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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
`U.S. Patent No. 8,166,081
`________________________
`
`
`
`REPLY DECLARATION OF DR. KEVIN C. ALMEROTH
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,166,081
`
`
`
`
`
`
`Petitioner Hyundai Ex-1026, 0001
`
`

`

`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`
`
`
`2.
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`DR. MOON’S ARGUMENTS AGAINST GROUNDS 1-3 FAIL ................ 2
`A.
`Independent Claim 9 is rendered obvious by Noreen alone
`(Ground 1) or Noreen in view of Crosby (Ground 2). ......................... 3
`1.
`Element 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; ..................................... 3
`Element 9[b]: 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; .................................................... 11
`Element 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; ..................................................... 17
`Element 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. ....................................................................... 20
`Elements 9[pre] and 9[d] ......................................................... 22
`5.
`Dependent Claim 15 is rendered obvious by Noreen alone
`(Ground 1). ......................................................................................... 22
`Dependent Claim 23 is rendered obvious by Noreen alone
`(Ground 1) or Noreen and Crosby (Ground 2) and Dependent
`Claims 10-11 are rendered obvious by Noreen-Crosby and
`Ellis-2002 (Ex-1007) (Ground 3). ...................................................... 25
`III. DR. MOON’S ARGUMENTS AGAINST GROUNDS 4-5 FAIL .............. 25
`A.
`Independent Claim 9 is rendered obvious by Ellis-2005 alone
`(Ground 4) or Ellis-2005 in view of Crosby (Ground 5). .................. 25
`1.
`Element 9[a]: a first receiver module configured to
`
`3.
`
`4.
`
`B.
`
`C.
`
`ii
`
`Petitioner Hyundai Ex-1026, 0002
`
`

`

`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`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 .................................... 25
`Elements 9[pre] and 9[b]-9[e] .................................................. 29
`2.
`Dependent Claims 10-11 and 23 are rendered obvious by Ellis-
`2005 alone (Ground 4) or Ellis-2005 in view of Crosby
`(Ground 5). ......................................................................................... 29
`Dependent Claim 15 is rendered obvious by Ellis-2005 alone
`(Ground 4). ......................................................................................... 30
`IV. CONCLUSION ............................................................................................. 32
`
`
`
`B.
`
`C.
`
`iii
`
`Petitioner Hyundai Ex-1026, 0003
`
`

`

`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`
`I.
`
`INTRODUCTION
`1.
`I, Dr. Kevin C. Almeroth, declare as follows:
`
`2.
`
`I am the same Dr. Kevin C. Almeroth that submitted a Declaration in
`
`this proceeding (Ex-1002). I submit this Reply Declaration on behalf of Hyundai
`
`Motor America (“Hyundai” or “Petitioner”) in response to the Declaration of Dr.
`
`Todd K. Moon (Ex-2016) (“Moon Decl.”) on behalf of Patent Owner
`
`StratosAudio, Inc. (“StratosAudio” or “Patent Owner”).
`
`3.
`
`In preparation for this Reply Declaration, I have considered the
`
`materials discussed in my Declaration (Ex-1002) and this Reply Declaration,
`
`including, for example, U.S. Patent No. 8,166,081 (“the ’081 Patent”) (Ex-1001),
`
`the references cited by the ’081 Patent, the prosecution history of the ’081 Patent,
`
`various background articles and materials referenced in my Declaration (Ex-1002)
`
`and in this Reply Declaration, the prior art references identified in my Declaration
`
`(Ex-1002) and in this Reply Declaration, the Declaration of Dr. Todd K. Moon
`
`(Ex-2016) including the references cited therein, and the transcript of the
`
`Deposition of Todd K. Moon, Ph.D. (Ex-1029). In addition, my opinions are
`
`further based on my education, training, experience, and knowledge in the relevant
`
`field.
`
`4.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work, which is $750 per hour. My compensation is in no way contingent on
`
`1
`
`Petitioner Hyundai Ex-1026, 0004
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`

`

`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`the nature of my findings, the presentation of my findings in testimony, or the
`
`outcome of this or any other proceeding. I have no other financial interest in this
`
`proceeding.
`
`5.
