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`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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`
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`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`
`
`v.
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`
`
`STRATOSAUDIO, INC.,
`Patent Owner
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`
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`PATENT OWNER SUR-REPLY
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`IPR2021-01303
`U.S. Patent No. 8,688,028
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`PATENT OWNER IS NOT RECASTING THE CLAIMED INVENTION AS
`REQUIRING “DATA MINING” .................................................................... 1
` CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“broadcast segment” .............................................................................. 2
`The language of claim 16 does not refute Patent Owner’s
`construction ................................................................................. 3
`The specification does not refute Patent Owner’s
`construction ................................................................................. 3
`“associating/associated” ........................................................................ 7
`B.
` GROUND 1: CLAIMS 11 AND 13-20 ARE NOT RENDERED OBVIOUS
`BY CURTIN ALONE ..................................................................................... 8
`A.
`Curtin alone does not render claim 11 obvious ..................................... 8
`Element 11[pre] ........................................................................... 8
`Element 11[a] ............................................................................ 10
`Element 11[e] ............................................................................ 10
`a.
`Petitioner presents new argument in its
`Reply, switching
`its position on what
`constitutes “selective outputting” ................................... 10
`There remains no basis for Petitioner’s
`attempt to fabricate an interface in Curtin ...................... 12
`Even under Petitioner’s
`improper new
`argument, Curtin does not meet Element
`11[e] .............................................................................. 12
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`b.
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`c.
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`d.
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`C.
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`Under Petitioner’s abandoned argument,
`Curtin’s “selective outputting” occurs after
`selection .......................................................................... 14
`Curtin alone does not render claim 16 obvious ................................... 14
`B.
` GROUND 2: NO MOTIVATION TO COMBINE CURTIN AND CROSBY
`AS PROPOSED BY PETITIONER AND NO REASONABLE
`EXPECTATION OF SUCCESS ................................................................... 15
`A.
`Curtin does not comport with Crosby’s wireless transmitter .............. 16
`B.
`Crosby does not comport with Curtin’s required memory for
`identification information .................................................................... 17
`Petitioner has changed it argument in reply, implicitly conceding the
`defects of its proposed combination .................................................... 17
` GROUND 3: CLAIMS 11, 14, 15 AND 18 ARE NOT RENDERED
`OBVIOUS BY ALWADISH ALONE .......................................................... 19
`A.
`Element 11[pre] ................................................................................... 19
`B.
`Element 11[d] ...................................................................................... 20
` GROUND 4: CLAIMS 12 AND 16 ARE NOT RENDERED OBVIOUS BY
`ALWADISH ALONE ................................................................................... 21
`A. Alwadish alone does not render claim 12 obvious ............................. 21
`B.
`Alwadish alone does not render claim 16 obvious ............................. 22
` GROUND 5: CLAIMS 12 AND 16 ARE NOT RENDERED OBVIOUS BY
`ALWADISH IN VIEW OF KOERBER ....................................................... 24
`A. Alwadish in view of Koerber does not render claim 12 obvious ........ 24
`B.
`Alwadish in view of Koerber does not render claim 16 obvious ........ 25
` CONCLUSION .............................................................................................. 25
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`U.S. Patent No. 8,688,028
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`CASES
`Finnigan Corp. v. Int’l Trade Comm’n,
`180 F.3d 1354 (Fed. Cir. 1999) .......................................................................... 18
`IQASR LLC v. Wendt Corp.,
`825 Fed. Appx. 900 (Fed. Cir. 2020) .................................................................. 22
`Yita, LLC v. MacNeil IP LLC,
`IPR2020-01142, Paper 82 (PTAB May 26, 2022) ....................................... 10, 18
`STATUTES AND RULES
`C.F.R. § 42.23(b) ............................................................................................... 10, 18
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`iii
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`UPDATED TABLE OF EXHIBITS
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`Exhibit Description
`2001 Defendants’ Disclosure of Invalidity Contentions Cover Pleading in
`Parallel W.D. Tex. Litigations (July 8, 2021)
`
`2002
`
`2003
`
`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`Proposed Third Amended Joint Scheduling Order of Parallel W.D.
