Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
`
`Case No. IPR2021-01303
`Patent No. 8,688,028
`_____________
`
`
`
`DECLARATION OF DR. KEVIN C. ALMEROTH IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,688,028
`
`
`
`Petitioner Hyundai Ex-1026, 0001
`
`
`U.S. Patent No. 8,688,028
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
`
`Case No. IPR2021-01303
`Patent No. 8,688,028
`_____________
`
`
`
`DECLARATION OF DR. KEVIN C. ALMEROTH IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,688,028
`
`
`
`Petitioner Hyundai Ex-1026, 0001
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`DR. HART ATTEMPTS TO RECAST THE ALLEGED
`INVENTION AS REQUIRING “DATA MINING” ..................................... 2
`III. CLAIM CONSTRUCTION ........................................................................... 3
`A.
`“broadcast segment” (claims 11, 16, and 17) ....................................... 3
`B.
`“media content” (claims 11 and 17) ..................................................... 8
`C.
`Other Limitations ................................................................................. 8
`IV. CURTIN ALONE (GROUND 1) AND CURTIN IN VIEW OF
`CROSBY (GROUND 2) INVALIDATE CLAIMS 11 AND 13-20 ............ 10
`A.
`Curtin discloses or teaches all elements ............................................. 12
`B.
`Curtin in view of Crosby discloses or teaches all elements
`challenged in Dr. Hart’s Declaration ................................................. 21
`V. ALWADISH ALONE (GROUNDS 3-4) AND ALWADISH IN
`VIEW OF KOERBER (GROUND 5) INVALIDATE CLAIMS 11,
`12, 14-16, AND 18 ....................................................................................... 26
`A. Alwadish discloses or teaches all elements challenged in Dr.
`Hart’s Declaration .............................................................................. 27
`Alwadish in view of Koerber discloses or teaches all elements
`challenged in Dr. Hart’s Declaration ................................................. 33
`VI. CONCLUSION ............................................................................................. 34
`
`
`
`B.
`
`
`
`
`
`i
`
`
`
`Petitioner Hyundai Ex-1026, 0002
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`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.
`
`ii
`
`Petitioner Hyundai Ex-1026, 0003
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`[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
`Declaration of Bradley M. Berg In Support of Petitioner’s Motion
`for Pro Hac Vice Admission Pursuant to 37 C.F.R. §42.10(C)
`Reply Declaration of Dr. Kevin Almeroth
`StratosAudio, Inc. v. Hyundai Motor Am., No. 6:20-cv-01125, Dkt.
`No. 79 (W.D.Tex. Dec. 15, 2021) (“Order”)
`[INTENTIONALLY LEFT BLANK]
`Transcript of the Deposition of Dr. John C. Hart
`StratosAudio, Inc. v. Hyundai Motor Am., No. 6:20-cv-01125, Dkt.
`No. 55 (W.D.Tex. Dec. 15, 2021) (“StratosAudio Claim
`Construction Brief”)
`
`Ex-1019
`Ex-1020
`
`Ex-1021
`
`Ex-1022
`Ex-1023
`Ex-1024
`Ex-1025
`
`Ex-1026
`Ex-1027
`
`Ex-1028
`Ex-1029
`Ex-1030
`
`
`
`iii
`
`Petitioner Hyundai Ex-1026, 0004
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`I.
`
`INTRODUCTION
`1.
`I, Dr. Kevin C. Almeroth, declare as follows:
`
`2.
`
`I am the same Dr. Kevin C. Almeroth that submitted a Declaration in
`
`this proceeding (Ex-1002). I submit this Reply Declaration on behalf of Hyundai
`
`Motor America (“Hyundai” or “Petitioner”) in response to the Declaration of Dr.
`
`John C. Hart (Ex-2020) (“Hart Decl.”) on behalf of Patent Owner StratosAudio,
`
`Inc. (“StratosAudio” or “Patent Owner”).
`
`3.
`
`In preparation for this Reply Declaration, I have considered the
`
`materials discussed in my Declaration (Ex-1002) and this Reply Declaration,
`
`including, for example, U.S. Patent No. 8,688,028 (“the ’028 Patent”) (Ex-1001),
`
`the references cited by the ’028 Patent, the prosecution history of the ’028 Patent,
`
`various background articles and materials referenced in my Declaration (Ex-1002)
`
`and this Reply Declaration, the prior art references identified in my Declaration
`
`(Ex-1002) and this Reply Declaration, the Declaration of Dr. John C. Hart (Ex-
`
`2020) including the references cited therein, and the transcript of the Deposition of
`
`John C. Hart, Ph.D. (Ex-1029). In addition, my opinions are further based on my
`
`education, training, experience, and knowledge in the relevant field.
