U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,688,028
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................... 2
`III.
`FEE AUTHORIZATION ............................................................................... 4
`IV. GROUNDS FOR STANDING ....................................................................... 4
`V.
`PRECISE RELIEF REQUESTED ................................................................. 4
`VI. THE CHALLENGED PATENT .................................................................... 5
`VII. PATENT PROSECUTION HISTORY .......................................................... 8
`VIII. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 11
`IX. PRIORITY DATE ........................................................................................ 11
`X.
`CLAIM CONSTRUCTION ......................................................................... 12
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES ............................................................................................. 12
`A.
`Curtin (Ex-1010) ................................................................................ 12
`B.
`Crosby (Ex-1006) ............................................................................... 13
`C.
`Alwadish (Ex-1011) ........................................................................... 15
`D. Koerber (Ex-1012) ............................................................................. 17
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS ................................................................................................... 18
`A. Grounds 1 and 2: Claims 11 and 13-20 are rendered obvious by
`Curtin (Ex-1010) alone or by Curtin in view of Crosby (Ex-
`1006); .................................................................................................. 19
`1.
`A POSITA would have been motivated to combine the
`teachings of Curtin and Crosby, and would have had a
`reasonable expectation of success in doing so. ........................ 19
`Independent Claim 11 .............................................................. 20
`Dependent Claims 13-20 .......................................................... 31
`
`2.
`3.
`
`
`
`
`
`i
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`B.
`
`C.
`
`Ground 3: Claims 11, 14-15, and 18 are rendered obvious by
`Alwadish (Ex-1011) ........................................................................... 39
`1.
`Independent Claim 11 .............................................................. 39
`2.
`Dependent Claims 14, 15, and 18 ............................................ 48
`Grounds 4 and 5: Claims 12 and 16 are rendered obvious by
`Alwadish alone or by Alwadish (Ex-1011) in view of Koerber
`(Ex-1012). ........................................................................................... 52
`1.
`A POSITA would have been motivated to combine the
`teachings of Alwadish and Koerber and would have a
`reasonable expectation of success in doing so. ........................ 52
`Dependent Claims 12 and 16 ................................................... 53
`2.
`XIII. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER GENERAL PLASTIC ........................................... 58
`XIV. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................. 60
`A. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted ....................................... 61
`Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision .................................... 61
`Investment in the parallel proceeding by the court and the
`parties ................................................................................................. 63
`D. Overlap between issues raised in the petition and in the parallel
`proceeding .......................................................................................... 64
`E. Whether the petitioner and the defendant in the parallel
`proceeding are the same party ............................................................ 66
`Other circumstances that impact the Board’s exercise of
`discretion, including the merits .......................................................... 66
`XV. CONCLUSION ............................................................................................. 67
`
`
`
`B.
`
`C.
`
`F.
`
`
`
`
`
`ii
`
`
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS1
`
`Ex-1001
`Ex-1002
`Ex-1003
`Ex-1004
`Ex-1005
`Ex-1006
`Ex-1007
`Ex-1008
`Ex-1009
`Ex-1010
`Ex-1011
`
`Ex-1012
`
`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`Ex-1018
`
`U.S. Patent No. 8,688,028
`Declaration of Dr. Kevin Almeroth
`Curriculum Vitae of Dr. Kevin Almeroth
`Prosecution History of U.S. Patent No. 8,688,028
`[INTENTIONALLY LEFT BLANK]
`U.S. Patent No. 6,628,928, Filed on December 10, 1999 (“Crosby)
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`Email from Albright Clerk, dated May 4, 2021
`U.S. Patent No. 6,925,489, filed on November 22, 1999 (“Curtin”)
`U.S. Patent No. 5,063,610, issued on November 5, 1991
`(“Alwadish”)
`European Patent No. 0 647 377, published on April 12, 1995
`(“Koerber”)
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[INTENTIONALLY LEFT BLANK]
`[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
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`[INTENTIONALLY LEFT BLANK]
`Plaintiff’s Preliminary Infringement Contentions, dated May 13,
`2021, including Claim Chart for ’028 Patent (“Infringement
`Contentions”)
`Petitioner’s Stipulation Letter to Patent Owner, dated July 22,
`2021
`U.S. Patent No. 5,948,061 A, issued Sept. 7, 1999 (“Merriman”)
`U.S. Patent No. 5,778,181 A, issued July 7, 1998 (“Hidary”)
`U.S. Patent Application Ser. No. 09/953,335
`
`Ex-1019
`Ex-1020
`
`Ex-1021
`
`Ex-1022
`Ex-1023
`Ex-1024
`
`
`
`iv
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Hyundai Motor America (“Petitioner”) respectfully requests inter partes
`
`review (“IPR”) of Claims 11-20 of U.S. Patent No. 8,688,028 (“the ’028 Patent”)
`
`(Ex-1001), currently assigned to StratosAudio Inc. (“Patent Owner”).