`
`I reiterate the Background and Qualifications, Relevant Legal
`
`Standards, Level of Ordinary Skill in the Art, and Technological Background
`
`sections of my Declaration (Ex-1002), as if fully set forth herein. Ex-1002 ¶¶5-29,
`
`31-42, 44-51.
`
`6.
`
`For the following reasons, it remains my opinion that: (1) Claims 9,
`
`15, and 23 of the ’081 Patent are rendered obvious by U.S. Patent No. 5,303,393
`
`(“Noreen”) alone and/or Noreen in view of U.S. Patent No. 6,628,928 (“Crosby”)
`
`(Grounds 1 and 2, respectively); (2) Claims 10 and 11 the ’081 Patent are rendered
`
`obvious by Noreen in view of Crosby and WO Publication No. 2002/067447
`
`(“Ellis-2002”) (Ground 3); and (3) Claims 9-11, 15, and 23 the ’081 Patent are
`
`rendered obvious by U.S. Patent Publication No. 2005/0227611 (“Ellis-2005”)
`
`alone or Ellis-2005 in view of Crosby (Grounds 4 and 5, respectively).
`
`II. DR. MOON’S ARGUMENTS AGAINST GROUNDS 1-3 FAIL
`7.
`Dr. Moon argues against Grounds 1-3 by alleging shortcomings in
`
`Noreen alone and/or the Noreen-Crosby combination for Elements 9[a]-9[c], and
`
`9[e] as well as Claim 15, and provides no specific arguments against Elements
`
`2
`
`Petitioner Hyundai Ex-1026, 0005
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`9[pre], 9[d], or Claims 10-11 and 23 for Grounds 1-3. I reiterate the corresponding
`
`sections of my Declaration for all arguments for Grounds 1-3.
`
`A.
`
`8.
`
`Independent Claim 9 is rendered obvious by Noreen alone
`(Ground 1) or Noreen in view of Crosby (Ground 2).
`1.
`Element 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;
`Dr. Moon does not dispute that Noreen discloses a TDM channel that
`
`is demodulated and decoded using TDM demodulation and decoder 222 into
`
`“paging, packet data,” Ex-2016 ¶45 (citing Ex-1005, 7:10-13) (i.e., “a first receiver
`
`module configured to receive at least a first media content”). Nor does Dr. Moon
`
`dispute that this “first media content” includes “paging messages, stock updates,
`
`sports reports, travel advisories, and emergency reports (the asserted ‘first media
`
`content’).” Ex-2016 ¶61. Dr. Moon also does not dispute that Noreen’s system
`
`“provid[es] the user with a two-way communication terminal, including a
`
`keyboard, to input a data message that may be carried over TDM” and “sends and
`
`receives the paging messages to the message display.” Ex-2016 ¶¶58, 61.
`
`9.
`
`The only issue in dispute, therefore, is whether Noreen teaches data
`
`received with the content of the TDM channel as “enabling the identification a
`
`specific instance of the first media content.” As my Declaration set forth, Noreen
`
`teaches that the “identification of content on the TDM channel is provided on ‘a
`
`3
`
`Petitioner Hyundai Ex-1026, 0006
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`time slot in a time division multiplexed signal.’” Ex-1002 ¶¶85-86 (citing, Ex-
`
`1005, 2:63-64). Pointing to the disclosures of Noreen, including the example of
`
`two-way paging or messaging, I explained that a POSITA would have understood
`
`that identification information relating to content targeted to a particular user, for
`
`example, information indicating a particular time, is a way of identifying a specific
`
`instance of the media content. Ex-1002 ¶86. The Board agreed. Institution
`
`Decision (“DI”) (Paper 9), 35.
`
`10. Attempting to shore-up its previously unpersuasive argument, Dr.
`
`Moon devotes more than six pages that largely (1) mischaracterize my contentions
`
`and (2) invest the claim with a new, limiting meaning despite his contention that no
`
`terms need construction (Ex-2016 ¶¶43, 55-65). Once unpacked and focused on all
`
`of what Noreen teaches to a POSITA, and what the claims say, Dr. Moon’s
`
`arguments fail.