`
`4.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work, which is $750 per hour. My compensation is in no way contingent on
`
`the nature of my findings, the presentation of my findings in testimony, or the
`
`1
`
`Petitioner Hyundai Ex-1026, 0005
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`outcome of this or any other proceeding. I have no other financial interest in this
`
`proceeding.
`
`5.
`
`I reiterate the Background and Qualifications, Relevant Legal
`
`Standards, Level of Ordinary Skill in the Art, and Technological Background
`
`sections of my Opening Declaration (Ex-1002), as if fully set forth herein. Ex-
`
`1002, ¶¶5-29, 31-42, and 44-53.
`
`6.
`
`For the following reasons, it remains my opinion that: (1) Claims 11
`
`and 13-20 are rendered obvious by Curtin (Ex-1010) alone or by U.S. Patent No.
`
`6,925,489 (“Curtin”) in view of U.S. Patent No. 6,628,928 (“Crosby”) (Grounds 1
`
`and 2, respectively); (2) Claims 11, 14-15, and 18 are rendered obvious by U.S.
`
`Patent No. 5,063,610 (“Alwadish”) (Ground 3); and (3) Claims 12 and 16 are
`
`rendered obvious by Alwadish alone or by Alwadish in view of European Patent
`
`No. 0 647 377 (“Koerber”) (Grounds 4 and 5, respectively). I reiterate the
`
`corresponding sections of my Opening Declaration for Grounds 1-5.
`
`II. DR. HART ATTEMPTS TO RECAST THE ALLEGED INVENTION
`AS REQUIRING “DATA MINING”
`7.
`Throughout his Declaration, Ex-2020, Dr. Hart applies an unrecited,
`
`unstated requirement for “data mining.” As explained below, data mining appears
`
`nowhere in the claims and, at most, is one of several potential objectives of the
`
`alleged invention. See Ex-1001, 3:9-15 (listing multiple objectives).
`
`2
`
`Petitioner Hyundai Ex-1026, 0006
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`This faulty premise underlies many of Dr. Hart’s opinions, such as his
`
`8.
`
`conclusion that “the ‘aggregates’ of Claim 11 are referring to the inclusion of the
`
`additional data regarding the purchase that would be useful for the specification’s
`
`data mining” (Ex-2020, ¶42), or that “broadcast segment” means “a discretely
`
`identifiable portion of programming as broadcasted” (Ex-2020, ¶49).
`
`9.
`
`But Claim 11 and its dependents do not touch on the server side where
`
`data mining is described in an embodiment in the specification as being performed
`
`to collect information regarding purchasing activity. See, e.g., Ex-1001, 8:41-44
`
`(“The data collected through ‘data mining’ of sales transactions can be sold to
`
`companies interested in tracking demographic information and music sales.”),
`
`10:37-44. I disagree with Dr. Hart’s opinions and proposed constructions because
`
`they rest on this (and other) unsustainable premises.
`
`III. CLAIM CONSTRUCTION
`10. Dr. Hart proposed limiting constructions for several claim terms, as
`
`described below. I understand that Dr. Hart did not consider any alternative
`
`constructions in opining that the prior art does not render obvious the challenged
`
`claims. Ex-1029, 150:1-5.
`
`A.
`11.
`
`“broadcast segment” (claims 11, 16, and 17)
`I agree with the Board’s preliminary construction of “broadcast
`
`segment” as “a distinguishable piece or portion of a broadcast stream, such as an
`
`3
`
`Petitioner Hyundai Ex-1026, 0007
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`individual song, speech, or video.” Institution Decision, Paper 9 (“DI”), 20.2 In
`
`my opinion, this construction comports with the plain meaning of “broadcast
`
`segment”: a “segment” of a “broadcast.”
`
`12.
`
`In my opinion, if Dr. Hart’s proposed construction were adopted, a
`
`POSITA would understand that it would result in a much narrower claim scope by
`
`requiring that each occurrence of a portion of broadcast be uniquely identifiable.