`
`The ’028 Patent relates to “a system that allows an individual user to
`
`respond to a data broadcast” by, for example, giving “a radio broadcast listener []
`
`the ability to conveniently purchase media content such as music or speech while
`
`listening to the radio.” Ex-1001, 2:54-58. The ’028 Patent purportedly addresses a
`
`shortcoming in the prior art where “users listening to the radio or watching
`
`television may particularly like a song or program that they would like to purchase
`
`. . . [but] the user has no way to purchase the media . . . . Instead, the user must
`
`write down or remember the identifying information and then go to a store or
`
`online retailer to purchase the media.” Ex-1001, 2:30-37. Further, “the
`
`information provided by the radio station may not be enough to sufficiently
`
`identify the song [because] the user may have the song title, but not the artist name,
`
`album name, or other necessary identifying information.” Ex-1001, 2:39-43. The
`
`’028 Patent states that it “solves these and other problems by providing a system
`
`that allows an individual user to respond to a data broadcast.” Ex-1001, 2:53-55.
`
`However, the prior art in this Petition demonstrates that Claims 11-20 of the
`
`’028 Patent disclose well-known and understood design choices in the art of
`
`1
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`broadcast technology, including ways to purchase music and other content while
`
`listening to a broadcast. The prior art also shows that a “person of ordinary skill in
`
`the art” (“POSITA”) understood how to use these design choices to address well-
`
`known user interaction objectives in data broadcast systems. Thus, Claims 11-20
`
`of the ’028 Patent were obvious over the prior art.
`
`The grounds presented in this Petition are more than reasonably likely to
`
`prevail, this Petition should be granted, a trial should be instituted, and the
`
`challenged claims should be cancelled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)): the real parties-in-
`
`interest are Hyundai Motor America and Hyundai Motor Company.
`
`Related Matters (37 C.F.R. § 42.8(b)(2)): Patent Owner has asserted the
`
`’028 Patent against (1) Hyundai Motor America in StratosAudio, Inc. v. Hyundai
`
`Motor America, No. 6:20-cv-01125; (2) Mazda Motor of America, Inc. in
`
`StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 6:20-cv-01126; (3)
`
`Subaru of America, Inc. in StratosAudio, Inc. v. Subaru of America, Inc., No. 6:20-
`
`cv-01128; (4) Volvo Cars of North America, LLC and Volvo Cars USA, LLC in
`
`StratosAudio, Inc. v. Volvo Cars of North America LLC et al., No. 6:20-cv-01129;
`
`and (5) Volkswagen Group of America, Inc. in StratosAudio, Inc. v. Volkswagen
`
`Group of America, Inc., No. 6:20-cv-01131, all of which are pending in the United
`
`2
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`States District Court for the Western District of Texas. Moreover, Petitioner
`
`Volkswagen Group of America, Inc. filed a petition for inter partes review of the
`
`’028 Patent in Volkswagen Group of America, Inc. v. StratosAudio, Inc., IPR2021-
`
`00716 (PTAB Apr. 16, 2021).
`
`Lead and Back-Up Counsel:
`• Lead Counsel: Ryan Yagura (Reg. No. 47,191), O’Melveny & Myers
`
`LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA 90071
`
`(Telephone: 213-430-6000; E-Mail: ryagura@omm.com).
