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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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`
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`
`
`v.
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`
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`
`IPR2021-01267
`U.S. Patent No. 8,166,081
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`
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`
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`PATENT OWNER SUR-REPLY
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`TABLE OF CONTENTS
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`GROUND 1: CLAIMS 9, 15, AND 23 ARE NOT OBVIOUS OVER
`
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`NOREEN ......................................................................................................... 1
`A. Noreen fails to render obvious claim 9 ................................................. 1
`1.
`9[a] .............................................................................................. 1
`2.
`Noreen fails to teach Element 9[b] ............................................. 5
`3.
`module”) – Element 9[c] ............................................................. 9
`4.
`content” – Element 9[e] ............................................................ 12
`B.
`Noreen alone does not render claim 15 obvious ................................. 12
`III. GROUND 2: CLAIMS 9, 15, AND 23 ARE NOT OBVIOUS OVER
`NOREEN IN VIEW OF CROSBY ............................................................... 15
`A. Noreen in view of Crosby does not render claim 9 obvious ............... 15
`1.
`content” – Element 9[b] ............................................................ 15
`2.
`specific to the second media content” – Element 9[e] .............. 15
`IV. GROUND 3: CLAIMS 10 AND 11 ARE NOT OBVIOUS OVER
`NOREEN IN VIEW OF CROSBY AND ELLIS-2002 ................................ 16
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`Noreen fails to teach “data enabling identification of a
`specific instance of the first media content” – Element
`
`Noreen fails to teach two receiver module outputs (“an
`output of the first receiver module or the second receiver
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`Noreen fails to teach “a response message having at least
`the uniquely identifying data specific to the second media
`
`Noreen in view of Crosby fails to teach “uniquely
`identifying data specific to at least the second media
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`Noreen in view of Crosby fails to teach “a response
`message having at least the uniquely identifying data
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`U.S. Patent No. 8,166,081
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`Ellis-2005 fails to teach “data enabling the identification
`of a specific instance of the first media content” –
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`V. GROUND 4: CLAIMS 9-11, 15, AND 23 ARE NOT OBVIOUS OVER
`ELLIS-2005 ALONE .................................................................................... 16
`A.
`Ellis-2005 alone does not render claim 9 obvious .............................. 16
`1.
`Element 9[a] .............................................................................. 16
`B.
`Ellis-2005 alone does not render claim 15 obvious ............................ 18
`VI. GROUND 5: CLAIMS 9-11, 15, AND 23 ARE NOT OBVIOUS OVER
`ELLIS-2005 IN VIEW OF CROSBY (GROUND 5) ................................... 20
`A.
`Element 9[a] ........................................................................................ 20
`VII. CONCLUSION .............................................................................................. 24
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`Ellis-2005 in view of Crosby fails to teach “data enabling the
`identification of a specific instance of the first media content” –
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`ii
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`TABLE OF AUTHORITIES
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Page(s)
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`CASES
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ............................................................................ 8
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 22
`Playtex Prods., Inc. v. Procter & Gamble Co.,
`400 F.3d 901 (Fed. Cir. 2005) .............................................................. 4, 8, 20, 21
`PSN Illinois, LLC v. Ivoclar Vivadent, Inc.,
`525 F.3d 1159 (Fed. Cir. 2008) ............................................................................ 8
`ScentAir Techs., LLC v. Prolitec, Inc.,
`IPR2021-00012, Paper 22 (PTAB Apr. 22, 2022) ........................................... 3, 6
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`iii
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` UPDATED TABLE OF EXHIBITS
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Exhibit Description
`2001 Defendants’ Disclosure of Invalidity Contentions Cover Pleading in
`Parallel W.D. Litigations (July 8, 2021)
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`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`Third Proposed Amended Joint Scheduling Order of Parallel W.D.