`
`Ex-2020, ¶49 (explaining that if the same song were played two or more times,
`
`each instance must be identifiably different). Since the claim language contains no
`
`such express or implied requirement, I do not believe it is consistent with how a
`
`POSITA would read this claim in view of the specification. In fact, I note that by
`
`importing “discrete[] identifiab[ility]” into independent claim 11, dependent claim
`
`16’s narrow scope requiring “unique identification” would be captured.
`
`13. The specification also contradicts Dr. Hart’s proposed construction.
`
`Ex-1001, 5:64-6:16. Similar to claim 16, the only two instances involve
`
`“assign[ing] a unique identifier to each specific broadcast segment or song.” Id.,
`
`5:64-6:2. Neither suggests that “broadcast segment,” by itself, is “discretely
`
`identifiable.”
`
`
`2 I understand that the Board also adopted this construction in IPR2021-00712
`(“Volkswagen IPR”). Ex-2019, 20-21.
`
`4
`
`Petitioner Hyundai Ex-1026, 0008
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`14. Dr. Hart opines that “broadcast segment” must include unique
`
`identifiability because “data mining” “requires understanding not only the content
`
`purchased but also the particular portion of programming as broadcasted that
`
`triggered the purchase (for example, which portion of the day, or programming
`
`apportioned blocks of the day, produced the most response activity).” Ex-2020,
`
`¶50; see also id., ¶¶41-43, 77, 90. But a POSITA would not look to the “data
`
`mining” embodiment to construe “broadcast segment,” which, within claim 11, is
`
`used to describe something that is transmitted to a listener. By contrast, “data
`
`mining” is described as occurring at the server after the listener has received the
`
`broadcast and purchases the media to track such activity. See, e.g., Ex-1001, 3:9-
`
`15; 3:52-55; 8:41-46; 8:59-65; 9:34-37; 10:42-44. I understand that when asked,
`
`Dr. Hart declined to offer any opinion as to where “data mining” occurs in the
`
`system described with the closely related ’307 Patent or whether it was required to
`
`accomplish various objectives of the patent. Ex-1029, 142:9-143:19, 146:8-19. In
`
`my opinion, a POSITA would not have read claim 11 as having any relationship to
`
`“data mining,” as the concept is described in the ’028 Patent.
`
`15. Even if “broadcast segment” were construed according to the “data
`
`mining” embodiment, a POSITA would have understood that there is no need to
`
`import a requirement for discrete identifiability. Rather, as Dr. Hart admitted,
`
`5
`
`Petitioner Hyundai Ex-1026, 0009
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`“data mining” is simply a generic term for gathering data and does not require
`
`gathering any particular type of data:
`
`“Q Does the ’307 patent place any restrictions on what type of data is
`
`mined? A I don’t see any restrictions. It is just describing the benefit of
`
`aggregating data or data mining for these purposes. . . . Q So what type of
`
`data is mined? A . . . It was all data. It was data from unexpected
`
`places. . . . Q So, in other words, gathering and aggregating any type of data
`
`would constitute data mining as a person of skill in the art would understand
`
`that term in -- at the time of the ’307 patent? A I think it would just be plain
`
`and ordinary meaning of data mining.”
`
`Ex-1029, 133:21-136:12. I agree. So simply tracking the demographics or number
`
`of users that purchased a specific song would be sufficient. Id. Further, as a fairly
`
`broad term, and without specific requirements on what data is mined or how that
`
`data should be analyzed, many different types of metrics can be used.
`
`16. For example, it might be useful to understand the context as to where
`
`a user was located when the purchase was made, so data such as the geographic
`
`location of the user and the song purchased would be used for data-mining, neither
`
`of which require discrete identifiability. A POSITA would have understood that
`
`the same is true of all sorts of data that might be “mined” to provide useful
`
`correlations and information. Indeed, discrete identifiability would be required for
`
`6
`
`Petitioner Hyundai Ex-1026, 0010
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`only a narrow subset of such information and, as mentioned by Dr. Hart, there is
`
`no indication in the ’028 Patent that “data mining” should be restricted to just those
`
`types of data requiring discrete identifiability. Therefore, Dr. Hart’s suggestion
`
`that discrete identifiability would necessarily be required, and therefore, an implicit
`
`requirement of the claims is a wholly unrealistic interpretation of the claims.