`Tex. Litigations (September 15, 2021)
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`E-mail from W.D. Tex. Court Clerk Denying Request to Stay Pending
`Motion to Dismiss for Improper Venue (May 17, 2021)
`
`Transcript of hearing in ParverVision v. IntelCorp., 6:20-cv-00108
`(W.D. Tex. September 2, 2020) (J. Albright)
`
`Interview with Judge Albright on Patent Litigation and Seventh
`Amendment, IAM (Apr. 7, 2020)
`
`Minute Entry regarding Markman Hearing, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 28,
`2021)
`
`Order Denying Hyundai’s Motion to Dismiss, StratosAudio, Inc. v.
`Hyundai Motor America, 6:20-cv-01125 (W.D. Tex. September 17,
`2021) (J. Albright)
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`StratosAudio, Inc.’s Preliminary Infringement Contentions,
`StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-01125 (W.D.
`Tex. May 13, 2021)
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`StratosAudio, Inc.’s Supplemental Preliminary Infringement
`Contentions, StratosAudio, Inc. v. Hyundai Motor America, 6:20-cv-
`01125 (W.D. Tex. September 27, 2021)
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`2010
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`Hyundai Motor America’s Answer and Affirmative Defenses to
`Plaintiff’s Complaint for Patent Infringement, Jury Trial Demanded,
`6:20-cv-01125 (W.D. Tex. October 1, 2021)
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`2011 Minute Order from Discovery Hearing, StratosAudio, Inc. v. Hyundai
`Motor America, 6:20-cv-01125 (W.D. Tex. October 7, 2021)
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`2012
`
`Email from Eric Lucas to Patent Trial and Appeal Board, Volkswagen
`Stipulation regarding IPR Grounds (September 3, 2021)
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`2013 Declaration of Hallie Kiernan in Support of Patent Owner’s Motion
`for Admission Pro Hac Vice
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`2014 October 8, 2003 Hyundai Autonet Press Release
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`2015 December 20, 2003 Press Release StratosAudio, Inc.
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`2016
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`StratosAudio enabled Interactive Symphony Digital Award
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`2017 Wayback Machine - 2004 CES Innovations Awards Honorees
`Webpage
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`2018 Deposition Transcript of Dr. Kevin Almeroth
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`2019
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`Institution Decision, IPR2021-00716
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`2020 Declaration Dr. John C Hart
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`2021
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`Transcript of August 17, 2022 Deposition of Dr. Kevin C. Almeroth
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`U.S. Patent No. 8,688,028
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`INTRODUCTION
`StratosAudio, Inc. (“Patent Owner”) submits this Sur-Reply in response to the
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`Reply to Patent Owner Response (Paper 22, hereafter the “Reply”) filed by Hyundai
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`Motor America (“Petitioner”), which was in reply to the Patent Owner Response
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`(Paper 18, hereafter “POR”). The Petition and Reply do not establish by a
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`preponderance of the evidence that any challenged claim of U.S. Patent 8,688,028
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`(“the ’028 patent”) is unpatentable.
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`
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`PATENT OWNER IS NOT RECASTING THE CLAIMED
`INVENTION AS REQUIRING “DATA MINING”
`Petitioner’s lead argument at Reply pages 1-2 that Patent Owner is attempting
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`to recast the invention as requiring “data mining” misunderstands Patent Owner’s
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`positions. Reply 1-2. Patent Owner has never argued that “data mining” is a
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`requirement of the claimed invention. Rather, Patent Owner argues that the
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`discussion of “data mining” in the ’028 patent provides context to understand the
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`claims. See, e.g., POR 16-18, 21. Claim 11 requires the memory to store “media
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`content identifying data elements into identifying data aggregates” with each
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`aggregate associated with at least one media content item and its correlated broadcast
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`segment. EX1001, 15:30-40 (emphasis added). In each instance where the
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`specification discusses aggregating data, the discussion concerns “data mining.”
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`EX1001, 3:52-55, 9:34-37.
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`1
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`The Reply also asserts that “Claim 11 and its dependents do not touch on the
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`server side where data mining can be performed to collect information regarding
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`purchasing activity.” Reply 1. But the citations relied on as showing data mining
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`on a back-end server, namely EX1001, 8:41-44, 10:37-44, both rely on the use of
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`“technology enabled servers” in conjunction with a “technology enabled radio” or
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`“TER.” See EX1001, 8:19-28, 9:21-37. The patent uses the terms “technology
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`enabled radio” or “TER” to refer to devices implementing the claimed invention.
