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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 IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,166,081
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`I.
`II.
`
`2.
`
`INTRODUCTION .......................................................................................... 1
`STRATOSAUDIO’S ARGUMENTS AGAINST GROUNDS 1-3
`FAIL ................................................................................................................ 1
`A.
`Independent Claim 9 is rendered obvious by Noreen alone
`(Ground 1) or Noreen and Crosby (Ground 2). ................................... 1
`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; ..................................... 1
`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; ...................................................... 7
`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; ..................................................... 13
`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. ....................................................................... 16
`Elements 9[pre] and 9[d] ......................................................... 16
`5.
`Dependent Claim 15 is rendered obvious by Noreen alone
`(Ground 1). ......................................................................................... 17
`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). ...................................................... 19
`
`3.
`
`4.
`
`B.
`
`C.
`
`
`
`
`
`i
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`III.
`
`STRATOSAUDIO’S ARGUMENTS AGAINST GROUNDS 4-5
`FAIL .............................................................................................................. 19
`A.
`Independent Claim 9 is rendered obvious by Ellis-2005 alone
`(Ground 4) or Ellis-2005 and Crosby (Ground 5). ............................. 20
`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 .................................... 20
`Elements 9[pre] and 9[b]-9[e] .................................................. 23
`2.
`Dependent Claims 10-11 and 23 are rendered obvious by Ellis-
`2005 alone (Ground 4) or Ellis-2005 and Crosby (Ground 5). .......... 24
`Dependent Claim 15 is rendered obvious by Ellis-2005 alone
`(Ground 4). ......................................................................................... 24
`IV. CONCLUSION ............................................................................................. 26
`
`
`
`B.
`
`C.
`
`
`
`
`
`ii
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`
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`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-1008 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]
`
`
`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.
`
`iii
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`
`[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”)
`Ex-1024 Declaration of Bradley M. Berg In Support of Petitioner's Motion for
`Pro Hac Vice Admission Pursuant to 37 CFR 42.10(C)
`[INTENTIONALLY LEFT BLANK]
`Ex-1025
`Ex-1026 Reply Declaration of Dr. Kevin Almeroth
`Ex-1027
`StratosAudio, Inc. v. Hyundai Motor Am., No. 6:20-cv-01125, Dkt.
`No. 79 (W.D. Tex. Dec. 15, 2021)
`Ex-1028 Yi-Bing Lin, Paging Systems: Network Architectures and Interfaces,
`IEEE (1997)
`Ex-1029 Transcript of the Deposition of Dr. Todd K. Moon
`Ex-1030
`StratosAudio, Inc. v. Hyundai Motor Am., No. 6:20-cv-01125, Dkt.
`No. 55 (W.D. Tex. Sept. 7, 2021)
`
`
`
`iv
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`
`I.
`
`INTRODUCTION
`StratosAudio, Inc.’s Patent Owner Response (“POR”) (Paper 17) fails to
`
`distinguish Claims 9-11, 15, and 23 (“the challenged claims”) of U.S. Patent No.
`
`8,166,081 (“the ’081 Patent”) from the prior art and the challenged claims should
`
`be cancelled. Petitioner reiterates the corresponding sections of the Petition
`
`(“Pet.”) (Paper 2) for Grounds 1-5.
`
`II.
`
`STRATOSAUDIO’S ARGUMENTS AGAINST GROUNDS 1-3 FAIL
`StratosAudio argues against Grounds 1-3 by alleging shortcomings in
`
`Noreen alone and/or the Noreen-Crosby combination for Elements 9[a]-9[c], 9[e],
`
`and Claim 15, and provides no specific arguments against Elements 9[pre], 9[d], or
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`Claims 10-11 and 23 for Grounds 1-3. Ex-1026 ¶¶1-7.
`
`A.
`
`Independent Claim 9 is rendered obvious by Noreen alone
`(Ground 1) or Noreen and 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;
`StratosAudio does not dispute that Noreen discloses a TDM channel that is
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`demodulated and decoded using TDM demodulation and decoder 222 into “paging,
`
`packet data,” POR, 22 (citing Ex-1005, 7:10-13) (i.e., “a first receiver module
`
`configured to receive at least a first media content”). Nor does StratosAudio
`
`dispute that this “first media content” includes “paging messages, stock updates,
`
`1
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`sports reports, travel advisories, and emergency reports.” POR, 24. StratosAudio
`
`also does not dispute that Noreen’s system “provid[es] the user with a two-way
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`communication terminal, including a keyboard, to input a data message that may
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`be carried over TDM” and “sends and receives the paging messages to the message
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`display.” POR, 22, 24.