`
`• Backup Counsel: Nicholas J. Whilt (Reg. No. 72,081), O’Melveny &
`
`Myers LLP, 400 South Hope Street, 18th Floor, Los Angeles, CA
`
`90071 (Telephone: 213-430-6000; E-Mail: nwhilt@omm.com), and
`
`Caitlin Hogan (Reg. No. 61,515), O’Melveny & Myers LLP, 7 Times
`
`Square, Times Square Tower, New York, NY 10036 (Telephone: 212-
`
`326-2000; E-Mail: chogan@omm.com), and Clarence A. Rowland
`
`(Reg. No. 73,775), O’Melveny & Myers LLP, 400 South Hope Street,
`
`18th Floor, Los Angeles, CA 90071 (Telephone: 213-430-6000;
`
`E-Mail: crowland@omm.com).
`
`Service Information: Petitioner consents to electronic service by email to
`
`StratosAudioHyundaiOMM@omm.com. Please address all postal and hand-
`
`delivery correspondence to lead counsel at O’Melveny & Myers LLP, 400 South
`
`3
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`Hope Street, 18th Floor, Los Angeles, CA 90071, with courtesy copies to the email
`
`address identified above.
`
`III. FEE AUTHORIZATION
`Pursuant to 37 C.F.R. § 42.15(a) and § 42.103(a), the PTO is authorized to
`
`charge any and all fees to Deposit Account No. LA500639.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’028 Patent is available for IPR, this Petition is
`
`timely filed, and Petitioner is not barred or estopped from requesting IPR on the
`
`grounds presented.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Petitioner requests cancellation of Claims 11-20 of the ’028 Patent under 35
`
`U.S.C. § 103 on the following grounds:
`
`•
`
`Grounds 1 and 2: Claims 11 and 13-20 are rendered obvious by U.S.
`
`Patent No. 6,925,489 (“Curtin”) alone or by Curtin in view of U.S. Patent No.
`
`6,628,928 (“Crosby”);
`
`•
`
`Ground 3: Claims 11, 14-15, and 18 are rendered obvious by U.S.
`
`Patent No. 5,063,610 (“Alwadish”); and
`
`•
`
`Grounds 4 and 5: Claims 12 and 16 are rendered obvious by
`
`Alwadish alone or rendered obvious by Alwadish in view of European Patent No.
`
`0 647 377 (“Koerber”).
`
`4
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`The Petition discusses rationales for each of the above-enumerated grounds
`
`and is supported by a declaration from Dr. Almeroth. Ex-1002.
`
`VI. THE CHALLENGED PATENT
`The ’028 Patent generally “relates to processing responses to a broadcast.”
`
`Ex-1001, 1:23-24; see also Ex-1002, ¶¶54-61. The ’028 Patent admits that “many
`
`broadcast radio services either transmit an ancillary data signal or are developing a
`
`method to do so.” Ex-1001, 1:29-32. Many prior art systems use this ancillary
`
`data signal to transmit the name of a song, however, according to the patent, there
`
`is no way for the user to “purchase the media at that point.” Id. 2:32-35. The
`
`patent purports to improve the prior art by “providing a system that allows an
`
`individual user to respond to a data broadcast” by, for example, giving the user
`
`“the ability to conveniently purchase media content such as music or speech while
`
`listening to the radio.” Ex-1001, 2:54-58.
`
`The ’028 Patent discloses a “broadcast response system” that sends “a data
`
`stream in combination with a broadcast signal for identifying music or speech
`
`content available for purchase.” Ex. 1001, 3:23-25; id. 5:64-6:2. In particular, the
`
`system in the ’028 Patent transmits broadcast “media content,” such as a song,
`
`along with ancillary “[d]ata such as song title and artist, author or publisher and the
`
`IP address for the location where the digital version of the content is stored.” Ex-
`
`5
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`1001, Abstract; id. 3:39-42. The system also allows users to “obtain media content
`
`such as music or speech while listening to the radio.” Id.
`
`For the reasons set forth below, Claims 11-20 are directed to predictable
`
`combinations of well-known prior art elements in broadcast response system as
`
`reflected, for example, in Claim 11. The dependent claims simply add minor
`
`functional or structural variations.
