Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
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`Case No. IPR2021-01303
`Patent No. 8,688,028
`_____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,688,028
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`U.S. Patent No. 8,688,028
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
`
`Case No. IPR2021-01303
`Patent No. 8,688,028
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,688,028
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`STRATOSAUDIO ATTEMPTS TO RECAST THE ALLEGED
`INVENTION AS REQUIRING “DATA MINING” ..................................... 1
`III. CLAIM CONSTRUCTION ........................................................................... 2
`A.
`“broadcast segment” (claims 11, 16, and 17) ....................................... 2
`B.
`“media content” (claims 11 and 17) ..................................................... 4
`C.
`Other Limitations ................................................................................. 5
`IV. CURTIN ALONE (GROUND 1) AND CURTIN IN VIEW OF
`CROSBY (GROUND 2) INVALIDATE CLAIMS 11 AND 13-20 .............. 7
`A.
`Curtin discloses or teaches all elements ............................................... 8
`B.
`Curtin in view of Crosby discloses or teaches all elements
`challenged in the POR ........................................................................ 15
`V. ALWADISH ALONE (GROUNDS 3-4) AND ALWADISH IN
`VIEW OF KOERBER (GROUND 5) INVALIDATE CLAIMS 11,
`12, 14-16, AND 18 ....................................................................................... 20
`A. Alwadish discloses or teaches all elements challenged in the
`POR .................................................................................................... 22
`Alwadish in view of Koerber discloses or teaches all elements
`challenged in the POR ........................................................................ 27
`VI. STRATOSAUDIO’S SECONDARY CONSIDERATIONS
`EXHIBITS DO NOT SUPPORT PATENTABILITY ................................. 28
`VII. CONCLUSION ............................................................................................. 28
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`B.
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
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`LIST OF EXHIBITS1
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`Ex-1001
`Ex-1002
`Ex-1003
`Ex-1004
`Ex-1005
`Ex-1006
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`Ex-1007
`Ex-1008
`Ex-1009
`Ex-1010
`Ex-1011
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`Ex-1012
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`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`Ex-1018
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`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]
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`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.
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`ii
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`Ex-1019
`Ex-1020
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`Ex-1021
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`Ex-1022
`Ex-1023
`Ex-1024
`Ex-1025
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`Ex-1026
`Ex-1027
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`Ex-1028
`Ex-1029
`Ex-1030
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
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`[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”)
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`iii
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
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`I.
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`INTRODUCTION
`StratosAudio, Inc.’s (“StratosAudio’s”) Patent Owner Response (“POR”)
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`fails to distinguish Claims 11-20 (“the challenged claims”) of U.S. Patent No.
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`8,688,028 (“the ’028 Patent”) from the prior art and the challenged claims should
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`be cancelled. Ex-1026, ¶¶1-6, 60. Petitioner reiterates the corresponding sections
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`of the Petition (Pet.) for Grounds 1-5.
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`II.
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`STRATOSAUDIO ATTEMPTS TO RECAST THE ALLEGED
`INVENTION AS REQUIRING “DATA MINING”
`Throughout the POR, StratosAudio applies an unrecited, unstated
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`requirement for “data mining.” As explained below, data mining appears nowhere
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`in the claims and, at most, is one of several potential objectives of the alleged
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`invention. See Ex-1001, 3:9-15; Ex-1026, ¶¶7-9.
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`This faulty premise underlies many of StratosAudio’s arguments, such as its
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`conclusion that “the ‘aggregates’ of Claim 11 are referring to the inclusion of the
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`additional data regarding the purchase that would be useful for the specification’s
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`data mining” (POR, 17-18), or that “broadcast segment” means “a discretely
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`identifiable portion of programming as broadcasted” (POR, 20).