`Tex. Litigations (September 15, 2021)
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`E-mail from W.D. Tex. Court Clerk Denying Request to Stay Pending
`Motion to Dismiss for Improper Venue (May 17, 2021)
`
`Transcript of hearing in ParkerVision v. Intel Corp., 6:20-cv-00108
`(W.D. Tex. September 2, 2020) (J. Albright))
`
`Interview with Judge Albright on Patent Litigation and Seventh
`Amendment, IAM (Apr. 7, 2020)
`
`Minute Entry regarding Markman Hearing, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 28,
`2021)
`
`Order Denying Hyundai’s Motion to Dismiss, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 17,
`2021) (J. Albright))
`
`StratosAudio, Inc.’s Preliminary Infringement Contentions,
`StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-01125 (W.D.
`Tex. May 13, 2021)
`
`StratosAudio, Inc.’s Supplemental Preliminary Infringement
`Contentions, StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-
`01125 (W.D. Tex. September 27, 2021)
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`2010
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`Hyundai Motor America’s Answer and Affirmative Defenses to
`Plaintiff’s Complaint for Patent Infringement, Jury Trial Demanded,
`6:20-cv-01125 (W.D. Tex. October 1, 2021)
`
`2011 Minute Order from Discovery Hearing, StratosAudio, Inc. v. Hyundai
`Motor America, 6:20-cv-01125 (W.D. Tex. October 7, 2021)
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`2012
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`Email from Eric Lucas to Patent Trial and Appeal Board, Volkswagen
`Stipulation regarding IPR Grounds (September 3, 2021)
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`2013 Declaration of Hallie Kiernan in Support of Patent Owner’s Motion
`for Admission Pro Hac Vice
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`2014 US Patent 8,875,188
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`2015
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`Excerpt of Digital Communication Second Edition
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`2016 Declaration of Todd K. Moon, Ph.D.
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`2017
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`Transcript of August 17, 2022 Deposition of Dr. Kevin C. Almeroth
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`I.
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`INTRODUCTION
`StratosAudio, Inc. (“Patent Owner”) submits this Sur-Reply in response to
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`the Reply to Patent Owner Response (Paper 20, hereafter the “Reply”) filed by
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`Hyundai Motor America (“Petitioner”), which was in reply to the Patent Owner
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`Response (Paper 17, hereafter “POR”). The Petition and Reply do not establish by
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`a preponderance of evidence that any challenged claim of U.S. Patent 8,166,081
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`(“the ’081 patent”) is unpatentable.
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`II. GROUND 1: CLAIMS 9, 15, AND 23 ARE NOT OBVIOUS OVER
`NOREEN
`A. Noreen fails to render obvious claim 9
`1.
`Noreen fails to teach “data enabling identification of a
`specific instance of the first media content” – Element 9[a]
`The Patent Owner Response explained that a POSITA would not have
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`understood that TDM1 provides data enabling identification of a specific instance
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`of media content. POR 21-26. Nor would a POSITA have understood that certain
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`alphanumeric messages would have sufficient information to enable identification
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`of a specific instance. Id. Petitioner’s reply arguments do not change the outcome.
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`Petitioner contends
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`that Patent Owner mischaracterizes Petitioner’s
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`arguments as relying on bare TDM outside the context of the media it carries. In
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`1 Capitalized terms have the same meaning as in the Patent Owner Response.
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`so doing, Petitioner admits that TDM data alone is insufficient to meet the claimed
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`data enabling identification of a specific instance. See Reply 3 (“But, it is not
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`Petitioner’s contention that a TDM channel, standing alone, has such ‘data’ absent
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`the content in which it is used, i.e., the first content carried by the channel.”).
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`Instead, Petitioner now claims that:
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`that ‘data enabling
`thus understood
`A POSITA would have
`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 respond to, as its
`own specific instance of content.
`Reply 4 (footnote omitted). This statement fails to show what data in Noreen
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`enables identification of a specific instance of “paging and packet data.” Instead,
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`Petitioner merely uses the language of the limitation itself in an attempt to show
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`that Noreen teaches the limitation. Such a circular argument highlights the lack of
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`any disclosure of data in Noreen that “enabl[es] identification of a specific instance
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`of the first media content.” Moreover, Petitioner offers no explanation why
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`Noreen would need to be capable of identifying a specific instance in order to
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`display the TDM data.