`
`11. A method for correlating media content identifying data with at least
`one broadcast segment received by a communication device, the
`method comprising:
`receiving a broadcast stream comprising the at least one broadcast
`segment and associated media content;
`receiving a data stream associated with the broadcast stream, the
`data stream comprising, at a minimum, the media content
`identifying data, wherein the media content identifying data
`comprises at least one element;
`extracting the media content identifying data from the data stream,
`associating each media content identifying data element with at
`least one of a plurality of media content;
`storing in an electronic memory of the communication device, at a
`minimum, media content identifying data elements into
`identifying data aggregates, each identifying data aggregate
`associated with at least one of the plurality of media content
`and the at least one broadcast segment, wherein the at least one
`broadcast segment is corollary to the at least one of the plurality
`of media content; and
`providing for presentation of at least a portion of the data elements
`stored in the electronic memory of the communication device,
`whereby the providing provides selective outputting, using an
`interface, of at least one of the following: the media content
`identifying data, the media content, the corollary broadcast
`segment, a temporal position of the corollary broadcast segment
`of the broadcast stream.
`
`6
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`As described in Claim 11, the combined device is straightforward. In plain
`
`terms, the ’028 Patent discloses sending song information like artist name, album
`
`title, etc. (“media content identifying data”) along with a song (“at least one
`
`broadcast segment”) to a radio (“a communication device”) as part of a radio
`
`program (“a broadcast stream”). Then, the song information is extracted, stored,
`
`and presented (e.g., by showing the song information on a car radio display).
`
`As explained in detail below, the ’028 Patent’s claims would have been
`
`obvious in view of the prior art.
`
`
`
`
`
`7
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`VII. PATENT PROSECUTION HISTORY
`The ’028 Patent file history is submitted as Ex-1004. The application
`
`leading to the ’028 Patent, application number 13/889,176, was filed on May 7,
`
`2013. It claims priority to a chain of applications, the earliest of which is
`
`application 09/953,335 filed September 13, 2001, which itself claims the benefit of
`
`provisional application, 60/232,333, filed September 13, 2000.
`
`A notice of allowance issued on November 8, 2013, about 6 months after the
`
`application was filed, with the examiner having issued no substantive office
`
`actions.
`
`None of the prior art references relied upon for the grounds of
`
`unpatentability addressed in this Petition were cited during the prosecution of
`
`application 13/889,176 that led to the ’028 Patent. Indeed, to the best of
`
`Petitioner’s knowledge, none of Curtin, Crosby, or Koerber were ever considered
`
`in the prosecution of any applications in the ’028 Patent’s priority chain. The
`
`patent number of one of the four references relied upon on this Petition, Alwadish,
`
`was included in an “Examiner’s search strategy and results” document, dated
`
`February 2, 2004, in application number 09/9953335. Ex-1024, 0410 (listing
`
`“5063610” among about 90 other patent numbers). This application is the great-
`
`grand parent application of the ’028 patent, which was prosecuted before a
`
`different examiner nearly a decade before the application leading to the ’028 was
`
`8
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`submitted. See Ex-1001, 1:6-18 (“Cross-Reference to Related Applications”); Ex-
`
`1024, 0001 (showing September 13, 2001 as the filing date of application number
`
`09/9953335). Other than in this “Examiner’s search strategy and results”
`
`document in the great-grand parent application, Alwadish does not appear
`
`anywhere else in the priority chain. Alwadish is not listed on the face of any patent
`
`in the priority chain, nor is it listed on any IDS, discussed in any office action, or
`
`substantively addressed in any rejection during the prosecution of any priority
`
`application.
`
`To the extent Patent Owner argues for a denial under section 325(d), that
`
`argument should be rejected for two reasons. First, under Advanced Bionics prong
`
`1,2 even if the patent number corresponding to Alwadish appearing on an otherwise
`
`unmarked search report in the great-grand parent application of the ’028 patent,
`
`examined by a different examiner, constitutes “consideration” of Alwadish in the
`
`’028 patent,3 there is a set of non-cumulative grounds based on Curtin, challenging
`
`9 of the 10 challenged claims. Curtin does not appear in any of the lengthy chain
`
`of applications leading to the ’028 patent. Thus, when considering the petition as a
`
`whole, section 325(d) is not sufficiently implicated that its statutory purpose is
`
`
`2 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (precedential).
