a U.S. Patent Application Publication dated October 13,
`2005, more than one year before the earliest priority date of the ’081 Patent.
`Ex. 1001, codes (22), (60); Ex. 1008, code (45). Petitioner asserts that Ellis-
`2005 is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 16.
`Ellis-2005 relates to an interactive music application system which
`has two tuners, tunes to media channels, and obtains respective in-band data.
`Ex. 1008 ¶¶ 2, 7. For example, “a user is tuned to a first music channel, the
`music application may obtain music information from that channel using [a
`first] tuner that is tuned to that channel.” Id. ¶ 8. Specifically, “music
`channel[s] may include an in-band data stream that contains the music
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`information” such as “track information, title information, artist information,
`graphics, web links, ordering information or other information related to the
`music programming carried on the music channel.” Id. Furthermore, if the
`“user indicates a desire to view music information for a channel other than
`the one to which the first tuner is tuned, the music application directs a
`second tuner to tune to the other music channel and obtains the in-band
`music information from that channel.” Id. That is, the “interactive music
`application may provide a user with an opportunity to listen to music
`programming on one music channel while viewing in-band music
`information for the music programming of another music channel.” Id.
`¶¶ 56, 94. A system that receives, outputs, and provides such interaction
`with video, audio, and data is shown in the schematic block diagram of
`Figure 4, reproduced below. Id. ¶¶ 14, 53.
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`As shown in Figure 4, above, user music equipment 22 receives video,
`audio, and data at input 26. Id. ¶ 53. First tuner 50 accesses a music
`channel selected by the user. Id. ¶ 56. While listening to the music channel
`accessed by tuner 50, the user may browse for information on songs that are
`playing on other channels using second tuner 51. Id. ¶¶ 58–59. For
`example, “[a]s a user browses through music program listings, the music
`application instructs tuner 51 to tune to the browsed music channel so that
`music information on the music program that is being played on the browsed
`channel may be extracted for display . . . while tuner 50 remains tuned to the
`channel that the user is listening to.” Id. ¶ 59.
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`Further, the digital channels received by the user music equipment
`include tracks; “[t]racks may include, for example, video tracks, audio
`tracks, and data or other suitable tracks.” Id. ¶ 41. Tracks are transmitted in
`packets which “contain packet identifiers (‘PIDs’) identifying the track that
`each packet belongs to.” Id. Additionally, a “PID map that indicates which
`PIDs correspond to which digital channels may also be transmitted in-band.”
`Id. For example, in the case of a browsed music channel received via tuner
`51, the PIDs for the browsed music channel are received by the user music
`equipment. Id. ¶¶ 60, 70.
`Additionally, Ellis-2005 describes a feature which “provide[s] the
`user with an opportunity to purchase music merchandise (e.g., an album,
`record, CD, concert tickets, etc.) . . . associated with a music program.” Id.
`¶¶ 87, 98. “For example, the user may listen to one music program while
`ordering a CD for a music program on another music channel.” Id. ¶ 87.
`“Merchandise that is associated with a music program may be identified, for
`example, by identifiers, graphics, or other information included in an
`in-band data stream on a music channel” and the “user may indicate a desire
`to purchase merchandise by, for example, pressing a ‘BUY’ key on remote
`control.” Id. Accordingly, the user music equipment generates a
`merchandise request. Id. Further, the “merchandise request includes
`information necessary for ordering the merchandise based on the type of
`ordering scheme used. The request may include, for example, a
`merchandise identifier, a user identifier or account number, or ot
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