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`The only issue in dispute is whether Noreen teaches data received with the
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`content of the TDM channel as “enabling the identification a specific instance of
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`the first media content.” As the Petition states, Noreen teaches that the
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`“identification of content on the TDM channel is provided on ‘a time slot in a time
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`division multiplexed signal.’” Pet., 24-25 (citing, Ex-1005, 2:63-64). Pointing to
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`the disclosures of Noreen, including the example of two-way paging or messaging,
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`Dr. Almeroth explained that a POSITA would have understood that identification
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`information relating to content targeted to a particular user, e.g., information
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`indicating a particular time, is a way of identifying a specific instance of the media
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`content. Pet., 25 (citing Ex-1002 ¶86). The Board agreed. Paper 9 (“DI”), 35.
`
`Attempting to shore-up its previously unpersuasive argument, StratosAudio
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`devotes nearly six pages that largely (1) mischaracterize Petitioner’s contentions
`
`and (2) invest the claim with a new, limiting meaning despite its contention that no
`
`terms need construction (POR, 14, 21-26). Once unpacked and focused on all of
`
`2
`
`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`what Noreen teaches a POSITA, and what the claims say, StratosAudio’s
`
`arguments fail. Ex-1026 ¶¶8-10.
`
`a.
`
`StratosAudio mischaracterizes Petitioner’s
`contentions: Petitioner does not rely on bare TDM,
`outside the context of the media it carries
`Pointing to two pages of a textbook (Ex-2015, 3-4), StratosAudio 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., POR, 21 (“TDM does
`
`not provide data enabling the identification of a specific instance (i.e., occurrence)
`
`of media content.”), 22, 24, 26. But, it is not Petitioner’s contention that a TDM
`
`channel, standing alone, has such “data” absent the context in which it is used, i.e.,
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`the first content carried by the channel.
`
`When Noreen is considered for all its teachings (Pet., 24-25)—as a POSITA
`
`would have done—it is clear that the TDM channel is the mechanism by which
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`digital data (i.e., “paging, packet data”) is transmitted to individuals (e.g.,
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`individualized pager messages), groups of mobiles, or all mobiles (e.g., travel
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`alerts or emergency messages). Ex-1026 ¶¶11-12. Noreen’s TDM receiver knows
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`which messages are for it alone or as a part of a larger broadcast, because Noreen
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`teaches “coding in the transmissions” for addressing the messages. Ex-1005, 6:5-
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`9; Pet., 24. Noreen also discloses more generally “identification information from
`
`the program signal” from which “a user-data signal” is generated. Ex-1005, 2:54-
`
`3
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`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. Pet., 25; Ex-
`
`1026 ¶13.
`
`StratosAudio argues that Noreen does not “show” or “disclose” the “data
`
`enabling the identification of a specific instance.” E.g., POR, 21 (“Thus, to meet
`
`element 9[a], Noreen must show some data enabling identification of a specific
`
`instance (i.e., occurrence) of content on the TDM channel.… Noreen has no such
`
`disclosure.”). This is a red herring. Obviousness focuses on what a reference
`
`teaches or suggests to a POSITA. See, e.g., CFRD Research, Inc. v. Matal, 876
`
`F.3d 1330, 1345 (Fed. Cir. 2017) (reversing the Board’s finding of non-
`
`obviousness because it analyzed only what a reference disclosed: “Even if a
`
`reference’s teachings are insufficient to find anticipation, that same reference’s
`
`teachings may be used to find obviousness.”). Noreen leaves the implementation
`
`details of paging and packet-based message formats to a POSITA because those
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`implementation details were well known at the time. Ex-1026 ¶¶14-17 (citing Ex-
`
`
`2 Petitioner 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). Ex-1026 ¶13.
`
`4
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`1028 (describing common and well-known aspects of alphanumeric and voice
`
`paging protocols))3; see also Ex-1029, 35:18-37:4 (Dr. Moon agreeing 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).
`
`b.
`
`StratosAudio adds a new limiting construction despite
`arguing that no term requires construction
`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, StratosAudio resorts to an
`
`argument that such data must also “distinguish between two instances (i.e.,
`
`occurrences) of the same message.” POR, 25; 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 StratosAudio’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-1026 ¶17 (citing Ex-1028, 3-4). This is data enabling
`identification of a specific instance of content. Id.
`
`5
`
`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`construction.” 4 POR, 14; see also DI, 40 n.6 (instructing StratosAudio to raise
`
`claim constructions issues and “directly and fully address[]” them in the papers).