`3 Significantly, Hyundai cannot find a case that suggests this degree of separation
`in time, priority applications, and examiners was a basis for an argument under
`section 325(d).
`
`9
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`undermined by instituting review here. See Samsung Electronics America, Inc. v.
`
`Kannuu PTY Ltd., IPR2020-00737, Paper 23 at 24-25 (PTAB Sept. 23, 2020)
`
`(denying section 325(d) challenge where 13 of 14 claims challenged by non-
`
`cumulative grounds).
`
`Second, even assuming that this this factual scenario meets Advanced
`
`Bionics prong 1, it was material error to not have addressed the ’028 Claims in
`
`view of the technical disclosures and teachings of Alwadish, which alone renders
`
`at least Claim 11 and a number of dependent claims obvious. See Advanced
`
`Bionics, Paper 6 at 10 (“[I]f the record of the Office’s previous consideration of the
`
`art is not well developed or silent, then a petitioner may show the Office erred by
`
`overlooking something persuasive under factors (e) and (f).”). The claims of the
`
`’028 are admittedly “different and possibly broader in scope than the claims
`
`pursued in the parent application(s).” Ex-1004, 0097. The “Examiner’s search
`
`strategy and results” document included in the application leading to the ’028
`
`Patent, entered nearly a decade later by a different examiner, does not include
`
`Alwadish. Id. 0132. Given the “different and possibly broader claim scope” of the
`
`’028 Patent and the strength of Alwadish alone in rendering claim 11 and a number
`
`of dependent claims obvious, to the extent it was even considered, it was a material
`
`error to not address the claims of the ’028 Patent in view of Alwadish. See also,
`
`Shure Inc. v. ClearOne, Inc., PGR2020-00079, Paper 14 at 29 (PTAB Feb. 16,
`
`10
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`2021) (finding one strong ground distinguishes other cases denying institution
`
`under 325(d), in the interest of “protecting the integrity of the patent system").
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art would have had a bachelor’s degree in
`
`electrical engineering, computer engineering, computer science, or a related field,
`
`and at least two years of experience in the communications- or broadcast-related
`
`industries, or the equivalent, with additional education substituting for experience
`
`and vice versa. Ex-1002, ¶¶34, 40-42.
`
`IX. PRIORITY DATE
`Petitioner takes no position on the proper priority date for each claim of the
`
`’028 Patent. In the concurrent litigation, Patent Owner claims priority to the
`
`earliest possible priority for the ’028 Patent: September 13, 2000, based on the
`
`filing date of provisional application 60/232,333. Ex-1020, 3. Petitioner thus
`
`relies on this date for purposes of the invalidity arguments presented in this
`
`Petition. Therefore, in determining what constitutes prior art, this Petition applies
`
`pre-AIA 35 U.S.C. § 102.4 Ex-1002, ¶54. All prior art references relied upon in
`
`this Petition art are prior art under this earliest possible priority date.
`
`
`4 If Patent Owner contends that the prior art should be analyzed under 35 U.S.C.
`§ 102 as amended by the AIA, based on an effective filing date after March 15,
`2013, Petitioner respectfully requests the right to address any issues raised by the
`AIA amendments to § 102.
`
`11
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`X. CLAIM CONSTRUCTION
`Petitioner interprets the claims of the ’028 Patent according to the Phillips
`
`claim construction standard. 37 C.F.R. § 42.100(b). At this time, Petitioner does
`
`not believe that any term requires explicit construction to resolve the issues
`
`presented in this Petition.5 Ex-1002, ¶¶32-33.
`
`XI. BRIEF DESCRIPTION OF THE APPLIED PRIOR ART
`REFERENCES
`A. Curtin (Ex-1010)
`Curtin, titled “Methods and apparatus for identification and purchase of
`
`broadcast digital music and other types of information” is U.S. Patent No.