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`Petitioner submits new evidence allegedly showing that a POSITA would
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`understand Noreen to disclose identifying a specific instance of the first media
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`content via “paging messages.” Reply 4-5. Petitioner argues in a footnote that a
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`POSITA would have understood that “a paging system needs to identify the start
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`and stop of each message, and individual addressee of the message.” Reply 5 n.3
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`(relying on new exhibit EX1028). The Board should disregard the new evidence
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`and argument raised for the first time on reply. See ScentAir Techs., LLC v.
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`Prolitec, Inc., IPR2021-00012, Paper 22 at 52-53 (PTAB Apr. 22, 2022)
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`(explaining that Petitioner’s new read brought for the first time in reply is
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`improper). Even if considered, the new evidence and argument fail to describe
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`data enabling identification of a specific instance. For example, Petitioner does not
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`explain how the “start and stop of each message” can identify a specific instance of
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`a message, for example if the system receives multiple messages at the same time.
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`Also, presumably the “addressee” field in any given message is the same for all
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`messages sent to that addressee, and therefore is insufficient to specifically identify
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`an instance of media content.
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`Petitioner also contends that Patent Owner reads into the claim an
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`extraneous limitation that the data must distinguish between multiple instances of
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`the same content, despite notifying the Board that no term required a construction.
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`Reply 5-6. Petitioner’s argument misinterprets Patent Owner’s Response, and it is
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`Petitioner (not Patent Owner) that seeks to improperly modify the language of
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`Element 9[a].
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`It is a basic tenet of claim construction that every word in the claim must be
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`given meaning. See Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901,
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`909-10 (Fed. Cir. 2005) (claim construction was flawed in part because it read
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`“substantially flattened” as “flat,” effectively ignoring the “substantially” qualifier
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`in the claim). Through the discussion of data enabling identification of a specific
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`instance of the first media content, Patent Owner seeks to explain the meaning and
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`relevance of the word “specific” in Element 9[a]. In contrast, Petitioner seeks to
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`read the word “specific” out of Element 9[a] entirely.
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`Petitioner contends that “the plain and unambiguous language of Element
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`9[a] does not require ‘distinguishing’ duplicate instances of ‘the same content.’”
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`Reply 6. Yet Petitioner’s argument ignores the term “specific” in the limitation.
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`The phrase “specific instance” indicates that the data enables identification of a
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`particular occurrence of media content as opposed to identifying just the content
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`itself. POR 25-26. Put another way, identifying content (e.g., the song “Let it Be”
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`by the Beatles) is not an identification of a specific instance of first media content.
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`The song “Let it Be” can be found on countless Beatles albums, compilations, and
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`re-releases. It is played on countless radio stations around the country each day.
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`Simply saying “Let it Be” was played is not an identification of a specific instance
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`of that media content. Even if “Let it Be” were played only once, simply saying
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`“Let it Be” does not communicate that fact. Acknowledging this plain meaning of
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`the words “specific” and “specific
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`instance” does not require reading
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`“distinguishing” into the claim or analyzing multiple instances of the media
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`content. It does require giving credence to the applicant’s drafting choice and use
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`of the term “specific.”
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`In deposition, Petitioner’s expert acknowledged that the term “specific”
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`modifies “instance” in Element 9[a], but was unwilling or unable to explain how
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`“specific” modifies “instance,” instead relying solely on his understanding of the
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`prior art to show specific instance. EX2017, 9:8-10:11.
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`2.
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`Noreen fails to teach Element 9[b]
`a.
`Noreen fails to teach “uniquely identifying data
`specific to at least the second media content”
`Patent Owner’s Response explained that Petitioner failed to show that
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`Noreen’s “identification information” applies to the content on the assignable
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`channel, rather than identifying content in the “program signal.” POR 26-28.