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`But Claim 11 and its dependents do not touch on the server side where data
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`mining can be performed to collect information regarding purchasing activity. See,
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`e.g., Ex-1001, 8:41-44 (“The data collected through ‘data mining’ of sales
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`transactions can be sold to companies interested in tracking demographic
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`information and music sales.”), 10:37-44. StratosAudio’s arguments and proposed
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`constructions rest on this (and other) unsustainable premises and should be
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`rejected.
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`III. CLAIM CONSTRUCTION
`StratosAudio proposed limiting constructions for several claim terms.2 For
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`these terms, StratosAudio’s expert provided no testimony under constructions
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`different than those proposed by StratosAudio. Ex-1029, 150:1-5; Ex-1026, ¶10.
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`A.
`“broadcast segment” (claims 11, 16, and 17)
`Petitioner agrees with the Board’s preliminary construction of “broadcast
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`segment” as “a distinguishable piece or portion of a broadcast stream, such as an
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`individual song, speech, or video.” Institution Decision, Paper 9 (“DI”), 203; Ex-
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`1026, ¶¶11-17. Indeed, this sensible construction comports with the plain meaning
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`of “broadcast segment”: a “segment” of a “broadcast.” StratosAudio’s proposed
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`construction improperly limits claim scope by requiring that each occurrence of a
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`portion of broadcast be uniquely identifiable. POR, 20-21 (each instance of a song
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`must be identifiably different). But the claim language contains no such
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`2 In contrast, StratosAudio convinced the district court that the only terms at issue,
`“associated/associating/association” and “associating each media content
`identifying data element with at least one of a plurality of media content,” needed
`only their plain meaning. See Ex-1027, 1-2.
`3 The Board also adopted this construction in IPR2021-00712 (“Volkswagen
`IPR”). Ex-2019, 20-21.
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`2
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`requirement. Rather, importing “discrete[] identifiab[ility]” ignores dependent
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`claim 16’s “unique identification” Requirement. StratosAudio’s construction
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`would render this term redundant and improperly capture claim 16’s scope. See
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`Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008).
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`The specification also contradicts StratosAudio’s proposed construction.
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`Ex-1001, 5:64-6:16. The only two instances involve “assign[ing] a unique
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`identifier to each specific broadcast segment or song.” Id., 5:64-6:2. Neither
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`suggests that “broadcast segment,” by itself, is “discretely identifiable.”
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`StratosAudio claims that unique identifiability is required because “data
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`mining” “requires understanding not only the content purchased but also the
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`particular portion of programming as broadcasted that triggered the purchase.”
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`POR, 21; see also id., 9, 16-18. But there is no reason to look to the “data mining”
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`embodiment to construe “broadcast segment,” which, within claim 11, is used to
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`describe something that is transmitted to a listener. “Data mining” occurs at the
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`server after the listener has received the broadcast and purchases the media to track
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`such activity. See, e.g., Ex-1001, 3:9-15; 3:52-55, 8:41-46, 8:59-65, 9:34-37,
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`10:42-44; cf. Ex-1029 146:8-19 (declining to offer an opinion for where “data
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`mining” occurs in the ’307 Patent). The concept has no place in claim 11. Cf. Ex-
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`1029, 142:9-143:19 (declining to offer an opinion for whether “data mining” is
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`required for various aspects of the ’307 Patent).
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`Even if “broadcast segment” is construed according to the “data mining”
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`embodiment, there is no need to import “discrete identifiability.” Rather, as
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`StratosAudio’s expert admitted, “data mining” is simply a generic term for
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`gathering data and does not require gathering any particular type of data. Ex-1029,
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`133:21-136:12. Tracking the demographics or number of users that purchased a
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`specific song would be sufficient. Id.; see also Ex-1026, ¶¶15-16.
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`StratosAudio’s criticisms of the Board’s construction are unconvincing.
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`POR, 20-22. For example, StratosAudio contends element 11[e]’s inclusion of
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`“temporal position of the corollary broadcast segment of the broadcast stream” can
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`distinguish different occurrences of the same media content. POR, 21. But this
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`would merely indicate to a POSITA that the time a broadcast segment was
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`received may be used to identify it in lieu of other identifiers. Ex-1026, ¶17.