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`See EX1001, 2:63-3:3. Thus, the “server side” systems referred to by Petitioner
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`utilize the claimed invention, for example by receiving the aggregates created by the
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`technology enabled radio.
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` CLAIM CONSTRUCTION
`A.
`“broadcast segment”
`Patent Owner’s Response established that the term “broadcast segment”
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`should be construed to mean “a discretely identifiable portion of programming as
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`broadcasted.” POR 20-22 (citing EX2020, ¶¶49-53). The Reply alleges that this
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`proposed construction impermissibly rewrites the claims and improperly imports
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`limitations therein, purporting to rely on the claims and specification for support.
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`Reply 2-4. Petitioner’s arguments each lack merit.
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`2
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`The language of claim 16 does not refute Patent
`Owner’s construction
`According to the Petitioner, by “importing ‘discrete[] identifiab[ility]’ [into
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`broadcast segment],” Patent Owner has “ignore[d] dependent claim 16’s ‘unique
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`identification’ requirement. . . . [which] would render this term redundant and
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`improperly capture claim 16’s scope.” Reply 3. Patent Owner’s construction does
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`not ignore claim 16. Claim 16 specifies that “the data stream further comprises data
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`that enables a unique identification of the at least one broadcast segment.” Claim
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`16, as indicated by use of the term “further comprises,” provides both a narrowing
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`and more explicit detail regarding the elements disclosed in claim 11, including data
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`in the data stream that enables a unique identification of the broadcast segment.
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`Petitioner’s expert confirmed this. EX2021, 5:15-6:5. Moreover, Petitioner’s
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`argument misunderstands the claims: Patent owner’s construction of “broadcast
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`segment” in claim 11 requires a discretely identifiable portion of the programming
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`as broadcasted (as opposed to identifying the content itself). Claim 16 requires data
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`in the data stream that enables the unique identification of that broadcast segment.
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`The specification does not refute Patent Owner’s
`construction
`The specification does not contradict Patent Owner’s proposed construction,
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`as Petitioner alleges at page 3 of the Reply. The specification explicitly states that
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`an Automatic Purchase System (APS) server 144 “assigns a unique identifier to each
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`3
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`specific broadcast segment or song.” EX1001, 6:1-2 (emphasis added). The
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`specification’s statement that a unique identifier is assigned to each broadcast
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`segment supports Patent Owner’s proposed construction that a broadcast segment is
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`“a discretely identifiable portion of programming as broadcasted.” The discretely
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`identifiable nature of the broadcast segment permits for the assignment of a unique
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`identifier to “each specific broadcast segment” (EX1001, 6:1-2), which requires
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`being able to identify more than just the song played. It requires enabling
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`discernable identification of multiple broadcasts of the same content, for example a
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`song broadcast multiple times from a single source on the same day.
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`Petitioner also argues that Patent Owner’s reliance on “data mining” to inform
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`the construction of broadcast segment is improper. Reply 3. However, a POSITA
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`would have understood that a broadcast segment must be a discretely identifiable
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`portion of the programming because data mining requires understanding not only
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`the song that was played but also the particular portion of programming as
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`broadcasted that triggered a response (for example, a response to each specific ad or
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`song), and this is particularly important where the same media content is broadcasted
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`multiple times in a day. See POR 21. Petitioner argues that “data mining” is not
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`relevant because it occurs at a server after the listener has received a broadcast.
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`Reply 3. As Patent Owner points out above, the “server” Petitioner relies upon uses
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`the technology enabled radio to practice the claimed invention. See supra Section
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`II. Moreover, the claimed method for correlating permits outputting information
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`that may be used for the “data mining” purposes described in the specification,
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`irrespective of when such “data mining” occurs or by whom. EX1001, 9:34-37.