`
`a. Dr. Moon mischaracterizes my contentions: I do not
`rely on bare TDM, outside the context of the media it
`carries, “paging, packet data”
`
`11. Pointing to two pages of a textbook (Ex-2015, 3-4), Dr. Moon argues
`
`what a TDM system is and why it does not teach or disclose data enabling the
`
`identification of a specific instance of media content. E.g., Ex-2016 ¶¶56 (“A
`
`POSITA would have understood that TDM does not provide data enabling the
`
`identification of a specific instance (i.e., occurrence) of media content.”), 57 (“Any
`
`4
`
`Petitioner Hyundai Ex-1026, 0007
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`information describing the frame and segment lengths would apply to all data in
`
`the transmission….”), 60 (“[O]ne could interpret Dr. Almeroth’s opinion to be that
`
`the data used to transmit media over the TDM, such as the length of the frame and
`
`segments, is the ‘data enabling identification of a specific instance.’”), 64 (“[T]o
`
`the extent Dr. Almeroth is asserting that TDM provides the required means….”).
`
`However, my opinion is not limited to the contention that a TDM channel, standing
`
`alone, has such “data” absent the context in which it is used, i.e., the first content
`
`carried by the channel. As described below, given the full disclosures of Noreen, a
`
`POSITA would have understood that information sufficient to identify the specific
`
`instance of a message (even a (re-)transmission of the same content in a subsequent
`
`message) would be contained in the TDM framing structure and/or additional
`
`control information transmitted with the data.
`
`12. When Noreen is considered for all its teachings (Ex-1002 ¶¶85-86)—
`
`which a POSITA would have done—it is clear that the TDM channel is the
`
`mechanism by which digital data (i.e., “paging, packet data”) is transmitted to
`
`individuals (e.g., individualized pager messages), groups of mobiles, or all mobiles
`
`(e.g., travel alerts or emergency messages). Noreen’s TDM receiver knows which
`
`messages are for it alone or as a part of a larger broadcast, because Noreen teaches
`
`“coding in the transmissions” for addressing the messages. See Ex-1005, 6:5-9;
`
`Ex-1002 ¶85. The ability to distinguish between messages in a channel using, for
`
`5
`
`Petitioner Hyundai Ex-1026, 0008
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`example, addressing creates, at a minimum, the ability to distinguish one frame (or
`
`message) destined for one receiver from other frames (or messages) destined for
`
`other receivers1. Other information in the message, either in the TDM frame
`
`structure or as part of other included control information, would also provide the
`
`ability to disambiguate one frame (or message) from any other frame (or message).
`
`13. To support this understanding, Noreen discloses more generally
`
`“identification information from the program signal” from which “a user-data
`
`signal” is generated. See Ex-1005, 2:54-57. A POSITA would have thus
`
`understood that “data enabling the identification of a specific instance of” Noreen’s
`
`paging and packet data, is sufficient to recognize each message to be decoded and
`
`displayed on Noreen’s display, and in some cases responded to,2 as its own specific
`
`instance of content. See Ex-1002 ¶86.
`
`14. Dr. Moon argues that Noreen does not “show” or “disclose” the “data
`
`enabling the identification of a specific instance.” See, e.g., Ex-2016 ¶55 (“Thus, to
`
`meet element 9[a], Noreen must show some data enabling identification of a
`
`
`1 Such is the nature of a broadcast medium, including those that use TDM:
`transmitted frames (or messages) are received by all devices within the range of the
`transmission and some technique must be used by each receiving device to
`determine whether the frames are destined to the particular receiver.
`2 I identified “individual mobile receivers can respond to specific alphanumeric
`messages (i.e., specific instances)” as an example because it is familiar and easy to
`understand (at the time of Noreen, this would have been recognized as two-way
`alphanumeric paging).
`
`6
`
`Petitioner Hyundai Ex-1026, 0009
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`specific instance (i.e., occurrence) of content on the TDM channel.… Noreen has
`
`no such disclosure.”). This is a red herring. I understand from Counsel that
`
`obviousness focuses on what a reference teaches or suggests to a POSITA and that,
`
`consistent with its definition, a POSITA is assumed to have the requisite
`
`knowledge, experience, and creativity. Moreover, I understand from Counsel that
`
`Noreen is presumed enabled and the fact that it discloses relevant functionality
`
`demonstrates that any technique to actually implement that functionality would
`
`have been known to a POSITA. Noreen leaves the implementation details of
`
`paging and packet-based message formats to a POSITA because those
`
`implementation details were well known at the time.