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`Finally, StratosAudio’s assertion that broadcast segment “could correspond to a
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`portion of a song, speech or video” (POR, 21-22) has no intrinsic support. Indeed,
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`StratosAudio’s expert could not identify a single instance of this in the
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`specification. Ex-1029, 160:11-162:4.
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`B.
`“media content” (claims 11 and 17)
`Petitioner does not oppose the Board’s construction of “media content” as
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`“any form of media content that, when translated from signal-form in which it is
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`transmitted, is discernible to humans.” Ex-1026, ¶18.
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`C. Other Limitations
`The Board encouraged the parties to address several other terms. DI, 20;
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`U.S. Patent No. 8,688,028
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`Ex-1026, ¶19.
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`1.
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`“a receiving a broadcast stream comprising the at least one
`broadcast segment and associated media content” (claim 11)
`In the Volkswagen IPR for the ’307 Patent, the Board concluded that “and”
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`in this claim term applied to the broadcast stream itself such that it must comprise a
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`“broadcast segment” and “associated media content.” Ex-2019, 22. The Board
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`stated, “Petitioner’s proposed interpretations read the claim language as
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`encompassing the same underlying content (e.g., a song) in two different forms—
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`the ‘broadcast segment’ being a distinguishable piece or portion of the broadcast
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`stream itself, which is in signal form, and the ‘media content’ being the content
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`after it has been translated from signal-form into a form that is discernible to
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`humans” and found that reading consistent with the specification. Id., 22-23.
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`Petitioner, like StratosAudio, agrees that this is consistent with how a POSITA
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`would have understood this claim term in view of the specification. POR, 24; Ex-
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`1026, ¶20.
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`2.
`“associating/associated” (claims 11, 15, and 18)
`The term “associating/associated” should be accorded its plain meaning,
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`which merely indicates some relationship between items. Ex-1026, ¶¶21-22. As
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`described in its Petition and below, Petitioner’s grounds meet any reasonable plain
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`meaning of “associating/associated.” Nevertheless, StratosAudio’s construction of
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`“associated” to mean items are “linked via an implemented link” is without
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`contemporaneous support and should be rejected. POR, 24-25. The only
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`description StratosAudio provides for what “implementing a link” requires is that
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`“link is formal, intentional and requires implementation by claim 11.” POR, 25.
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`This is supported only by StratosAudio’s expert and is a transparent attempt to
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`import vague, undefined requirements into the claims. StratosAudio’s expert
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`confirmed that this language is not found anywhere in the specification, file
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`history, or extrinsic evidence. Ex-1029, 166:18-167:15. Indeed, this
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`construction—which requires a narrow type of association, an affirmative step of
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`implementing a link, and the intent to create the link—is contrary to the “plain and
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`ordinary meaning” position StratosAudio itself took in the district court. Ex-1027,
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`1; Ex-1030, 5-13.
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`3.
`“corollary” (claim 11)
`No construction is necessary to resolve the parties’ dispute because the prior
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`art in the Petition teaches this term under any reasonable construction. For
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`purposes of this IPR, Petitioner agrees that corollary can be understood as
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`correlated. POR, 25; Ex-1026, ¶23.
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`IV. CURTIN ALONE (GROUND 1) AND CURTIN IN VIEW OF
`CROSBY (GROUND 2) INVALIDATE CLAIMS 11 AND 13-20
`Contrary to StratosAudio’s allegations, the Petition identifies how all
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`elements of the challenged claims are met by Curtin (Ex-1010), as recognized by
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`the DI. Ex-1026, ¶24. For convenience, Petitioner has summarized key elements
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`below:
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`Limitation
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`Mapping
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`“broadcast stream”
`(11[a])
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`“broadcast
`segment” (11[pre],
`11[a])
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`“associated media
`content” (11[a])
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`“data stream”
`(11[b])
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`“[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.