`
`17. A POSITA would not find Dr. Hart’s criticisms of the Board’s
`
`construction convincing. For example, Dr. Hart opines element 11[e]’s inclusion
`
`of “temporal position of the corollary broadcast segment of the broadcast stream”
`
`can distinguish different occurrences of a broadcast segment, even when
`
`containing the same media content. Ex-2020, ¶¶51-52. A POSITA would have
`
`understood that this is just one possible identifier from a list “of at least one of
`
`following” (Ex-1001, 15:55) possible identifiers. “Temporal position’s” inclusion
`
`in this list would merely indicate to a POSITA that the time a broadcast segment
`
`was received may be used to identify it in lieu of other identifiers. Ex-1001, 15:55.
`
`Such a technique, for example, is fundamental to distinguishing between different
`
`time slots in a system using Time Division Multiplexing (TDM). Finally, Dr.
`
`Hart’s assertion that broadcast segment “could correspond to a portion of a song,
`
`speech or video” has no intrinsic support. See Ex-2020, ¶52. Indeed, Dr. Hart
`
`admitted that he was aware of no instance where a portion of a song, speech, or
`
`video was uniquely identified. Ex-1029, 160:11-162:4.
`
`7
`
`Petitioner Hyundai Ex-1026, 0011
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`B.
`18.
`
`“media content” (claims 11 and 17)
`I do not disagree with the Board’s construction of “media content” as
`
`“any form of media content that, when translated from signal-form in which it is
`
`transmitted, is discernible to humans.” Ex-2020, ¶54.
`
`C. Other Limitations
`19. The Board in its Institution Decision (Paper 9, “DI”) also encouraged
`
`the parties to address the interpretation of several terms. DI, 20.
`
`1.
`
`“a receiving a broadcast stream comprising the at least one
`broadcast segment and associated media content” (claim 11)
`I understand that in the Volkswagen IPR for the ’307 Patent, the
`
`20.
`
`Board concluded that “and” in the context of this claim term applied to the
`
`broadcast stream itself such that it must comprise a “broadcast segment” and
`
`“associated media content.” Ex-2019, 22. The Board stated, “Petitioner’s
`
`proposed interpretations read the claim language as encompassing the same
`
`underlying content (e.g., a song) in two different forms – the ‘broadcast segment’
`
`being a distinguishable piece of portion of the broadcast stream itself, which is in
`
`signal form, and the ‘media content’ being the content after it has been translated
`
`from signal-form into a form that is discernible to humans” and found that reading
`
`consistent with the specification. Id., 22-23. I agree that the Board’s reasoning is
`
`consistent with how a POSITA would have understood the plain and ordinary
`
`meaning of this claim term in view of the specification.
`
`8
`
`Petitioner Hyundai Ex-1026, 0012
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`2.
`“associating/associated” (claims 11, 15, and 18)
`21. A POSITA would understand that in the context of the claims, the
`
`term “associating/associated” should be accorded its plain meaning, which merely
`
`indicates some relationship between two (or more) items. Indeed, a POSITA
`
`would have understood this to be a broad term as there are many different ways in
`
`which associations can exist and the specification does not offer any meaningful
`
`restriction. As described in my opening declaration and below, Petitioner’s
`
`grounds meet any reasonable plain meaning of “associating/associated.”
`
`Nevertheless, Dr. Hart’s construction of ‘associated’ to mean two or more items
`
`are ‘linked via an implemented link’ does not comport to how a POSITA would
`
`have understood the term. Ex-2020, ¶¶58-59.
`
`22. The ’028 Patent specification does not support Dr. Hart’s
`
`construction, and a POSITA would not have understood “associating/associated”
`
`as used in the claims to be so narrow. Dr. Hart explains that in his opinion,
`
`“implementing a link” requires forming a link that “is formal, intentional and
`
`requires implementation by claim 11.” Ex-2020, ¶59. This is not supported by the
`
`’028 Patent or any dictionaries or other contemporaneous extrinsic evidence. In
`
`my opinion, a POSITA would have considered his proposed construction to be
`
`vague and undefined and ultimately would see it as creating new requirements into
`
`the claims. Dr. Hart confirmed that this language is not found anywhere in the
`
`9
`
`Petitioner Hyundai Ex-1026, 0013
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`specification, file history, or extrinsic evidence. Ex-1029, 166:18-167:15. Indeed,
`
`this construction—which requires a narrow type of association, an affirmative step
`
`of implementing a link, and the intent to create the link—is contrary to the “plain
`
`and ordinary meaning” position StratosAudio itself took in the district court. Ex-
`
`1027, 1.