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`The Reply also argues that even if “broadcast segment” is construed according
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`to the data mining disclosure, there is no need to import “discrete identifiability” into
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`the claim construction. Reply 4. This too is without merit. As Patent Owner
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`explained in the Patent Owner Response, to perform data mining, information
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`discretely identifying the portion of programming as broadcasted tells which
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`particular portion of programming triggered the response. POR 16-17 (citing
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`EX2020, ¶41). Petitioner further argues that “‘data mining’ is simply a generic term
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`for gathering data and does not require gathering any particular type of data.” Reply
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`4. Petitioner then concludes that “[t]racking the demographics or number of users
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`that purchased a specific song would be sufficient.” Reply 4. The ’028 patent
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`expressly contemplates aggregating data for the purpose of data mining for sale to
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`interested parties such as trade publications and record companies to understand the
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`particular portion of programming as broadcasted that triggered a purchase. POR
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`21 (citing EX1001, 3:8-14, 3:52-55, 9:34-36; EX2020, ¶50). This need is even more
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`critical where the same media content is broadcasted multiple times per day. POR
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`21. In such cases, discrete identification facilitates understanding which particular
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`broadcasts of the media content triggered the purchases. POR 21-22.
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`Petitioner’s allegation at Reply page 4 that Patent Owner’s expert “admitted[]
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`‘data mining’ is simply a generic term for gathering data and does not require
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`gathering any particular type of data” is not supported by the evidence. Reply 4. In
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`fact, Patent Owner’s expert detailed why a POSITA would have understood the
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`connection between the claimed data aggregate and “data mining.” See EX1029,
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`136:24-137:17 (“As I said before . . . understanding . . . aggregating data, along with
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`data mining, and then the term ‘corollary’ in the claims, a person of ordinary skill in
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`the art would have understood that connection.”).
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`Petitioner contends that Patent Owner’s reliance on the phrase “temporal
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`position of the corollary broadcast segment” is improper because “temporal position
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`of the corollary broadcast segment” “may be used to identify [a broadcast segment]
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`in lieu of other identifiers.” Reply 4. Petitioner misunderstands Patent Owner’s
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`argument. Patent Owner argued: “The claim language ‘a temporal position of the
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`corollary broadcast segment’
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`in element 11[e] [] supports a POSITA’s
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`understanding that the broadcast segment must have a temporal component that can
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`distinguish different occurrences of broadcast segment, even when the portion of
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`programming contains the same media content.” POR 21.
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`6
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`B.
`“associating/associated”
`As Patent Owner previously explained, a POSITA would have understood that
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`the claim term “associating” means “implementing a link” between two or more
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`items and “associated” means two or more items are “linked via an implemented
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`link.” POR 24-25. This understanding is rooted in cited portions of both the claims
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`and specification of the ’028 patent (POR 24-25), which Petitioner does not address.
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`Reply 5-6.
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`Petitioner fails to refute Patent Owner’s position. Petitioner asserts that the
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`sole basis for Patent Owner’s construction is its expert’s testimony. Reply 6. Not
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`so. Patent Owner explained how analysis of both the claims and specification
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`supports its construction. POR 24-25. Moreover, Petitioner’s contention that
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`“StratosAudio’s expert confirmed that [language relied on by Patent Owner for its
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`construction] is not found anywhere in the specification, file history, or extrinsic
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`evidence” is based on Petitioner’s incomplete citation to the deposition transcript.
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`Reply 6 (citing EX1029, 166:18-167:15). The testimony cited by Petitioner
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`continues past the cited range, where Patent Owner’s expert proceeds to explain that
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`“Claim 11 is using [the terms ‘associating’ and ‘associated’] in a very specific
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`context.” EX1029, 167:16-17. Patent Owner’s expert then explained, at length, how
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`the patent confirms that a POSITA would have understood “associated” means an
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`implemented link in the context of claim 11. EX1029, 167:18-168:24.
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` GROUND 1: CLAIMS 11 AND 13-20 ARE NOT RENDERED
`OBVIOUS BY CURTIN ALONE
`A. Curtin alone does not render claim 11 obvious
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`Element 11[pre]
`In the Patent Owner Response, Patent Owner explained that a POSITA would
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`not have understood Curtin to describe a broadcast segment as the term is properly
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`construed—i.e., a discretely identifiable portion of programming as broadcasted.