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`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.
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`“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.
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`The analog audio output (e.g., song) as
`converted from “digital audio
`information.” Ex-1010, 3:55-61.
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`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.
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`7
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`Support
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`Pet. 22-23.
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`Pet. 20-23.
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`Pet. 22-23,
`Ex-2018,
`59:14-60:15.
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`Pet., 21, 23
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`
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`“media content
`identifying data”
`(11[pre], 11[a])
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`U.S. Patent No. 8,688,028
`Pet., 20-23
`“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
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`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:
`StratosAudio does not dispute that Curtin teaches a method in which media
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`content identifying data, such as the title of a song is included with a radio
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`broadcast. POR, 27 (citing Ex-1010, 3:65-4:5); Ex-1029, 36:15-22, 37:21-23. Nor
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`does StratosAudio dispute that this information is correlated with the song being
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`broadcast, so a user can purchase the song. POR, 28-29 (citing Ex-1010, 4:8-18;
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`5:6-8; 6:13-16); Ex-1029, 36:2-37:8, 39:4-23. StratosAudio also does not dispute
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`that Curtin teaches a digital audio broadcast receiver and receiving antenna to
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`receive the broadcast. POR, 25-27 (citing Ex-1010, 3:26-28; 3:51-63, Fig. 1); Ex-
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`1029, 37:9-13.
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`The only dispute is whether Curtin teaches that a “broadcast segment” is
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`received. StratosAudio argues that (1) Petitioner failed to identify a “broadcast
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`segment,” (2) Curtin does not disclose a “broadcast segment” under StratosAudio’s
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`U.S. Patent No. 8,688,028
`proposed construction, and (3) Curtin’s disclosure “falls short of satisfying the
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`’028’s invention” related to “data mining.” POR, 37-40. None of these arguments
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`have merit. Ex-1026, ¶¶25-26.
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`a.
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`StratosAudio ignores Petitioner’s clear mapping of
`“broadcast segment”
`As shown in Table 1, Curtin’s “digital audio information” which
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`corresponds to “e.g., a particular song or other piece of music broadcast by the
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`system” is the claimed “broadcast segment.” Ex-1010, 3:55-61. This is consistent
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`with the Board’s preliminary construction of “broadcast segment” because it is “a
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`distinguishable piece or portion of a broadcast stream, such as an individual song,
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`speech, or video.” Indeed, both Curtin’s “digital audio information” and the
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`construction use the example of a “song.” StratosAudio does not apply this
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`construction of “broadcast segment” at all. Ex-1029, 109:16-19 (“Q: Did you form
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`an opinion as to whether or not Curtin disclosed a broadcast segment under the
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`Board’s claim construction? A No.”); Ex-1026, ¶27.
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`b.
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`Curtin discloses the preamble even under
`StratosAudio’s overly-limiting construction
`Curtin discloses transmitting media content identifying data (“identification
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`information”) along with a “broadcast of a piece of music,” wherein “such
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`identification information in the case of a piece of music include[s] artist, title,
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`album name, label, source, date and time associated with the current broadcast of
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`the piece of music.” Id., 2:43-46.4 With this information, each instance of a song
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`being broadcast would be distinguishable based on date and time of airing, even if
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`played multiple times.
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`StratosAudio attempts to dismiss this disclosure by contrasting why Curtin
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`allegedly provides this information with why the patent claim supposedly requires
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`it. POR, 38-40; Ex-1029, 131:24-132:8. This argument fails because the “why” is
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`irrelevant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). The
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`claims, even with StratosAudio’s proposed construction, simply do not limit why
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`the broadcast segment is distinctly identifiable, only that it is. A POSITA would
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`have understood that the date and time is “data that enables unique identification,”
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`as StratosAudio contends. POR, 40; Ex-1026, ¶¶28-29. Hence, Curtin teaches that
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`each broadcast of a segment is discretely identifiable.
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`c.
