`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