`
`15. Returning to Dr. Moon’s reliance on two pages of a textbook (Ex-
`
`2015, 3-4), far from proving a negative (that the use of TDM cannot provide
`
`identifying information), the textbook supports the idea that network
`
`communication is replete with examples where the specific instance of received
`
`data must be identified. For example, in Examples 18-3 and 18-4 (Ex-2015, 4),
`
`data from two sources is multiplexed into a common channel, and in both
`
`examples, the output channel indicates the source of the data. Any receiver of the
`
`broadcast stream must be able to disambiguate the transmitted data.
`
`16.
`
`In Examples 18-5, 18-6, and 18-7 (Ex-2015, 5-6), specific reference is
`
`made to the framing structure of standardized protocols. As described in the
`
`7
`
`Petitioner Hyundai Ex-1026, 0010
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`textbook, a common example for use for these protocols is in multiplexing of
`
`different voice communication. Ex-2015, 5 (“There is also defined a superframe or
`
`multiframe of 16 frames, which is used to transmit and frame on-off hook
`
`information for each of the 30 tributary voiceband channels.”). Clearly, a POSITA
`
`would have understood that transmitting multiple voice channels divided into
`
`frames would require information to disambiguate voice data from one user to the
`
`next and also the voice data of one user at different points in time (in order to be
`
`able to properly sequence the data for output). Therefore, I disagree with Dr.
`
`Moon that the pages of Ex-2015 teach that TDM cannot have data in the received
`
`TDM frame that includes data that can be used to identify the specific instance of
`
`the content.
`
`17. Beyond the TDM frame structure, and as Noreen confirms, additional
`
`protocols and additional control information are used. See, e.g., Ex-1005, 9:21-25.
`
`Therefore, a POSITA would have understood that, beyond the TDM framing
`
`structure, other protocols would transmit additional information specific to the
`
`particular application and that such information would also support the ability to
`
`identify the specific instance of the content. For example, with respect to
`
`alphanumeric and voice paging, an application specifically described in Noreen,
`
`the knowledge of a POSITA would have included data common to paging
`
`protocols. To support my opinion as to what knowledge a POSITA would have
`
`8
`
`Petitioner Hyundai Ex-1026, 0011
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`possessed, Ex-1028 describes common and well-known aspects of alphanumeric
`
`and voice paging protocols.3 Moreover, at a minimum, Dr. Moon agrees that two-
`
`way paging was well-known at the time of Noreen/the ’081 invention and a
`
`POSITA would have been able to examine two-way paging protocols. See Ex-
`
`1029, 35:18-37:4.
`
`b. Dr. Moon adds a new limiting construction despite
`arguing that no term requires construction
`
`18. Finally, with no meaningful argument that it would not have been
`
`obvious that the content on the TDM channel in Noreen would contain the required
`
`data for identifying individual and broadcast messages, Dr. Moon resorts to an
`
`argument that such data must also “distinguish between two instances (i.e.,
`
`occurrences) of the same message.” Ex-2016 ¶63; see also Ex-1029, 38:7-11 (“Q:
`
`Okay. So it’s your opinion that the data identifying the media content needs to be
`
`able to distinguish between multiple instances of the same content, correct? A:
`
`Correct.”). This extraneous limitation is found nowhere in the claims, and is added
`
`despite Dr. Moon’s representation to the Board that no “term requires explicit
`
`
`3 In any event, a POSITA would have understood from Noreen’s disclosure of
`“identification information” that, at the very least, a paging system needs to
`identify the start and stop of each message, and individual addressee of the
`message, so that it can be decoded by the targeted mobile (and ignored by others),
`and then displayed. Ex-1028, 3-4. This is data enabling identification of a
`specific instance of content. Id.
`
`9
`
`Petitioner Hyundai Ex-1026, 0012
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`

`

`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`construction.” 4 Ex-2016 ¶43; see also DI, 40 n.6 (instructing StratosAudio to raise
`
`claim constructions issues and “directly and fully address[]” them in the papers).