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`The use of “broadcast segment” does not limit the
`claim to “data mining”
`Without justification, StratosAudio argues that the prior art must “satisfy the
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`’028’s invention that assigns a unique identifier to each specific broadcast segment
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`that can be tracked for the purposes of aggregating data or ‘Data Mining.’” POR,
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`40. Again, this “requirement” is not in the claims and, as discussed in Section II,
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`its inclusion is wholly unsupported. Ex-1026, ¶30.
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`4 All emphasis added, unless otherwise noted.
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`10
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`2.
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`Element 11[a]: receiving a broadcast stream comprising the
`at least one broadcast segment and associated media
`content;
`StratosAudio’s arguments that Curtin does not disclose a “broadcast
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`segment” should be rejected for the reasons in element 11[pre], above. POR, 41;
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`Ex-1026, ¶¶31-32.
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`StratosAudio also argues that Petitioner failed to identify a “broadcast
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`stream” and “associated media content.” The claimed “broadcast stream” is met
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`by Curtin by the “hybrid in-band on-channel (HIBOC) FM signal having an analog
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`FM host and one or more digital sidebands.” Supra Table 1; Ex-1010, 3:26-40.
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`The Board understood this, noting that the “broadcast stream” in Curtin is “HIBOC
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`FM signal containing a stream of songs or other pieces of music.” DI, 27.
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`Similarly, “associated media content” is “digital audio information,” which
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`corresponds to “e.g., a particular song or other piece of music broadcast by the
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`system” as converted from the digital audio bitstream into an analog audio output
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`signal. Ex-1010, 3:48-61. StratosAudio’s expert testified that the digital audio
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`information as received is not discernable to humans, but once processed is
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`discernable. Ex-1029, 37:24-39:3.
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`11
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`3.
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`Case No. IPR2021-01303
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`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:…
`StratosAudio does not dispute that Curtin teaches an output that presents
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`information about the selected song titles. POR, 28-29 (citing Ex-1010, 5:6-8,
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`6:13-18, Fig. 4); Ex-1026, ¶33. Nor does StratosAudio claim that Curtin does not
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`teach a memory of the communication device containing media identification
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`information such as the song title. POR, 27 (citing Ex-1010, 3:64-4:8); Ex-1029,
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`36:15-22, 37:21-23. Rather, StratosAudio contends that Curtin does not teach (1)
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`the output of data elements stored in the memory, (2) the appropriate timing of
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`“selective outputting,” and (3) the use of an interface. POR, 42-46.
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`StratosAudio’s criticisms are based on the false assumption that the entirety of this
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`element must be performed at the “communication device.” The claim is directed
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`to a “method,” and there is no requirement that the method take place in the same
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`device. Ex-1001, cl. 11[pre]; Ex-1026, ¶33.
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`a.
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`At least some of the same extracted music information
`stored in the communication device’s memory is
`ultimately output to the user
`Curtin discloses that once a network connection is established, the extracted
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`music information stored in the electronic memory (see Pet., element 11[d]) is
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`transmitted “to a music server which is capable of delivering the corresponding
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`U.S. Patent No. 8,688,028
`music.” Ex-1010, 4:19-26. “The music server uses the extracted music
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`information to determine what the user might like to purchase, and presents this
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`information, as well as appropriate ordering instructions, to the user via the
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`network connection.” Id. 6:12-16. Thus, the information presented to the user
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`includes at least some of the music information extracted from the memory of the
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`communication device. A POSITA would have understood that this same
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`information would have been presented to allow the user to identify and place an
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`order for a specific track or album, and utilizing at least the artist name or song title
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`to do so would have been an obvious implementation detail. Id., 6:15-17, Ex-
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`1026, ¶34. Dr. Hart offers no contrary opinion. Ex-1029, 69:10-71:3 (declining to
`
`offer an opinion on what information a POSITA would have expected to be output
`
`in view of Curtin).
`
`b.