`
`3.
`“corollary” (claim 11)
`23. A POSITA would have understood that the prior art in this petition
`
`teaches this term under any reasonable understanding of “corollary.” Because
`
`there does not appear to be a dispute between the parties as to this term vis-à-vis
`
`the prior art, I have applied Dr. Hart’s proposed construction of “correlated.” Ex-
`
`2020, ¶60.
`
`IV. CURTIN ALONE (GROUND 1) AND CURTIN IN VIEW OF
`CROSBY (GROUND 2) INVALIDATE CLAIMS 11 AND 13-20
`24. Contrary to Dr. Hart’s allegations, my Opening Declaration identifies
`
`how all elements of the Challenged Claims are met by Curtin (Ex-1010), as
`
`recognized by the DI. For convenience, I have summarized mappings to key
`
`elements in Table 1:
`
`10
`
`Petitioner Hyundai Ex-1026, 0014
`
`
`
`Limitation
`
`Mapping
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`Support
`
`“broadcast stream”
`(11[a])
`
`“broadcast
`segment” (11[pre],
`11[a])
`
`“[A] hybrid in-band on-channel HIBOC)
`FM signal having an analog FM host and
`one or more digital sidebands.” Ex-
`1010, 3:26-40.
`
`Includes at least the broadcast segment
`and associated media content, as
`described below, consistent with the
`Board’s preliminary construction. See
`Section III.C.1.
`
`“Digital audio information” which
`corresponds to “e.g., a particular song or
`other piece of music.” Ex-1010, 3:55-
`61. See also, id., Abstract (“current
`broadcast of a piece [of] music or other
`type of information.”), 3:26-40.
`
`Ex-1002,
`¶¶82-84
`
`Ex-1002,
`¶¶82-84
`
`
`“associated media
`content” (11[a])
`
`The analog audio output (e.g., song) as
`converted from “digital audio
`information.” Ex-1010, 3:55-61.
`
`Ex-1002, ¶83,
`Ex-2018,
`59:14-60:15.
`
`“data stream”
`(11[b])
`
`“media content
`identifying data”
`(11[pre], 11[a])
`
`Ex-1002,
`¶¶82, 84
`
`Ex-1002,
`¶¶82-83, 85
`
`Information encoded in the audio
`bitstream, including at least “media
`content identifying data,” (11[pre]-[a])
`as described below. Ex-1010, 2:43-46,
`3:64-4:2.
`
`“Identification information,” which is
`transmitted along with a broadcast piece
`of music and includes information such
`as “artist, title, album name, label,
`source, date and time associated with the
`current broadcast of the piece of music.”
`Ex-1010, 2:43-46, 3:64-4:2.
`Table 1
`
`11
`
`Petitioner Hyundai Ex-1026, 0015
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`
`A. Curtin discloses or teaches all elements
`1.
`Element 11[pre]: A method for correlating media content
`identifying data with at least one broadcast segment
`received by a communication device, the method
`comprising:
`25. Dr. Hart does not dispute that Curtin teaches a system in which media
`
`content identifying data, such as the title of a song is included with a radio
`
`broadcast. Ex-2020, ¶63 (citing Ex-1010, 3:65-4:5); Ex-1029, 36:15-22, 37:21-23.
`
`Nor does Dr. Hart dispute that this information is correlated with the song being
`
`broadcast, such that a user can purchase the song. Ex-2020, ¶¶63-64 (citing Ex-
`
`1010, 4:8-18; 5:6-8; 6:13-16); Ex-1029, 36:2-37:8, 39:4-23. Dr. Hart also does not
`
`dispute that Curtin teaches a digital audio broadcast receiver and receiving antenna
`
`to receive the broadcast. Ex-2020, ¶¶61-62 (citing Ex-1010, 3:26-28; 3:51-63, Fig.
`
`1); Ex-1029, 37:9-13.
