`
`
`Filed: September 28, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SONOS, INC.,
`Patent Owner.
`
`_________________
`
`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`_________________
`
`DECLARATION OF HARRY BIMS IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`GOOGLE EXHIBIT 1003
`
`Page 1 of 97
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`

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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`
`TABLE OF CONTENTS
`I.
`Introduction ...................................................................................................... 1
`II. Qualifications ................................................................................................... 2
`III. Materials Considered ....................................................................................... 6
`IV. The Level of Ordinary Skill in the Art ............................................................ 9
`V.
`Legal Understanding ...................................................................................... 11
`VI. Claim Construction ........................................................................................ 14
`VII. The Prior Art .................................................................................................. 15
`A. Overview of Al-Shaykh ...................................................................... 16
`B. Overview of Qureshey ........................................................................ 19
`C. Overview of Other Art ........................................................................ 25
`VIII. Overview of the ’615 Patent .......................................................................... 27
`IX. Statement of Precise Relief Requested for Each Claim Challenged ............. 29
`X.
`The Challenged Claims Are Unpatentable .................................................... 29
`A.
`Independent Claims 1, 13, and 25 ....................................................... 29
`1.
`Combining Al-Shaykh and Qureshey (Ground I) ..................... 30
`2.
`Al-Shaykh and Qureshey Disclose Every Element of
`Claim 1 (Ground I) .................................................................... 35
`a.
`Element [1-a] .................................................................. 35
`b.
`Element [1-b] .................................................................. 36
`c.
`Element [1-c] .................................................................. 40
`d.
`Element [1-d] .................................................................. 41
`e.
`Element [1-e] .................................................................. 45
`f.
`Element [1-f] ................................................................... 46
`
`i
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`2.
`
`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`g.
`Element [1-g] .................................................................. 52
`Element [1-h] .................................................................. 59
`h.
`Element [1-i] ................................................................... 61
`i.
`Claims 13 and 25....................................................................... 64
`3.
`B. Dependent Claims 6-12, 18-24, 27-29 ................................................ 68
`1.
`Claim 6 ...................................................................................... 68
`a.
`[6-a] ................................................................................. 68
`b.
`[6-b] ................................................................................ 70
`Claim 7 ...................................................................................... 71
`a.
`[7-a] ................................................................................. 71
`b.
`[7-b] ................................................................................ 72
`Claim 8 ...................................................................................... 73
`a.
`[8-a] ................................................................................. 73
`b.
`[8-b] ................................................................................ 73
`Claim 9 ...................................................................................... 74
`4.
`Claim 10 .................................................................................... 75
`5.
`Claim 11 .................................................................................... 75
`6.
`Claim 12 .................................................................................... 76
`7.
`Claims 18-24 and 27-29 ............................................................ 76
`8.
`C. Dependent Claims 2 and 14 ................................................................ 77
`1.
`Ramsay ...................................................................................... 77
`2.
`A POSA would have been motivated to add Ramsay to
`any of Grounds I-IV .................................................................. 81
`
`3.
`
`ii
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`3.
`
`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`Claim 2 ...................................................................................... 85
`a.
`[2-a] ................................................................................. 85
`b.
`[2-b] ................................................................................ 87
`c.
`[2-c] ................................................................................. 88
`Claim 14 .................................................................................... 89
`4.
`XI. Conclusion ..................................................................................................... 89
`
`
`
`
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`iii
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`
`TABLE OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 9,967,615 to Coburn (“the ’615 patent”)
`
`Ex. 1002
`
`’615 Patent Prosecution History (U.S. App. No. 14/628,952)
`
`Ex. 1003 Declaration of Dr. Harry Bims (“Bims”)
`
`Ex. 1004 Curriculum Vitae of Dr. Harry Bims
`
`Ex. 1005 U.S. Patent Publ. No. 2005/0251566 to Weel (“Weel”)
`
`Ex. 1006 U.S. Patent No. 8,799,496 to Phillips et al. (“Phillips”)
`Ex. 1007 U.S. Patent Publ. No. 2011/0131520 to Al-Shaykh et al. (“Al-
`Shaykh”)
`
`Ex. 1008 U.S. Patent No. 8,050,652 to Qureshey et al. (“Qureshey”)
`
`Ex. 1009 U.S. Patent No. 8,724,600 to Ramsay et al. (“Ramsay”)
`
`Ex. 1010 Deposition Testimony Sonos’ Expert, Dr. Douglas Schmidt, in
`Sonos, Inc. v. Google LLC, 6:20-cv-00881
`
`Ex. 1011 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Dkt. 60, Sonos’ Claim
`Construction Brief (W.D. Tex. April 27, 2021)
`
`Ex. 1012 Sonos’ List of Proposed Constructions exchanged in Sonos, Inc. v.
`Google LLC, 6:20-cv-00881 (W.D. Tex. April 2, 2021)
`
`Ex. 1013 Sonos Infringement Contentions exchanged in Sonos, Inc. v. Google
`LLC, 6:20-cv-00881
`
`Ex. 1014 U.S. Patent No. 8,935,580 to Bims
`
`Ex. 1015 U.S. Patent No. 8,468,426 to Bims
`Ex. 1016 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Markman Hearing
`Transcript (W.D. Tex. August 10, 2021)
`
`iv
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`Ex. 1017 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Preliminary
`Constructions Order (W.D. Tex. August 9, 2021)
`
`Ex. 1018 Scheduling Order, Sonos, Inc. v. Google LLC, 6:20-cv-00881-ADA
`(W.D. Tex. Feb. 11, 2021), ECF No. 48
`
`Ex. 1019 Declaration of Douglas C. Schmidt, Sonos, Inc. v. Google LLC, 6:20-
`cv-00881-ADA (W.D. Tex. April 27, 2021), ECF No. 60-24
`
`Ex. 1020
`
`In re: Google LLC, Case No. 2021-170, Order Granting Petition for
`Writ of Mandamus (Fed. Cir. 2021)
`
`Ex. 1021 U.S. Patent No. 8,611,317 to Banerjea
`
`Ex. 1022 U.S. Patent No. 8,184,641 to Alt et al.