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`POR 36-40. As a result, Curtin cannot meet the preamble, which requires correlating
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`a broadcast segment with media content identifying data. POR 36-40. Petitioner’s
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`arguments in reply do not change this outcome.
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`Petitioner argues that Curtin meets the preamble under Patent Owner’s
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`construction of “broadcast segment” because in Curtin, “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.” Reply 10. However, a POSITA would have understood
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`Curtin’s sole use of “identification information” (including date and time) was to
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`ensure the listener could purchase a personal copy of the particular version of media
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`content heard. POR 38. As a result, a POSITA would have understood Curtin to
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`teach a correlation of the media content identifying information with the media
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`content, and not with the broadcast segment that delivered it. POR 38.
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`In its Reply, Petitioner argues that Patent Owner improperly focuses on why
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`the “identification information” is provided. Reply 10. But this mischaracterizes
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`Patent Owner’s position. Patent Owner did not argue that Curtin’s identification
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`information had to be provided for a specific purpose to disclose the preamble of
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`claim 11. Patent Owner argued that given Curtin’s use of media content identifying
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`information to enable a user to buy specific content, a POSITA would have
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`understood that Curtin did not disclose the correlation of media content identifying
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`data with a “broadcast segment,” as required by the preamble. POR 37-39.
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`Petitioner asserts that the use of broadcast segment does not restrict the claim
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`to data mining. Reply 10. However, Patent Owner does not argue that “data mining”
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`is per se required by the claim. Rather, Patent Owner explained that the term
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`“aggregating,” which is in the claim, creates a structure used for data mining—as
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`the specification’s discussions of “aggregates” concern data mining. See supra
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`Section II. Curtin, unlike the ’028 patent, performs no data mining function, and
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`therefore has no need to create the type of aggregate described and claimed in the
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`’028 patent.
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`9
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`Element 11[a]
`There is no dispute that the Petition fails to identify in Curtin any “broadcast
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`stream” or “broadcast segment.” The Reply presents new arguments regarding
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`these limitations. The argument in the Reply that “digital audio information” is
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`“[t]he claimed ‘broadcast segment’” (Reply 11; see also Reply 7) is not in the
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`Petition. These new arguments should be disregarded. See C.F.R. § 42.23(b) (“A
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`reply may only respond to arguments raised in the corresponding opposition, patent
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`owner preliminary response, or patent owner response.”); accord Yita, LLC v.
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`MacNeil IP LLC, IPR2020-01142, Paper 82 at 69 (PTAB May 26, 2022)
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`(“Petitioner’s Reply is not the place to raise new arguments or evidence. . . .
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`Accordingly, we do not consider Petitioner’s new theory of obviousness as it is
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`outside the scope of a proper reply under Rule 42.23(b).”) (citing Finnigan Corp. v.
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`Int’l Trade Comm’n, 180 F.3d 1354, 1363 (Fed. Cir. 1999) (“A party’s argument
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`should not be a moving target.”)).
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`Element 11[e]
`a.
`Petitioner presents new argument in its Reply,
`switching its position on what constitutes “selective
`outputting”
`Petitioner’s reply argument concerning Curtin’s alleged disclosure of Element
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`11[e] is new argument and should be disregarded. See C.F.R. § 42.23(b); accord
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`Yita, LLC, Paper 82 at 69 (citing Finnigan Corp., 180 F.3d at 1363). Petitioner’s
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`10
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`reply position that “[s]elective outputting occurs when the music server presents
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`detailed information about the designated songs to the user” (Reply 13 (emphasis
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`added)) is not only new but also stands in direct contrast with Petitioner’s original
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`argument. Petitioner originally argued that “selective outputting” in Curtin occurred
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`when information on what music a user selected to purchase was sent from the user
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`(via an alleged interface) “to the server.” Pet. 28 (emphasis added). Now, in reply,
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`Petitioner argues that “selective outputting” occurs when information is sent from
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`the server “to the user.” Reply 13-14 (emphasis added). These positions, presented
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`and annotated in the chart below, cannot be reconciled.
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`Petitioner’s Original Argument
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`Petitioner’s New Argument
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`“In selecting which music to purchase,
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`“‘[S]elective outputting’ is met by the
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`Curtin provides ‘selective outputting,
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`music server presenting selective
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`using an interface, of . . . the media
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`information . . . to the user via the
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`content identifying data’ to the server .