`
`26. The only disputed issue is whether Curtin teaches that a “broadcast
`
`segment” is received. Dr. Hart opines that (1) I failed to identify a “broadcast
`
`segment” in my Opening Declaration, (2) Curtin does not disclose a “broadcast
`
`segment” under Dr. Hart’s proposed construction, and (3) Curtin’s identification
`
`information “falls short of satisfying the ’028’s invention” related to “data
`
`mining.” Ex-2020, ¶¶72-77. In my opinion, a POSITA would not understand that
`
`that the claims are distinguishable from Curtin on these bases.
`
`12
`
`Petitioner Hyundai Ex-1026, 0016
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`Dr. Hart ignores my Opening Declaration’s clear
`mapping of “broadcast segment”
`27. As shown in Table 1, Curtin’s “digital audio information” which
`
`a.
`
`corresponds to “e.g., a particular song or other piece of music broadcast by the
`
`system” is the claimed “broadcast segment.” Ex-1010, 3:55-61. This mapping is
`
`consistent with the Board’s preliminary construction of “broadcast segment”
`
`because it is “a distinguishable piece or portion of a broadcast stream, such as an
`
`individual song, speech, or video.” Accordingly, Curtin’s “digital audio
`
`information” is a distinguishable piece or portion of a broadcast stream as required
`
`by the preliminary construction. Indeed, both the “digital audio information”
`
`described by Curtin and the preliminary construction use the example of a “song.”
`
`Dr. Hart does not offer any opinion that Curtin does not disclose a “broadcast
`
`segment” under this construction. Ex-1029, 109:16-19 (“Q: Did you form an
`
`opinion as to whether or not Curtin disclosed a broadcast segment under the
`
`Board's claim construction? A No.”).
`
`b.
`
`Curtin discloses the preamble even under Dr. Hart’s
`overly-limiting construction
`28. Curtin discloses transmitting media content identifying data
`
`(“identification information”) along with a “broadcast of a piece of music,”
`
`wherein “such identification information in the case of a piece of music include[s]
`
`artist, title, album name, label, source, date and time associated with the current
`
`13
`
`Petitioner Hyundai Ex-1026, 0017
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`broadcast of the piece of music.” Ex-1010, 2:43-46.3 With this information, each
`
`instance of a song being broadcast would be distinguishable based on date and time
`
`of airing, even if the same song is played multiple times.
`
`29. Dr. Hart attempts to dismiss this disclosure by stating that “[a]
`
`POSITA would have would have understood Curtin to teach that this identification
`
`information was intended to identify a song, and specifically a particular version of
`
`a song, rather than the broadcast segment that delivered the song to the listener
`
`where multiple broadcasts of a song in Curtin would produce identification of that
`
`single song as opposed to multiple broadcast segments.” Ex-2020, ¶74; Ex-1029,
`
`131:24-132:8. I do not agree because the claims, even with Dr. Hart’s proposed
`
`construction, simply do not limit why the broadcast segment is distinctly
`
`identifiable, only that it is. A POSITA would have understood that the data and
`
`time is “data that enables unique identification,” as Dr. Hart opines in his own
`
`declaration. Ex-2020, ¶76. Moreover, in asserting what Curtin supposedly
`
`“intended,” StratosAudio relies only on Dr. Hart’s declaration. Ex-2020, ¶74.
`
`Curtin is not so limited. For example, Curtin notes that the user may want to track
`
`the specific “time of the broadcast.” Ex-1010, Curtin, 4:48-54; see also id., 3:64-
`
`
`3 I have added all emphasis to quotes throughout this declaration, unless otherwise
`noted.
`
`14
`
`Petitioner Hyundai Ex-1026, 0018
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`4-2. Hence, Curtin discloses that each broadcast of a segment is discretely
`
`identifiable, even if the same song is broadcasted multiple times.
`
`c.
`
`The use of “broadcast segment” does not limit the
`claim to “data mining”
`30. Dr. Hart opines that the prior art must “satisfy the ’028’s invention
`
`that assigns a unique identifier to each specific broadcast segment that can be
`
`tracked for the purposes of aggregating data or ‘Data Mining.’” Ex-2020, ¶77
`
`(internal citations and quotation omitted). Again, this “requirement” is found
`
`nowhere in the claims and, as discussed in Section II, its inclusion is wholly
`
`unsupported.
`
`2.
`
`Element 11[a]: receiving a broadcast stream comprising the
`at least one broadcast segment and associated media
`content;
`I disagree with Dr. Hart’s opinion that Curtin does not discloses a
`
`31.