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`Petitioner does not meaningfully dispute Patent Owner’s argument. Instead,
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`Petitioner doubles down on its argument, stating “Noreen teaches to use
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`‘identification information . . . sent on a subchannel’ of the program signal for
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`‘identification of the program signal and particular program to which the user is
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`listening.’” Reply 8 (emphasis omitted and added). Petitioner continues to rely on
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`the program signal without explaining how the program signal and the
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`identification information of the program signal relate to the assignable channel.
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`Petitioner next raises a new obviousness argument for the first time in
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`Reply—namely, that a “POSITA would have been motivated to ensure that the
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`particular ‘high quality digital program data’ in the program stream on Noreen’s
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`assignable channel that a user is listening to are uniquely identified so that, e.g., the
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`user could purchase the music which was most recently played.” Reply 9. This
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`obviousness argument was not raised in the Petition and should be disregarded by
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`the Board. See ScentAir Techs., LLC, Paper 22 at 52-53.
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`Even if the Board considers Petitioner’s new obvious argument (which it
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`should not), the argument fails to demonstrate that a POSITA would have found it
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`obvious to provide uniquely identifying data in Noreen. Petitioner cites to three
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`passages, two of which do not describe the purchasing process. See Reply 9 (citing
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`EX1005, 1:12-19, 13:24-32). The remaining passage does describe purchasing the
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`mostly recently played music. However, when read in the complete context, the
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`music most recently played is offered for sale in an advertisement that is currently
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`being played. See EX1005, 14:35-44 (“When an advertisement . . . inviting a
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`listener response is sent over the program signal the user has the option to respond
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`directly through the mobile terminal. The response, for example might be ordering
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`something which is being offered for sale. The music which was most recently
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`played and sent over the program signal, for example, might be offered for sale on
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`a compact disc.”) (emphasis added). The passage describes nothing more than a
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`user responding to an advertisement or other offer as it is being played on Noreen’s
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`device. Therefore, there is no need to uniquely identify the music for purchase
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`because the advertisement is already associated with the correct music.
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`b.
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`Noreen fails to teach “the second media content
`received discretely from the first media content”
`Patent Owner’s Response similarly pointed out that Noreen fails to teach or
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`suggest the “second media content received discretely from the first media
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`content.” POR 28-30. Patent Owner explained that by virtue of Element 9[b],
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`claim 9 is directed to those embodiments where the first media signal and second
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`media signal are separate and discrete. POR 29. In contrast, Noreen’s TDM and
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`assignable channels are received together and accordingly are not received
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`discretely as required by Element 9[b]. POR 29-30.
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`Petitioner’s Reply contends that Noreen’s disclosures of a TDM-IF signal
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`and assignable-IF signal with “two modules receiving IF signals discretely” (i.e., a
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`TDM demodulator and an assignable demodulator) are sufficient to meet the
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`“received discretely” limitation. Reply 10-11. Petitioner essentially argues that it
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`is sufficient for the system of claim 9 to receive one signal so long as each receiver
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`module receives its respective media content. But the claim already recites that the
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`receiver modules themselves are discrete, a point which Petitioner does not contest.
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`Petitioner’s interpretation therefore renders the claim language “second media
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`content received discretely from the first media content” redundant and
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`unnecessary. But that language cannot be read out of the claim and must be given
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`meaning. See Playtex Prods., Inc., 400 F.3d at 909-10.
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`As explained in Patent Owner’s Response, the ’081 patent discloses three
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`ways in which data is received at the system: (1) second media signal is integrated
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`with the first media signal; (2) the first media signal is received separate and
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`discretely from the second media signal; and (3) the first media signal is
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`intercepted during transmission and the second media signal is added to the
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`transmission. POR 29 (citing EX1001, 4:64-5:3, 10:63-11:1, 11:14-20).2 Whereas
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`claim 9 is directed to the second embodiment, Noreen is directed to the first.
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`2 That claim 9 is directed to one embodiment is not unusual. See Helmsderfer v.