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`network connection.” Reply 14
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`. . .” Pet. 28 (quoting EX010, 6:19-21)
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`(annotation added).
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`(alterations in original and annotation
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`added)
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`11
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`b.
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`There remains no basis for Petitioner’s attempt to
`fabricate an interface in Curtin
`As Patent Owner previously explained, “Curtin nowhere shows an interface
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`by which the user places the order, and nowhere shows or suggests that such an
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`interface, if used, would provide for selectively outputting media content identifying
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`data.” POR 46. The Board also recognized this, noting in its Institution Decision
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`that Curtin “does not describe in detail how such information is presented to the user,
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`e.g., via an interface that provides ‘selective outputting’ as recited in claim 11 or
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`otherwise.” Paper 9 at 39-40. Petitioner has not rebutted this point.
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`The sole basis for Petitioner’s argument that Curtin discloses an interface is
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`its expert’s speculation based on the “open-ended” nature of Curtin’s disclosure.
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`POR 46. Likewise, in its Reply, Petitioner cites nothing in support of this argument
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`other than its expert’s hindsight. See Reply 14-15 (citing EX1026, ¶¶37-38).
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`c.
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`Even under Petitioner’s improper new argument,
`Curtin does not meet Element 11[e]
`Petitioner’s new argument that “‘selective outputting’ is met by the music
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`server presenting selective information, i.e., at least some of the extracted music
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`information, to the user via the network connection” (Reply 14) finds no support in
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`Curtin. Curtin simply does not disclose that “extracted music information” is the
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`“information” the server sends to the user’s device.
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`Petitioner notes that Curtin’s “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 network
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`connection.” Reply 13 (quoting EX1010, 6:12-16) (emphasis omitted). Petitioner
`
`then assumes, without support, that the term “this information” in the latter part of
`
`the sentence refers to the “extracted music information.” Reply 13. Yet, Curtin
`
`provides no disclosure whatsoever as to what “this information” constitutes beyond
`
`that it is information concerning “what the user might like to purchase.” EX1010,
`
`6:12-16. There is no description of the information, let alone reason to understand
`
`that it contains media content identifying data, media content, a corollary broadcast
`
`segment, or a temporal position of the corollary broadcast segment, as recited in
`
`claim Element 11[e]. POR 44.
`
`Seemingly recognizing this, Petitioner asserts “[a] POSITA would have
`
`understood” “this information” to be the “extracted music information” so that the
`
`user could purchase specific tracks or albums. Reply 13. The sole basis for this is
`
`Petitioner’s expert’s hindsight analysis that sending this information would be “most
`
`natural” to a POSITA. EX1026, ¶34. Even this position concedes that the term “this
`
`information” could be many things, including the song aired, other songs,
`
`
`
`13
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`merchandise, and hyperlinks. Petitioner’s expert admitted so much during cross-
`
`examination. See EX2021, 34:17-36:25.
`
`d.
`
`Under Petitioner’s abandoned argument, Curtin’s
`“selective outputting” occurs after selection
`The “selection” Petitioner pointed to in its Petition (i.e., information on what
`
`music a user selected to purchase) occurred after information was “output,” so
`
`Curtin did not disclose selective outputting. POR 44. The Board, in its Institution
`
`Decision, understood this. Paper 9 at 39-40. Petitioner did not address this argument
`
`in its Reply, instead electing to (improperly) advance a new argument, which should
`
`not be considered and is also defective. See supra Sections IV.A.3.a, IV.A.3.c.
`
`B. Curtin alone does not render claim 16 obvious
`Claim 16 is non-obvious for the same reason as claim 11, but also because
`
`Curtin nowhere discloses a data stream with information that enables unique
`
`identification of a broadcast segment. Petitioner makes no effort to rebut this. Reply
`
`15. As Patent Owner’s Response pointed out, while Curtin’s extracted music
`
`information might be used to identify the media content, e.g., a particular piece of
`
`music, it does not identify a “broadcast segment” as properly interpreted using data
`
`that enables a unique identification of the at least one broadcast segment. POR 47
`
`(citing EX2020, ¶90). While Curtin discloses “date and time associated with the
`
`current broadcast,” it provides no information as to the source of the “date and time.”