`
`StratosAudio begins its 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.” POR,
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`22, 25. But, there is nothing in Element 9[a], the specification, or the prosecution
`
`history relating to distinguishing multiple instances of the same content. And, the
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`plain and unambiguous language of Element 9[a] does not require “distinguishing”
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`duplicate instances of “the same content.” Ex-1026 ¶¶18-19. Instead, the data
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`needs to be sufficient to enable identification of specific instances of content. Each
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`time a sports report, stock quote, travel alert, or individualized message is received
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`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
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`and display that particular instance of the message. Ex-1026 ¶19. It is simply not
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`relevant to the claims whether or not the displayed message content is the same as
`
`
`4 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.
`
`6
`
`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`a previously displayed message.5 Ex-1026 ¶19; see also, 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) StratosAudio does not dispute that Noreen discloses an
`
`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). POR, 26-27; Ex-1005, 6:3-15.
`
`StratosAudio also does not dispute that Noreen discloses “identification of the
`
`program signal and particular program to which the user is listening.” POR, 27;
`
`Ex-1005, 13:23-26.
`
`Instead, StratosAudio’s alleges two points, neither of which has merit. First,
`
`StratosAudio alleges that Petitioner has not demonstrated that Noreen teaches
`
`“uniquely identifying data” specific to the program content on Noreen’s assignable
`
`channel (e.g., the “high quality music” that is the claimed second media content).
`
`
`5 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 myriad
`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. Ex-1026 ¶19 (citing Ex-1028, 3). Specifically,
`duplicate messages could be identified and not stored. Id.
`
`7
`
`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`POR, 27. Second, StratosAudio alleges that Noreen’s media content is not
`
`“received discretely” as the claims require. StratosAudio is wrong on both counts.6
`
`Ex-1026 ¶¶20-21.
`
`a.
`
`Noreen teaches to uniquely identify the “high quality
`music,” which is the claimed second media content
`As it must, StratosAudio acknowledges that Noreen includes an assignable
`
`channel that includes high quality digital program data and that Noreen discloses
`
`identifying information for program signals. POR, 27; Ex-1005, 13:21-23. But,
`
`StratosAudio claims that “Petitioner has failed to specifically show that the content
`
`on the assignable channel is the program for which the identifying program
`
`information is sent.” POR, 27. As explained in the Petition, however, 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.” Pet., 26 (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 particular high quality digital program that
`
`
`6 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 POR. DI, 38-40.
`
`8
`
`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`the user is listening to, such as music. Ex-1026 ¶22; Ex-1005, 6:12-15, 13:35-38,
`
`14:27-31.
`
`StratosAudio’s suggestion that the identification is referring to some other
`
`content makes no sense. In addition to Noreen’s unambiguous teachings, 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, e.g., 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; Ex-1026 ¶23.
`
`b.
`
`Noreen teaches that its media content is “received
`discretely” as claimed
`Regarding this claim 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
`
`instruction, StratosAudio did not propose an express construction for the “received
`
`discretely” term. Instead, StratosAudio attempts to narrow the scope of Element
`
`9[b] without directly or fully addressing it. Regardless, StratosAudio’s narrow
`
`view of this term is wrong. Ex-1026 ¶24.
`
`StratosAudio argues that “claim 9 requires that the signals are not integrated
`
`at the time the user device receives them.” POR, 30. This is wrong for multiple
`
`9
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`reasons, but to streamline the issues, Petitioner focuses on the most significant
`
`reason, which is that Claim 9 does not recite a “user device… receiv[ing]
`
`discretely.” See Ex-1029, 50:2-21 (Dr. Moon confirming his opinion that the “user
`
`device” needs to receive the first and second media content discretely and that the
`
`claims do not recite “user device”). This resolves StratosAudio’s argument under
`
`any reasonable view of “received discretely.”
`
`The claims recite a “first receiver module” or “second receiver module” that
`
`receives the first and second “media content, respectively.”
`
`For the first receiver module, Petitioner identified the TDM channel receiver
`
`module (222; Figure 2, below, blue) and, for the second receiver module,
`
`Petitioner identified the Assignable channel receiver module (221; orange). Pet.,
`
`24, 26.7 Each of these modules “discretely” receives different “IF signals” from
`
`Satellite RF Electronics 215. Ex-1026 ¶¶25-27.
`
`
`7 The Board agreed with this element identification. DI, 32-42.
`
`10
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`

`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`
`
`
`As Noreen explains, the “satellite RF electronics converts a received
`
`electromagnetic signal to an assignable-IF (Intermediate Frequency) signal and a
`
`TDM-IF signal.” Ex-1005, 3:30-33. That is, Noreen discloses two modules
`
`receiving IF signals discretely (Figure 2, blue and orange arrows). Each signal is
`
`demodulated and decoded by separate decoder modules, one for the TDM channel
`
`and one for the assignable channel. The claim does not require a single user device
`
`discretely received signals, as StratosAudio attempts to argue. The Board need go
`
`further than that.