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`Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) (“It is
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`often the case that different claims are directed to and cover different disclosed
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`embodiments. The patentee chooses the language and accordingly the scope of
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`his claims.”); PSN Illinois, LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166
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`An “integral” signal “can be combined into a single signal transmitted with,
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`for example, alternating information or data packets . . . over a single frequency or
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`physical connection,” and via “a communication method.” EX1001, 11:9-15. This
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`is what Noreen describes. In Noreen, the TDM channel and assignable channel are
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`received simultaneously through a single communication method at the RF
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`electronics in a single “received signal.” See EX1005, 6:34-36, 6:43-46, 6:64-67;
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`see also EX1005, 10:15-16. Petitioner does not dispute these points. See Reply 11
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`(quoting EX1005, 3:30-33). Therefore, Petitioner concedes that under the proper
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`understanding of the claim, the information received on a TDM channel and the
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`information received on the assignable channel in Noreen are not “received
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`discretely” as required by Element 9[b].
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`3.
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`Noreen fails to teach two receiver module outputs (“an
`output of the first receiver module or the second receiver
`module”) – Element 9[c]
`As explained in Patent Owner’s Response, Element 9[d] requires that both
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`media content are presented concurrently on one of the two available outputs: an
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`output of the first receiver module or an output of the second receiver module. See
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`(Fed. Cir. 2008) (“[C]ourts must recognize that disclosed embodiments may be
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`within the scope of other allowed but unasserted claims.”).
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`POR 34. Petitioner does not dispute that the claim requires two receiver modules
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`and two outputs, the “first and second outputs.” Reply 15. Petitioner instead
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`contends that one media content presented on the first output while simultaneously
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`presenting the second media content on the second output meets the limitation of
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`claim 9. This ignores the plain language of the limitation. Reply 14-15.
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`Petitioner asserts that Patent Owner’s expert, Dr. Moon, agrees that one
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`media content presented on one output and the second media content presented
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`concurrently on the second output meets the claim. See Reply 15 (citing EX1029,
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`70:20-71:5). However, Petitioner ignores the context of Dr. Moon’s testimony.
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`Dr. Moon’s testimony was offered in the context of the first two sentences of
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`paragraph 85 of his declaration. See EX1029, 70:20-21 (“Q: Okay. If you could
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`look at Paragraph 85 and read the first two sentences to yourself.”). Dr. Moon
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`explained that in paragraph 85 “Noreen does not teach or suggest simultaneous
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`presentation of both the first media content and the second media content on the
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`same output.” EX2016, ¶85. Having read this sentence as requested by counsel,
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`Dr. Moon then testified that “it” could be presented on one, on the other, or on
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`both. The “it” refers to both the first and second media content.
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`Petitioner attempts to distract the Board by misrepresenting Patent Owner’s
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`argument as requiring two devices. Reply 13-15. That is not Patent Owner’s
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`position. Patent Owner was merely responding to Petitioner’s contentions. Pet.
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`28-29. Petitioner contends that presenting Noreen’s music over the speakers and
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`the TDM data on the display is sufficient to meet the claim. Petitioner must,
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`therefore, consider the speakers and display to be a single “output” in order to meet
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`Element 9[c], because Element 9[c] requires presenting both media content (here,
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`music and TDM data) on a single output. POR 35-38. Accordingly, Petitioner
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`would need to identify an additional output to satisfy claim 9. While that
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`additional output could be on an additional device, such a device is not necessarily
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`required. Regardless, Noreen does not teach or suggest another output or a second
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`device.
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`Finally, Petitioner contends that claims 1 and 12’s recitation of “a user
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`device of the plurality of user devices” undercut Patent Owner’s positions on claim
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`construction. Not so. The phrase “plurality of user devices” in Claims 1 and 12
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`limit the number of devices present in the system. Claim 9 does not recite any
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`“devices,” nor does Patent Owner argue that two devices are required by the claim.
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`Claim 9 does recite two “modules,” where each module receives data “discretely”
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`from the other, and where each module has an output. Both claims have structural
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`limitations—on the number of devices, modules, and/or outputs. The claims are
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`different in scope, and the language in each must be respected.
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`4.