`
`
`
`14
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`It provides no information as to which “date and time” are required. Compare
`
`EX1010, 2:45-46 (“date and time associated with the current broadcast”) with 4:52-
`
`53 (“time of the broadcast”). In addition, it provides no accounting for delays
`
`between the broadcast and receipt of “date and time” that can occur when using
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`RBDS or situations where the user tunes in after a broadcast has begun. Further,
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`Curtin’s sole purpose for “date and time” information was to ensure that the user
`
`could purchase the correct version of the song, and all other identification
`
`information is static (e.g., artist, title, album name, label, source). As a result, a
`
`POSITA would have understood that “date and time” in Curtin refers to the
`
`broadcaster’s records indicating the version of a song played at a particular date and
`
`time (POR 39-40 (citing EX2020, ¶76)), the date the song was recorded (id.), and/or
`
`potentially the duration of the song. As a result, Curtin does not teach or suggest
`
`data that enables unique identification of a broadcast segment as required by claim
`
`16. Id.
`
` GROUND 2: NO MOTIVATION TO COMBINE CURTIN AND
`CROSBY AS PROPOSED BY PETITIONER AND NO
`REASONABLE EXPECTATION OF SUCCESS
`Patent Owner detailed why Curtin and Crosby are incompatible with each
`
`other in terms of (i) design, (ii) motivation, and (iii) implementation. POR 49-50.
`
`As a result, Patent Owner explained, “[a] POSITA would not have been motivated
`
`
`
`15
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`to combine the teachings of Curtin and Crosby, and would not have had a reasonable
`
`expectation of success in doing so.” POR 48. In Reply, Petitioner makes no effort
`
`to address the competing designs and motivations that militate against the claimed
`
`combination. Reply 15-17. Instead, Petitioner’s flawed focus rests merely on the
`
`feasibility of implementing a Curtin-Crosby combination. Reply 15-17. Yet the
`
`differences between Curtin and Crosby show that a POSITA would not have been
`
`motivated to combine the two and would not have had an expectation of success in
`
`making the combination. POR 49-50.
`
`A. Curtin does not comport with Crosby’s wireless transmitter
`Patent Owner explained that, unlike Crosby, Curtin is designed to avoid
`
`“requir[ing] a wireless transmitter alongside the receiver to communicate the
`
`interactive responses.” POR 50. Petitioner responds that this is wrong and
`
`“irrelevant.” Reply 16-17. In doing so, Petitioner suggests that Crosby requires “a
`
`wireless transmitter alongside the receiver to communicate the interactive
`
`responses.” Reply 16-17. The portion of Curtin upon which Petitioner relies is not
`
`discussing “a wireless transmitter alongside the receiver to communicate the
`
`interactive responses.” That portion states, “[a]t a later point in time, e.g., when the
`
`user is able to establish a network connection 115 via a wireless transceiver that may
`
`be implemented at least in part in the interface microcontroller 112, the extracted
`
`
`
`16
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`music information is transmitted over the network connection 115 to a music server
`
`which is capable of delivering the corresponding music.” EX1010, 4:19-26
`
`(emphasis added). Curtin’s transmitter is simply not “alongside the receiver to
`
`communicate the interactive responses.” Nor could it be. In Crosby, a transmitter
`
`is in constant communication with a server. In Curtin, there is no constant
`
`communication.
`
`B. Crosby does not comport with Curtin’s required memory for
`identification information
`Petitioner argues in Reply that “Crosby is compatible with a memory in the
`
`communication device.” Reply 17. But Petitioner neglects Patent Owner’s
`
`argument concerning the particular type of memory in Curtin, namely a memory
`
`“which stores identification information corresponding to the current media
`
`content.” POR 50. Patent Owner explained that “Crosby requires no such memory.”
`
`POR 50 (emphasis added). This is because “by employing a transmitter that
`
`instantaneously transmits the interactive response to a server,” Crosby “avoids the
`
`need to store anything for later use.” POR 50. Petitioner’s Reply makes no effort
`
`to argue that Crosby is compatible with this type of memory.
`
`C.
`
`Petitioner has changed it argument in reply, implicitly conceding
`the defects
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