`
`Regardless, it is worth noting that even if Claim 9 recited a “device”
`
`receiving signals discretely as opposed to “integrated,” StratosAudio does not
`
`explain what “integrated” means in this context, or provide any justification for a
`
`11
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`

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`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`negative limitation (“not integrated”) that excludes disclosed embodiments. Ex-
`
`1029, 46:8-47:1 (“Q: So it’s your opinion that a POSITA would have understood
`
`that embodiments (1) and (3) are excluded from Claim 9? A: That’s my
`
`understanding.”). Moreover, the ’081 Patent itself explains that, as an alternative to
`
`being transmitted “integrally,” the signals may be “transmitted on distinct
`
`frequencies.” Ex-1001, 11:14-17. This is exactly how they are transmitted by
`
`Noreen (see Ex-1005, 6:43-51), so a POSITA would have considered the signals
`
`received in Noreen to be discrete signals received within the same band as
`
`described by the ’081 Patent. Ex-1026 ¶¶28-29.
`
`(Ground 2) Regarding the Noreen-Crosby combination, StratosAudio attacks
`
`only Noreen. It does not make any argument against Crosby’s disclosure or the
`
`combinability of Noreen and Crosby.
`
`Specifically, StratosAudio argues only that “there is no identification
`
`disclosed in Noreen attributable to the assignable channel such that Crosby’s
`
`information may be included with it.” POR, 41. Based on this alleged failure of
`
`Noreen, StratosAudio argues that the combined system does not meet Element 9[b]
`
`for the same reason that Noreen allegedly fails. But, as explained above,
`
`StratosAudio’s argument that the program signal is not attributed to the assignable
`
`channel in Noreen makes no sense. See DI, 38-40. Moreover, Petitioner explained
`
`(and the Board agreed) that a POSITA would have been motivated to combine
`
`12
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`

`U.S. Patent No. 8,166,081
`Petitioner Reply – IPR2021-01267
`Noreen with Crosby and would have had a reasonable expectation of success in
`
`doing so. DI, 41-42. Nothing in the POR warrants a different conclusion. Ex-
`
`1026 ¶¶30-31.
`
`3.
`
`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;
`StratosAudio’s arguments for Element 9[c] are, once again, based on
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`unexplained, unsupportable constructions of various elements of the system of
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`Claim 9.
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`StratosAudio does not dispute that Noreen discloses receipt of two channels,
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`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.” POR, 31-32 (“[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.”). Thus, Noreen
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`teaches all of the limitations of this claim element as described in the Petition. See
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`DI, 42-43; Ex-1026 ¶¶32-33.
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`The crux of StratosAudio’s argument is yet another unreasonable view of
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`claim scope. StratosAudio seemingly interprets the system of Claim 9 as requiring
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`an output of different first and second devices, instead of allowing for an output of
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`a first and second receiver module within a single device. For example,
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`StratosAudio argues that “[t]he claimed system fulfills a key aspect of the ’081
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`patent—a second device that receives media content when the primary device does
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`not have sufficient bandwidth or is otherwise incapable of presenting the media
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`content.… Reading claim 9 to cover one singular output device eliminates these
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`benefits of the claimed subject matter.” POR, 34-35 (emphases added).
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`Thus, StratosAudio requires that each “receiver module” is a separate user
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`device, despite that this requirement appears nowhere in the claim. See Ex-1029,
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`68:3-70:19. Unlike independent Claims 1 and 12, which explicitly recite “a user
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`device of the plurality of user devices,” Claim 9 recites “[a] system… comprising:
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`a first receiver module,” “a second receiver module,” and “an output of the first
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`receiver module or the second receiver module.” Ex-1001, Claims 1, 9, 12; see
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`also Ex-1004, 177-178 (Applicant amending original Claim 16 (now Claim 9)
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`during prosecution to replace the term “user device” with “system”).
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`StratosAudio’s interpretation of Claim 9 is unsupportable. Ex-1026 ¶¶34-35.
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`Additionally, StratosAudio argues that Element 9[c] “recites a structural
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`limitation of the claimed system: the system must have a first ‘output’ of the ‘first
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`receiver module’ and a ‘second output’ of the ‘second receiver module’” with each
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`capable “of presenting—audibly, visibly, or otherwise” and “at least one of the two
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`outputs must have the capability of concurrent presentation.” POR, 30-38. The
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`U.S. Patent No. 8,166,081
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`only way for StratosAudio to make such an argument, and thereby support its
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`unreasonable “multiple devices” construction, is by applying an additionally
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`narrow construction of the term “or.” Ex-1026 ¶36. Specifically, StratosAudio
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`interprets the “or” in Element 9[c] as an exclusive “or,”8 requiring that each of the
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`first and second receiver modules has both a first and second output, respectively.