`
`6,925,489, filed November 22, 1999 and issued August 2, 2005. Curtin qualifies
`
`as prior art under at least 35 U.S.C. §102(e), based on its filing date.
`
`Curtin “relates generally to systems for purchase and delivery of music or
`
`other information, and more particularly to techniques for allowing users to
`
`identify and purchase music or other information associated with a particular
`
`broadcast from a radio station.” Ex-1010, 1:8-14.
`
`
`5 Claim construction disclosures are still on-going in the district court. Petitioner
`respectfully reserves the right to revisit the constructions proposed in district court
`as necessary. Additionally, Petitioner will request leave to submit the district
`court’s claim construction order as soon as it becomes available, so that it is timely
`made of record in the proceeding and can be considered by the Board.
`
`12
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`In Curtin, “[i]dentification information is extracted from a current broadcast
`
`of a piece of music or other type of information of interest to a user, and stored in a
`
`memory or other storage device, in response to a user command.” Ex-1010,
`
`Abstract. “Examples of such identification information in the case of a piece of
`
`music include artist, title, album name, label, source, date and time associated with
`
`the current broadcast of the piece of music.” Ex-1010, 2:43-46. An example of
`
`such a system is illustrated in Fig. 3, copied below.
`
`
`
`Ex-1010, FIG. 3.
`
`B. Crosby (Ex-1006)
`Crosby, titled “Internet-Based Interactive Radio System for Use with
`
`Broadcast Radio Stations,” is U.S. Patent No. 6,628,928, filed on December 10,
`
`1999 and issued on September 30, 2003. Crosby qualifies as prior art under at
`
`least 35 U.S.C. § 102(e), based on its filing date.
`
`13
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`Crosby discloses an “interactive radio system” for a mobile device that
`
`allows subscribers to respond to displayed media content. See, e.g., Ex-006,
`
`Abstract. Specifically, the system allows subscribers to “select various
`
`advertisements, musical selections or the like while listening to the radio” using
`
`input mechanisms on their mobile unit (e.g., “INFO” and “ORDER” buttons) and
`
`“review information pertaining to the various program segments that have been
`
`selected” at a later time on the Internet, by way of unique program segment
`
`identifiers that are associated with specific instances of the media content received
`
`by the subscriber and stored in the system. Id. 3:59-4:19, 9:14-19, 12:60-66.
`
`Crosby discloses that “[w]hile listening to a radio broadcast,” subscribers
`
`may “transmit commands or other responsive signals” to network operations center
`
`110. Id. 6:4-9. Network operations center 110 includes program segment
`
`identification database 202, depicted in figure 5, which stores “a program segment
`
`ID, the date and time of broadcast of the program segment, and the broadcaster ID
`
`for the broadcaster of the segment.” Id. 9:14-19.
`
`
`
`14
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`Id. Fig 5. Once the selected program segment is identified, the “program segment
`
`ID” is forwarded to program segment information unit 212, “which accesses the
`
`vendor information database using the program segment ID to extract information”
`
`pertinent to the segment, including, e.g., “web site addresses associated with the
`
`vendor as well as the names of goods or services offered by the vendor” such as
`
`song names and performers. Id. 10:7-15. This information as well as the date and
`
`time of day of the broadcast are forwarded to “subscriber interface unit 214, which
`
`also receives the subscriber ID” by way of a “subscriber identifier signal received
`
`by receiver 206.” Id. 10:15-20, 10:31-35. The feedback unit “then provides the
`
`vendor information to the subscriber either within a web page accessible by the
`
`subscriber and/or within individual e-mail messages transmitted directly to an
`
`email account of the subscriber.” Id. 10:20-24; Ex-1002, ¶¶68-71.
`
`C. Alwadish (Ex-1011)
`Alwadish, titled “Broadcasting system with supplemental data transmission
`
`and storage” is U.S. Patent No. 5,063,610, issued on November 5, 1991. Alwadish
`
`qualifies as prior art under at least 35 U.S.C. § 102(b), based on its publication
`
`date.