`
`19. Dr. Moon begins his claim construction argument with a hypothetical:
`
`“To the extent the same source sends the same content to a user multiple times,
`
`there is no ‘data’ in the TDM to distinguish each instance of that content.”5 Ex-
`
`2016 ¶¶57, 63. But there is nothing in Element 9[a], the specification, or the
`
`prosecution history relating to distinguishing multiple instances of the same
`
`content. Element 9[a] instead recites “data enabling the identification of a specific
`
`instance of the first media content.” This plain and unambiguous language does
`
`not require “distinguishing” duplicate instances of “the same content.” Instead, the
`
`data needs to be sufficient to enable identification of specific instances of content.
`
`Each time a sports report, stock quote, travel alert, or individualized message is
`
`received and displayed on Noreen’s display, a POSITA would have understood
`
`that Noreen had decoded paging and packet data from the TDM channel sufficient
`
`to identify and display that particular instance of the message. It is simply not
`
`
`4 I understand from Counsel that this was also StratosAudio’s position in
`StratosAudio, Inc. v. Hyundai Motor Am., No. 6:20-cv-01125, Dkt. No. 55 at 2
`(W.D.Tex. Sept. 7, 2021) (Ex-1030) (“There are no claim construction disputes
`with respect to the… ’081 Patent[].”), which District Judge Albright agreed with.
`See Ex-1027.
`5 Dr. Moon then extends the requirement to receiving multiple instances of the
`same content from the same user in a short period of time.
`
`10
`
`Petitioner Hyundai Ex-1026, 0013
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`relevant to the claims whether or not the displayed message content is the same as
`
`a previously displayed message.6 See, e.g., Ex-1005, 1:50-54. Nothing more is
`
`required by the plain claim language.
`
`2.
`
`Element 9[b]: 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;
`(Ground 1) Dr. Moon does not dispute that Noreen discloses an
`
`20.
`
`assignable channel that transmits, e.g., “high quality digital program data such as
`
`music,” (second media content) which is received by assignable channel receiver
`
`module 221 (second receiver module). Ex-2016 ¶¶66, 69; Ex-1005, 6:3-15. Dr.
`
`Moon also does not dispute that Noreen discloses “identification of the program
`
`signal and particular program to which the user is listening.” Ex-2016 ¶69; Ex-
`
`1005, 13:23-26.
`
`21.
`
`Instead, Dr. Moon’s argument is premised on two points, neither of
`
`which has merit. First, Dr. Moon alleges that I have not demonstrated that Noreen
`
`teaches “uniquely identifying data” specific to the program content on Noreen’s
`
`
`6 Even if identifying duplicate messages were required by the claims (it is not),
`such a feature would have been obvious to implement in Noreen based on, for
`example, the myriad of well-known paging protocols at the time. For example,
`Noreen teaches to use paging on the TDM channel, and it was known that pager
`receivers of the day could identify duplicate messages. See Ex-1028, 3.
`Specifically, duplicate messages could be identified and not stored. Id.
`
`11
`
`Petitioner Hyundai Ex-1026, 0014
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`

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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`assignable channel (e.g., the “high quality music” that is the claimed second media
`
`content). Ex-2016 ¶69. Second, Dr. Moon alleges that Noreen’s media content is
`
`not “received discretely” as the claims require. Ex-2016 ¶¶71-75. Dr. Moon is
`
`wrong on both counts.7
`
`a. Noreen teaches to uniquely identify the “high quality
`music,” which is the claimed second media content
`
`22. As he must, Dr. Moon acknowledges that Noreen includes an
`
`assignable channel that includes high quality digital program data and that Noreen
`
`discloses identifying information for program signals. Ex-2016 ¶69; Ex-1005,
`
`13:21-23. But Dr. Moon claims that “Dr. Almeroth has failed to specifically show
`
`that the content on the assignable channel is the program for which the identifying
`
`program information is sent.” Ex-2016 ¶69. Dr. Moon is incorrect. As I explained
`
`in my Declaration, Noreen teaches to use “identification information… sent on a
`
`subchannel” of the program signal for “identification of the program signal and
`
`particular program to which the user is listening.” Ex-1002 ¶89 (citing Ex-1005
`
`13:23-26 (emphasis added)). As Noreen makes clear, “high quality digital”
`
`programs are sent on the assignable channel, and the particular instance identified
`
`by the identifying information in the program subchannel corresponds to the
`
`
`7 The Board rejected StratosAudio’s contrary arguments (purported lack of
`“uniquely identifying data” and “media content received discretely” in Noreen),
`which are substantially repeated in the Moon Decl. DI, 38-40.