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`In addition to making no sense, StratosAudio’s proposed narrow construction is
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`based solely on conclusory statements from its declarant and citations to the
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`specification that do not support those conclusions. Ex-2016 ¶¶36-37. Indeed,
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`StratosAudio’s declarant admitted at his deposition that the media content “could
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`be presented on one or it could be presented on the other, and there’s nothing
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`innately in [the claim] that says it can't be presented on both of these modules
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`simultaneously.” Ex-1029, 70:20-71:5.
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`A POSITA would have understood, as Dr. Moon agreed, that there are first
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`and second receiver modules and first and second outputs, respectively, such as
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`one output for video and one output for audio, which can be presented
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`concurrently. Ex-1026 ¶¶36-37. Thus, under the correct view of the claim,
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`Noreen’s system is configured to concurrently present, e.g., paging messages (first
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`media content) on the TDM data channel through a display (output of first
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`8 That is, an “or” that is limited to one or the other but not both.
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`receiver) and music (second media content) on the assignable data channel through
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`a speaker (output of second receiver). Ex-1026 ¶37.
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`4.
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`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.
`(Ground 1) StratosAudio’s arguments for Element 9[e] are substantially the
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`same as those it presents for Element 9[b] and fail for the same reasons.
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`Specifically, StratosAudio argues that the data transmitted with a response message
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`in Noreen “is the ‘identifying data’ for the ‘program signal,’ not content from the
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`assignable channel.” POR, 38. As explained above, StratosAudio’s argument that
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`the program signal is not attributed to the assignable channel in Noreen makes no
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`sense. Ex-1026 ¶38.
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`(Ground 2) Similarly, StratosAudio’s argument against Noreen and Crosby
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`for Element 9[e] is the same as the argument it presented for Element 9[b], and it
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`too fails for the same reasons. Ex-1026 ¶39.
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`5.
` Elements 9[pre] and 9[d]
`The PTAB in the DI determined that Petitioner had demonstrated
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`sufficiently that Ground 1 meets the recited independent Claim Elements 9[pre]
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`and 9[d]. DI, 32, 43-44. StratosAudio makes no arguments regarding Elements
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`9[pre] and 9[d] over Grounds 1-2. Ex-1026 ¶40.
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`B. Dependent Claim 15 is rendered obvious by Noreen alone
`(Ground 1).
`The DI stated that, based on the preliminary record, there was no “adequate
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`explanation of how, on the one hand, [Petitioner] may rely on portions of Noreen
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`where the program signal contains identifying information, but on the other hand,
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`for purposes of satisfying the limitations of dependent claim 15, it may rely on
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`portions of Noreen where the program signal is devoid of identification
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`information.” DI, 49 (emphasis added). However, this statement appears to be
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`based on accepting StratosAudio’s mischaracterization of Noreen’s teachings.
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`Noreen teaches a number of approaches for obtaining identifying information from
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`the program stream (the second media content), none of which are internally
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`inconsistent. Ex-1026 ¶41.
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`As discussed above in connection with Element 9[b], Noreen teaches one
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`example in which many different types of “program identification information” are
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`directly encapsulated in and sent with the programming signal. See supra Section
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`II.A.2.a.; Ex-1005, 13:24-31. However, it is not correct to say that Noreen’s other
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`example is devoid of identification information. Instead, the identification
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`information in the alternative example is derived from information contained in the
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`program signal. Specifically, the identification information is derived from “the
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`program carrier frequency of the program signal,” combined with other
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`information, such as “timing information relating to the time of generation of the
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`user input signal, and/or the approximate geographic location of the mobile
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`transmitter 401” to identify the program. Ex-1005, 13:1-14. In the alternative
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`arrangement, the program signal is not devoid of identification information; the
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`“the program carrier frequency of the program signal” is information used to
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`identify the program,9 and is combined with other information that uniquely
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`identify the program. In either case, information from the program signal is used to
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`uniquely identify the specific program as required by Element 9[b]. Once
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`identified, that information is used as explained in the discussion of the remainder
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`of the elements of Claim 9. Noreen thus discloses at least two ways to uniquely
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`identify the program data, either of which would satisfy Claim 9. Ex-1026 ¶42.
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`Claim 15, as a claim that depends from C