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`Noreen fails to teach “a response message having at least
`the uniquely identifying data specific to the second media
`content” – Element 9[e]
`For the same reasons provided in Section II.A.2.a, Noreen fails to teach or
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`suggest “a response message having at least the uniquely identifying data specific
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`to the second media content,” because Noreen does not disclose “uniquely
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`identifying data.”
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`B. Noreen alone does not render claim 15 obvious
`The Patent Owner Response explained that Petitioner failed to demonstrate
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`that Noreen renders dependent claim 15 obvious because it relied on two mutually
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`exclusive embodiments in Noreen for claim 9 and claim 15. POR 39-40. In
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`agreeing with Patent Owner, the Board noted: “Petitioner does not provide an
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`adequate explanation of how, on the one hand, it 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.” Institution Decision (“ID”), Paper 9 at 49. Nothing in Petitioner’s
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`Reply warrants a different conclusion.
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`Petitioner’s contrived scenario based on
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`two mutually exclusive
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`embodiments of Noreen is not supported by the evidence. Specifically, Petitioner
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`and its expert create an embodiment in Noreen where some identification
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`information is provided in the second embodiment. See Reply 17-18; see also
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`EX2017, 24:19-25:6; 29:2-33:17(reading “absence of identification information”
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`to refer to the absence of “a single piece of information”). But this scenario
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`directly contradicts the express language of Noreen that the second embodiment is
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`“in the absence of identification information.” EX1005, 15:20-21. The second
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`embodiment of Noreen does not suggest some identification information could be
`
`present. For example, Noreen does not say “in the absence of some identification
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`information” or “in the absence of all but one piece of identification information.”
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`The exact language of Noreen is “in the absence of identification information,”
`
`indicating the absence of all identification information in this particular
`
`embodiment.
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`Petitioner and its expert seek to rely on the “the program-carrier frequency
`
`of the program signal” as evidence that some identification information is provided
`
`in this embodiment. Reply 18. Patent Owner does not dispute that the program-
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`carrier frequency of the program signal is an enumerated item of identification
`
`information in the first embodiment. See EX1005, 13:23-26. However, Petitioner
`
`ignores that in the second embodiment the “controller 403 might determine the
`
`frequency of the program-carrier frequency of the program signal.” EX1005,
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`13
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`U.S. Patent No. 8,166,081
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`15:22-24 (emphasis added); see also EX1005, 13:1-5. In contrast, when the
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`identification information is received with the program signal, “the controller 403
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`processes identification information . . . .” EX1005, 12:45-48. In the embodiment
`
`where Noreen’s identification information is received in the program signal, the
`
`controller only processes the program-carrier frequency; whereas, in embodiments
`
`where the identification information is absent from the program signal, the
`
`controller determines the program-carrier frequency. These disclosures in Noreen
`
`suggest a distinction between the program-carrier frequency being part of the
`
`program signal in the first embodiment and not being part of the program signal in
`
`the second embodiment and, therefore, not being of the “first broadcast medium”
`
`as required by Element 9[a].
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`Moreover, even if the “program-carrier frequency” were a part of the
`
`program signal, this data alone is insufficient to “enable identification of a specific
`
`instance.” Noreen makes this clear when it provides that the controller
`
`“combine[s] that frequency information with the user-input signal, the time of the
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`user input signal, and information from determining the geographic position of the
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`mobile terminal 401.” EX1005, 15:24-27. Each additional requirement is
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`undisputedly not received with the program signal, but determined at the mobile
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`terminal, either by user input or geographical information. See EX1005, 13:43-44
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`
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`14
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`(“The user has the option of inputting to the mobile terminal 401 a user-input
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`signal.”).
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`Accordingly, Petitioner has failed to demonstrate that Noreen teaches or
`
`suggests the additional limitations of dependent claim 15.
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`III. GROUND 2: CLAIMS 9, 15, AND 23 ARE NOT OBVIOUS OVER
`NOREEN IN VIEW OF CROSBY
`A. Noreen in view of Crosby does not render claim 9 obvious
`1.