`
`12
`
`Petitioner Hyundai Ex-1026, 0015
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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`particular high quality digital program that the user is listening to, such as music.
`
`Ex-1005, 6:12-15, 13:35-38, 14:27-31.
`
`23. Dr. Moon’s suggestion that the identification is referring to some
`
`other content makes no sense. Instead, to the extent Noreen’s teachings are
`
`ambiguous at all—they are not—a POSITA would have been motivated to ensure
`
`that the particular “high quality digital program data” in the program stream on
`
`Noreen’s assignable channel that a user is listening to are uniquely identified so
`
`that, for example, the user could purchase the music which was most recently
`
`played. Ex-1005, 14:41-46; see also id., 1:12-19, 13:24-32. A POSITA would
`
`have understood that program identifying information would correspond to the
`
`song being played, so the user could buy it.
`
`b. Noreen teaches that its media content is “received
`discretely” as claimed
`
`24. Regarding this term, the DI stated: “If Patent Owner wishes to raise a
`
`claim construction issue on this point, it should be directly and fully addressed in
`
`Patent Owner’s papers and not left open to speculation.” DI, 40 n.6. Despite this
`
`direction, Dr. Moon did not propose an express construction for the “received
`
`discretely” term. Instead, Dr. Moon attempts to narrow the scope of Element 9[b]
`
`without directly or fully addressing it. Regardless, Dr. Moon’s narrow view of this
`
`term is wrong.
`
`13
`
`Petitioner Hyundai Ex-1026, 0016
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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`25. Dr. Moon argues that “claim 9 requires that the signals are not
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`integrated at the time the user device receives them.” Ex-2016 ¶75. This is wrong
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`for multiple reasons, but to streamline the issues, I focus on the most significant
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`reason, which is that Claim 9 does not recite a “user device… receiv[ing]
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`discretely.” See Ex-1029, 50:2-21 (Dr. Moon confirming his opinion that the “user
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`device” needs to receive the first and second media content discretely and that the
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`claims do not recite “user device”). This resolves Dr. Moon’s argument under any
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`reasonable view of “received discretely.”
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`26. The claims recite a “first receiver module” or “second receiver
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`module” that receives the first and second “media content, respectively.” Dr.
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`Moon does not dispute that Noreen discloses an assignable channel and a TDM
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`channel, receiving first and second media content, respectively. Ex-2016 ¶¶61, 66.
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`27. For the first receiver module, I identified the TDM channel receiver
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`module (TDM Demodulator/Decoder 222; Figure 2, below, blue) and, for the
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`second receiver module, I identified the Assignable channel receiver module
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`(Assignable Demodulator/Decoder 221; orange). Ex-1002 ¶¶85, 88.8 Each of
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`these modules “discretely” receives different “IF signals” from Satellite RF
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`Electronics 215.
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`8 The Board agreed with this element identification. DI, 32-42.
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`14
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`U.S. Patent No. 8,166,081
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`28. As Noreen explains, the “satellite RF electronics converts a received
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`electromagnetic signal to an “assignable-IF (Intermediate Frequency) signal and a
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`TDM-IF signal....” Ex-1005, 3:30-33. That is, Noreen discloses two modules
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`receiving signals discretely (see blue and orange arrows in Figure 2, above). Each
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`signal is demodulated and decoded by separate decoder modules, one for the TDM
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`channel and one for the assignable channel. Ex-1005, Figure 2. The claim does
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`not require a single user device, as Dr. Moon attempts to argue. The Board need go
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`further than that.