`
`Alwadish discloses a “technique for broadcasting program material together
`
`with encoded items of information pertaining to the program material such as the
`
`15
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`title of a broadcast musical piece, the artist name, catalog number, and the like.”
`
`Ex-1011, Abstract.
`
`Alwadish notes that listeners may have difficulty identifying the song they
`
`are listening to. Ex-1011, 1:21-46 (“As far as is known, no existing or proposed
`
`commercial broadcasting system affords the listener an opportunity to identify, by
`
`means of supplemental information encoded in the broadcast carrier signal, items
`
`such as the artist and title of a musical selection simultaneously with its
`
`broadcast.”). Like the ’028 Patent, filed years later, Alwadish discloses a way to
`
`“provide a broadcasting technique that allows listeners safely to record selected
`
`auxiliary information transmitted during a broadcast.” Ex-1011, 2:16-20.
`
`For example, Alwadish describes a receiver with a series of LCD display
`
`panels. One such display “allows for display of up to 3 lines of alphanumeric
`
`text,” of 16 characters each. Ex-1011, 3:31-46. The alphanumeric display can
`
`provide the artist’s name and a corresponding record or tape catalogue number to
`
`facilitate the purchase of the musical piece by a listener.” Ex-1011, 3:49-54.
`
`Figures 1 and 2, copied below, illustrate these embodiments.
`
`16
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`
`
`
`Ex-1011, Figs. 1 and 2. Upon pressing a button 34, the user can store this
`
`information for later retrieval. Id. 4:20-29.
`
`D. Koerber (Ex-1012)
`Koerber, titled “Process and device for identifying a programme
`
`information” is European Patent No. 0 647 377, first published in German on April
`
`12, 1995. Koerber qualifies as prior art under at least 35 U.S.C. § 102(b), based on
`
`17
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`its publication date. A certified translation of Koerber is included in Ex-1012,
`
`along with and affidavit of translation.
`
`Koerber “concerns a process for identifying a broadcasting program that
`
`contains sound and/or image information.” Ex-1012, 1:3-5. Koerber notes that
`
`listeners may have difficulty identifying the song they are listening to. Ex-1012,
`
`1:8-18 (“The already rare title announcements are often insufficient or difficult to
`
`remember; the announcements are also often not noticed, or missed.”).
`
`To address this problem, Koerber discloses transmitting “identification
`
`information allocated to the broadcasting program [that] enables a listener or
`
`operator to identify the music title in a simple and reliable manner.” Ex-1012,
`
`1:42-45. The identification information “offers the option of allocating a specific
`
`code to each broadcasting program or music title . . . , [which] may be a binary
`
`number whose length results from the number of all broadcasting programs or
`
`music titles that are possible within a foreseeable time.” Ex-1012, 2:27-34.
`
`XII. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS
`The ’028 Patent contains 20 claims. Independent Claim 11, challenged here,
`
`is directed to a method. Challenged Claims 12-20 depend on Claim 11. As
`
`explained below, an element-by-element analysis of the challenged claims
`
`demonstrates that Claims 11-20 are disclosed or taught by the prior art. Ex-1002,
`
`¶75.
`
`18
`
`

`

`U.S. Patent No. 8,688,028
`Petition for Inter Partes Review
`A. Grounds 1 and 2: Claims 11 and 13-20 are rendered obvious by
`Curtin (Ex-1010) alone or by Curtin in view of Crosby (Ex-1006);
`1.
`A POSITA would have been motivated to combine the
`teachings of Curtin and Crosby, and would have had a
`reasonable expectation of success in doing so.
`In addition to the reasons set out below with respect to specific claim
`
`elements, a POSITA would have been motivated to combine the teachings of
`
`Curtin and Crosby, and would have a reasonable expectation of success in doing so
`
`because each are from the same field of use and relate to the same well-known
`
`issues, namely interactive radio systems that uniquely identify broadcasts using
`
`information transmitted with the broadcast and allow for users to indicate
`
`selections for purchase. See Ex-1010, 1:8-12; Ex-1006, Abstract.
`
`A POSITA seeking to solve well-known interactive streaming and/or
`
`targeted content issues in media enhancement technologies would have known of
`
`and consulted each of the