`
`Selective outputting occurs when the music server
`presents detailed information about the designated
`songs to the user, not afterwards
`StratosAudio argues that Curtin does not disclose this element because the
`
`user’s selection takes place “after the information has been ‘output’ from the
`
`communication device.” POR, 44; Ex-1026, ¶¶35-26. The Board also notes this.
`
`DI, 39-40. This assumes that the claimed “outputting” must come “from the
`
`communication device,” leading to the incorrect conclusion that the “outputting”
`
`must be Curtin’s networking device sending information to the purchasing server
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`or presenting the information to the user. As explained above, this is not how
`
`Petitioner maps Curtin to this claim element. Rather, Petitioner argues that the
`
`“selective outputting” is met by the music server presenting selective information,
`
`i.e., at least some of the extracted music information, to the user via the network
`
`connection.5 Pet., 28 (citing Ex-1010, 6:12-16).
`
`StratosAudio attempts to limit the terms “selective outputting” and
`
`“interface” to the specific embodiments in the specification where a user selects
`
`specific items before outputting them to a purchasing system. POR, 42-43. But
`
`StratosAudio offers no evidence to restrict these terms beyond their plain and
`
`ordinary meaning
`
`c.
`
`Curtin teaches an interface used for presenting
`information to users
`StratosAudio’s criticism that Curtin does not disclose any “interface” is
`
`simply illogical. POR, 45. By “presenting” information to a user such that the
`
`user can select an item to order, a POSITA would have understood that an interface
`
`of some type is used by Curtin. Ex-1026, ¶¶37-38.
`
`Moreover, even if it were required that the communication device itself
`
`provide the “selective outputting” without the use of any additional server, it would
`
`
`5 HMA contends that “selective outputting” should be given its plain and ordinary
`meaning. In the context of claim 11 that is that the outputting is of at least one of
`the listed items associated with the media content.
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`U.S. Patent No. 8,688,028
`have been an obvious implementation detail since the required information is
`
`already present on the communication device. For example, a POSITA would
`
`have recognized that communication devices capable of receiving and outputting
`
`digital media content, would have had a display capable of presenting identifying
`
`information to the user, and would have been motivated to include such a display
`
`to identify the song being played. Ex-1026, ¶38; cf. Ex-1029 72:12-75:10 (refusing
`
`to provide any opinions on what outputting devices were obvious).
`
`4.
`
`Claim 16: The method of claim 11, wherein the data stream
`further comprises data that enables a unique identification
`of the at least one broadcast segment.
`StratosAudio’s arguments for this claim are a rehash of its “broadcast
`
`segment” arguments in 11[pre] and fail for the same reasons, namely because that
`
`the “date and time” provided with the broadcast are “information that uniquely
`
`identifies a particular piece of music.” Ex-1010, 3:64-4:2; Ex-1026, ¶39.
`
`B. Curtin in view of Crosby discloses or teaches all elements
`challenged in the POR
`1.
`A POSITA Would Have Been Motivated to Combine the
`Teachings of Curtin and Crosby
`StratosAudio bases its motivation to combine arguments on three supposed
`
`differences between Crosby and Curtin: (1) that Crosby is designed to avoid
`
`sending identification data, (2) that Curtin’s receiver need not have a wireless
`
`transmitter, and (3) that Curtin requires a memory while Crosby does not. POR,
`
`48-53. Each of these criticisms mischaracterizes the references, is irrelevant, or
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`15
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`both. None would bear on a POSITA’s motivation or ability to combine the two
`
`references. Ex-1026, ¶40. Tellingly, StratosAudio admits the key underlying
`
`similarities: “both Curtin and Crosby are directed at enabling a listener to tag and
`
`later purchase a piece of music they have heard via broadcast radio.” POR, 49, Ex-
`
`1029, 83:18-84:9. Petitioner agrees. See Pet. 19-20, 28-31.
`
`a.