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`29. Regardless, it is worth noting that even if the claim recited a “device”
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`receiving signals discretely as opposed to “integrated,” Dr. Moon does not explain
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`what “integrated” means in this context, or provide any justification for a negative
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`15
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`U.S. Patent No. 8,166,081
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`limitation (“not integrated”) that excludes disclosed embodiments. Ex-1029, 46:8-
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`47:1 (“Q: So it’s your opinion that a POSITA would have understood that
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`embodiments (1) and (3) are excluded from Claim 9? A: That’s my
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`understanding.”). Noreen’s L-Band Antenna receives many channels (a plurality of
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`Assignable channels and at least one TDM channel) within the same band. See Ex-
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`1005, 6:3-5, 10:24-25. Each channel occupies its own discrete spectrum within the
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`same band because each demodulator applies a different frequency to the
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`respective IF signals. Id., 7:54 (“frequency of the TDM-IF signal”), 8:12
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`(“frequency of the Assignable-IF signal”), 6:43-51 (“[F]irst frequency-command
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`signal from data processing and controller 223 controls the frequency setup of the
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`satellite RF electronics 215 to convert the frequencies of the received signal to the
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`frequencies of the assignable-IF signal and the TDM-IF signal.” (emphasis
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`added)). Moreover, the ’081 Patent itself explains that, as an alternative to being
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`transmitted “integrally,” the signals may be “transmitted on distinct frequencies.”
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`Ex-1001, 11:14-17. This is exactly how they are transmitted by Noreen (see Ex-
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`1005, 6:43-51), so a POSITA would have considered the signals received in
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`Noreen to be discrete signals received within the same band as described by the
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`’081 Patent.
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`16
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`U.S. Patent No. 8,166,081
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`(Ground 2) Regarding the combination with Crosby, Dr. Moon attacks
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`30.
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`only Noreen as the base reference. It does not make any argument against Crosby’s
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`disclosure or the combinability of Noreen and Crosby.
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`31. Specifically, Dr. Moon argues only that “there is no identification
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`disclosed in Noreen attributable to the assignable channel such that Crosby’s
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`information may be included with it.” Ex-2016 ¶96. Based on this alleged failure
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`of Noreen, Dr. Moon seems to be arguing that the combined system still does not
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`meet Element 9[b] for the same reason that Noreen allegedly fails. But, as
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`explained above, Dr. Moon’s argument that the program signal is not attributed to
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`the assignable channel in Noreen makes no sense. See also DI, 38-40. Moreover, I
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`explained in my Declaration (and the Board agreed) that a POSITA would have
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`been motivated to combine Noreen with Crosby and would have had a reasonable
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`expectation of success in doing so. Ex-1002 ¶92; DI, 41-42. Nothing in Dr.
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`Moon’s declaration warrants a different conclusion.
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`3.
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`Element 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;
`32. Dr. Moon’s arguments for Element 9[c] mischaracterize both my
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`arguments and the prior art, and, once again, are based on unexplained,
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`unsupportable constructions of various elements of the system of Claim 9.
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`17
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`U.S. Patent No. 8,166,081
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`33. Dr. Moon does not dispute that Noreen discloses receipt of two
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`channels, a TDM data channel and an assignable channel, or that Noreen discloses
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`“present[ing] content from both channels via various presentation methods, i.e.,
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`message display, handset, or speakers.” Ex-2016 ¶79 (“[T]he data from the TDM
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`stream is sent to the message display portion of the user device, whereas the media
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`on the assignable channel is sent to the handset or speakers.”). Indeed, Noreen
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`teaches all of the limitations of this claim element as described in my Declaration.
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`Ex-1002 ¶93; see also DI, 42-43 (agreeing).
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`34. The crux of Dr. Moon’s argument is yet another unreasonable view of
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`claim scope. Dr. Moon seemingly interprets the system of Claim 9 as requiring an
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`output of different first and second devices, instead of allowing for an output of a
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`first and second receiver module within a single device. For example, Dr. Moon
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`argues that “[t]he claimed system fulfills a key aspect of the ’081 patent—a second
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`device that receives media content when the primary device does not have
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`sufficient bandwidth or is otherwise incapable of presenting the media content.…
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`Reading claim 9 to cover one singular output device eliminates these benefits of
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`the claimed subject matter.” Ex-2016 ¶83 (emphases added).
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`35. Thus, Dr. Moon requires that each “receiver module” is a separate
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`user device, despite that this requirement appears nowhere in the claim. See Ex-
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`1029, 68:3-70:19. Unlike independent Claims 1 and 12, which explicitly recite “a
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`18
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`Petitioner Hyundai Ex-1026, 0021
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`U.S. Patent No. 8,166,081
`Reply Declaration – IPR2021-01267
`user device of the plurality of user devices,” Claim