`Noreen
`in view of Crosby fails to teach “uniquely
`identifying data specific to at least the second media
`content” – Element 9[b]
`As explained in Patent Owner’s Response, Petitioner has not explained how
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`the identification information of Noreen’s program signal is attributed to the
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`assignable channel and, therefore, there is nothing in Noreen that can make use of
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`Crosby’s information. POR 41. As explained in Section II.A.2.a, Petitioner’s
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`Reply does not rectify this issue. Accordingly, Petitioner has failed to show that
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`Noreen in view of Crosby teaches or suggests “uniquely identifying data specific
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`to at least the second media content.”
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`2.
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`Noreen in view of Crosby fails to teach “a response message
`having at least the uniquely identifying data specific to the
`second media content” – Element 9[e]
`As in Element 9[b], Petitioner’s Reply does not rectify the issues with
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`Noreen’s failure to teach identification information and, therefore, Petitioner
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`15
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`cannot demonstrate a motivation to combine Crosby’s information with Noreen.
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`Accordingly, Petitioner cannot show that Noreen in view of Crosby teaches or
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`suggests “a response message having at least the uniquely identifying data specific
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`to the second media content.”
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`IV. GROUND 3: CLAIMS 10 AND 11 ARE NOT OBVIOUS OVER
`NOREEN IN VIEW OF CROSBY AND ELLIS-2002
`For the reasons provided in Section II.A for Ground 1, Noreen alone or in
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`combination with Crosby does not teach or suggest all the elements of independent
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`claim 9. Accordingly, claims 10 and 11 also are not rendered obvious by Noreen
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`in view of Crosby and Ellis-2002, as combined they do not disclose all the
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`elements of independent claim 9.
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`V. GROUND 4: CLAIMS 9-11, 15, AND 23 ARE NOT OBVIOUS OVER
`ELLIS-2005 ALONE
`A. Ellis-2005 alone does not render claim 9 obvious
`1.
`Ellis-2005 fails to teach “data enabling the identification of
`a specific instance of the first media content” – Element 9[a]
`Patent Owner’s Response demonstrated that Ellis-2005 did not disclose
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`Element 9[a] because Ellis-2005’s PIDs and PID maps did not enable identification
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`of a specific instance of the media content. POR 43-45.
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`Petitioner’s Reply asserts that Patent Owner’s argument is based on a
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`“narrow interpretation of Element 9[a] as requiring data that ‘distinguish[es]
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`16
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`between two or more instances of the same media content.’” Reply 20. As
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`explained in Section II.A.1, Patent Owner is not seeking to construe Element 9[a].
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`Rather, Patent Owner has explained and applied the plain and ordinary meaning of
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`“specific instance.” It is Petitioner who seeks modify the claim by reading out the
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`team “specific” from Element 9[a].
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`Petitioner reiterates its argument in the Petition that because PIDs
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`“distinguish between different tracks” and PIDs and PID maps “identify where the
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`data is within the stream,” a POSITA would have understood that PIDs and PID
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`maps meet the limitation of Element 9[a]. Reply 21. However, the “tracks” that
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`PIDs distinguish are not songs or musical tracks, but rather “video tracks, audio
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`tracks, and data or other suitable tracks.” EX1008, ¶41; see also EX2017, 37:19-
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`38:5 (Dr. Almeroth agreeing that “tracks” refers to video tracks, audio tracks, and
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`data or other suitable tracks); EX2016, ¶104. Ellis-2005 makes clear that the
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`tracks are portions of the digital channel conveying the media content. See
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`EX1008, ¶41 (“Each digital channel may include, for example, a number of tracks .
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`. . . The information in each track is transmitted in packets on the digital television
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`channel.”). Thus, as explained in Patent Owner’s Response, the PIDs and PID
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`maps “serve only to identify the track of the channel and the digital channel the
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`17
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`media arrives over” and are insufficient to enable identification of a specific
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`instance of content carried over the channel. POR 44.
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`Petitioner’s arguments about Dr. Moon’s analogy of lanes on a highway is a
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`misdirection. Petitioner conte
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