`
`Crosby explicitly discloses that it is compatible with
`media identification information transmitted with the
`broadcast
`StratosAudio contends that Crosby, unlike Curtin, “is designed to avoid
`
`sending [data such as such as song title, artist and album], and the broadcast need
`
`only include the media content itself” but ignores pertinent disclosures to the
`
`contrary. POR, 50-51. In fact, while Crosby discloses that it works with
`
`“conventional radio broadcast signals not requiring any additional information
`
`encoded therein, Crosby explains that “[i]f the broadcast signal nevertheless
`
`includes encoded signals providing program segment identification information or
`
`the like, the system can exploit that additional information as well.” Ex-1006,
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`8:53-56; Ex-1026, ¶41.
`
`b.
`Curtin is compatible with a wireless transmitter
`StratosAudio’s contention that Curtin is “designed to circumvent” using “a
`
`wireless transmitter alongside the receiver to communicate the interactive
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`responses” is wrong in addition to being irrelevant to the combination. POR, 50.
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`Case No. IPR2021-01303
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`Indeed, Curtin expressly discloses that “when the user is able to establish a
`
`network connection 115 via a wireless transceiver that may be implemented at
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`least in part in the interface microcontroller 112, the extracted music information
`
`is transmitted over the network connection 115.” Ex-1010, 4:20-23; Ex-1026, ¶42.
`
`c.
`
`Crosby is compatible with a memory in the
`communication device
`StratosAudio’s argument that Curtin, unlike Crosby “requires a memory”
`
`that “stores the identification information” again focuses on a supposed difference
`
`that is not relevant to the combination. POR, 50. Ground 2 takes the Curtin
`
`system and adds to it Crosby’s teachings for outputting certain information. A
`
`POSITA would have understood that whether this output information comes from
`
`an onboard memory or another location would have made no difference in the
`
`context of the combination; Crosby’s output mechanism would have worked
`
`equally well in either case. Ex-1026, ¶43; cf. Ex-1029, 99:2-17 (offering no
`
`opinion on how the data arrives into the database of the network operations center).
`
`Moreover, a POSITA would have understood Crosby’s communication device to
`
`have a memory, despite not being mentioned explicitly. Ex-1026, ¶43. This
`
`expectation would be strengthened based on Crosby’s teaching that it is able to
`
`take advantage of radio broadcasts containing additional identifying information.
`
`Ex-1026, ¶43, Ex-1006, 8:48-56.
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`17
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`2.
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`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:…
`It is undisputed that Curtin has a memory that stores data elements including
`
`at least media content identifying data, as required by 11[d] and that Curtin
`
`transmits these elements over a network to another server. POR, 28-29 (citing Ex-
`
`1010, 4:19-26, 5:6-8). StratosAudio admits that the network operations center
`
`provides information about a program segment to the subscriber via a website.
`
`POR, 30-31 (citing Ex-1006, 7:36-50); Ex-1029, 102:23-103:14. But Crosby is
`
`used simply for what the outside server does with the media content identifying
`
`data—selectively outputting pertinent information about the program segment.
`
`Pet., 28-31. Each of StratosAudio’s arguments against Ground 2 regarding
`
`element 11[e] fails. Ex-1026, ¶44.
`
`a.
`
`Crosby’s network operations center would output
`media identification information in the same way,
`regardless of the source of that data
`A POSITA would have expected this combination to work seamlessly
`
`because Crosby discloses that the outside server (the “network operations center”)
`
`receives media content identifying data and outputs it to the user. Ex-1006, 7:44-
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`46, Fig. 7 (below). That the network operations center receives that content from
`
`databases would have no bearing on a POSITA’s ability to implement the
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`Case No. IPR2021-01303
`U.S. Patent No. 8,688,028
`combination or expectation of success. Ex-1026, ¶45. Once the information is
`
`received by the network operations center, from whatever source, it would have
`
`been simple for a POSITA to format and output that information as taught by
`
`Crosby. Ex-1026, ¶45. And far from “teach[in
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