`
`“broadcast segment” for the reasons in element 11[pre], above. Ex-2020, ¶78.
`
`32. Dr. Hart also opines that I failed to identify a “broadcast stream” and
`
`“associated media content” in my Opening Declaration. Ex-2020, ¶78. The
`
`claimed “broadcast stream” is met by Curtin by the “hybrid in-band on-channel
`
`(HIBOC) FM signal having an analog FM host and one or more digital sidebands.”
`
`Supra Table 1; Ex-1010, 3:26-40. The Board understood this mapping, noting that
`
`the “broadcast stream” in Curtin is “HIBOC FM signal containing a stream of
`
`songs or other pieces of music.” DI, 27. Similarly, the “associated media content”
`
`15
`
`Petitioner Hyundai Ex-1026, 0019
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`is met by the “digital audio information” which corresponds to “e.g., a particular
`
`song or other piece of music broadcast by the system” as converted from the digital
`
`audio bitstream into an analog audio output signal. Ex-1010, 3:48-61. Dr. Hart
`
`also testified that the digital audio information as received is not discernable to
`
`humans, but once processed is discernable. Ex-1029, 37:24-39:3.
`
`3.
`
`Element 11[e]: 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.
`33. Dr. Hart does not dispute that Curtin teaches an output that displays
`
`information about the selected song titles. Ex-2020, ¶64 (citing Ex-1010, 5:6-8,
`
`6:13-18, Fig. 4). Nor does Dr. Hart claim that Curtin does not teach a memory of
`
`the communication device containing media identification information such as the
`
`song title. Ex-2020, ¶63 (citing Ex-1010, 3:64-4:8); Ex-1029, 36:15-22, 37:21-23.
`
`Rather, Dr. Hart opines that Curtin does not teach (1) the output of data elements
`
`stored in the memory, (2) the appropriate timing of “selective outputting,” and (3)
`
`the use of an interface. Ex-2020, ¶¶79-88. Dr. Hart’s opinions are based on what I
`
`consider to be an unfounded assumption: that the entirety of this element must be
`
`performed at the “communication device.” The claim is directed to a “system,”
`
`however, which a POSITA would understand means that unless elements are
`
`16
`
`Petitioner Hyundai Ex-1026, 0020
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`specifically required to be present in the communication device, they may be
`
`present elsewhere in the system.
`
`a.
`
`At least some of the same extracted music information
`stored in the communication device’s memory is
`ultimately output to the user
`34. Curtin discloses that once a network connection is established, the
`
`extracted music information stored in the electronic memory (see Ex-1002,
`
`element 11[d]) is transmitted “to a music server which is capable of delivering the
`
`corresponding music.” Ex-1010, 4:19-26. “The music server uses the extracted
`
`music information to determine what the user might like to purchase, and presents
`
`this information, as well as appropriate ordering instructions, to the user via the
`
`network connection.” Id. 6:12-16. A POSITA would have understood that this
`
`disclosure teaches that the song selected by the user is offered for purchase using
`
`certain identifying information including at least some of the music information
`
`extracted from the memory of the communication device. At a minimum, a
`
`POSITA would have understood that it would be an obvious implementation detail
`
`to present this same information stored in memory to allow the user to identify and
`
`place an order for a specific track or album because that information, such as the
`
`artist name or song title, is the most natural information to present to a user to
`
`allow them to identify and purchase the songs they previously heard and are
`
`interested in. Id., 6:15-17. Dr. Hart offers no contrary opinion. Ex-1029, 69:10-
`
`17
`
`Petitioner Hyundai Ex-1026, 0021
`
`
`
`Reply Declaration – Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`71:3 (failing to identify and declining to offer an opinion on what information it
`
`would be obvious to a POSITA to output in view of Curtin and that his opinions
`
`are limited to what Curtin discloses).
`
`b.
`
`Selective outputting occurs when the music server
`presents detailed information about the designated
`songs to the user, not afterwards
`35. Dr. Hart opines that Curtin does not disclose this element because the
`
`user’s selection takes place “after the information has been ‘output’ from the
`
`communication device.” Ex-2020, ¶84. I note that the Board has also noted this as
`
`a potential issue. DI, 39-40. Dr. Hart assumes that the claimed “outputting” must
`
`come “from the communication device.” Id. This assumption leads to the
`
`incorrect conclusion that the “outputtin
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