`
`Ex. 1023 Shiann-Ysong Sheu and Chih-Chiang Wu, Dynamic access point
`approach (DAPA) for IEEE 802.11 wireless LANs, Gateway to 21st
`Century Communications Village. VTC 1999-Fall. IEEE VTS 50th
`Vehicular Technology Conference (Cat. No. 99CH36324), 1999, pp.
`2646-265.
`
`Ex. 1024 Correspondence to Sonos (September 27, 2021)
`
`
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`v
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`
`I, Dr. Harry Bims, declare as follows:
`
`I.
`
`Introduction
`1.
`I have been retained on behalf of Google LLC (“Google”) for the
`
`above-captioned inter partes review (IPR) proceeding. I am being compensated for
`
`my time in connection with this IPR at my standard hourly consulting rate. I
`
`understand that this proceeding involves U.S. Patent No. 9,967,615 (“the ’615
`
`patent”) titled “Networked Music Playback” by Arthur Coburn, IV, and Joni
`
`Hoadley, and that the ’615 patent is currently assigned to Sonos Inc.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’615
`
`patent filed on February 23, 2015. I understand that the ’615 patent has been
`
`provided as Ex-1001. I will cite to the specification using the following format:
`
`’615 patent, 1:1-10. This example citation points to the ’615 patent specification at
`
`column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’615
`
`patent. I understand that the file history has been provided as Ex-1002.
`
`4.
`
`I understand that the ’615 patent has a filing date of February 23,
`
`2015, but claims priority to the filing date of its parent application, U.S. Patent No.
`
`9,654,821, which is December 30, 2011. I am informed by Google’s counsel that
`
`December 30, 2011, is the ’615 patent’s earliest possible priority date.
`
`
`
`1
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`In preparing this Declaration, I have also reviewed and am familiar
`
`5.
`
`with the following prior art used in the Petition for Inter Partes Review of the ’615
`
`patent and/or in my declaration below:
`
`Name
`
`U.S. Pat./Pub. Number Filing Date
`
`Publication Date
`
`Al-Shaykh 2011/0131520
`
`Nov. 29, 2010
`
`Jun. 2, 2011
`
`Qureshey
`
`8,050,652
`
`Nov. 27, 2006
`
`Apr. 19, 2007
`
`Phillips
`
`8,799,496
`
`Jul. 19, 2010
`
`May 10, 2012
`
`Ramsay
`
`8,724,600
`
`Jan. 7, 2009
`
`Jul. 16, 2009
`
`
`
`6.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’615 patent and the above-noted references that form
`
`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`
`Review of the ’615 patent.
`
`II. Qualifications
`7.
`I have worked extensively in the field of digital communications and
`
`network playback systems. I have studied telecommunications and systems
`
`engineering since approximately 1981. Further, I have over twenty (20) years of
`
`industry experience in telecommunications, including wireless communications.
`
`During this period, I have designed and implemented various products that involve
`
`technologies related to both wired and wireless networking protocols and
`
`
`
`2
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`Case No. IPR2021-01563
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`networked media playback systems. In addition, I am a named inventor on twenty-
`
`three (23) U.S. patents relating to communications networks, including the
`
`streaming of multimedia content from a server to a client device.
`
`8.
`
`I am the sole inventor of U.S. Patent 8,935,580, and U.S. Patent
`
`8,468,426, both of which are entitled “Multimedia-Aware Quality-of-Service and
`
`Error Correction Provisioning.” The field of invention for both of these patents
`
`relates to “the field of quality-of-service (QoS) maintenance or enhancement over a
`
`data network. More specifically, the invention is in one exemplary aspect directed
`
`to providing packets in a media stream with their own QoS and forward error
`
`correction (FEC) mechanism.” Ex. 1014, 1:27-32; Ex. 1015, 1:18-23. These
`
`patents describe related technology that includes “a generalized three node
`
`transmission stream sequence as known in the prior art,” in which “[a] media
`
`stream 202 is transmitted from an application server 206 to a base station 208; the
`
`base station transmits the media stream to the mobile station 210.” Ex. 1015, 2:47-
`
`51. The media streams in this related technology are used to transport packets with
`
`different media types, such as video or audio codec encodings. Id., 1:60-64.
`
`9.
`
`The patents describe as an aspect of their invention “evaluating at the
`
`radio access network, data packets received from an application server, to identify
`
`ones of a plurality of different application-layer frame types contained therein.”
`
`Id., 12:16-19. These application-layer frame types include application themes such
`
`
`
`3
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`U.S. Patent No. 9,967,615
`as “home entertainment,” and are generated by an application server that maintains
`
`a central database that “comprises a listing of multimedia content (e.g., video,
`
`audio, text, etc.)..” Id., 13:17-23; 27:3-11.
`
`10.
`
`I received a BS in Computer and Systems Engineering from
`
`Rensselaer Polytechnic Institute in 1985. In 1988, I received an MS in Electrical
`
`Engineering from Stanford University. In 1993, I received a Ph.D. in Electrical
`
`Engineering, also from Stanford University. As a graduate student at Stanford
`
`University, I studied the principles of wired and wireless communications theory,
`
`including physical layer and medium access control layer protocols, data
`
`modulation and demodulation, signal processing, channel estimation, equalization,
`
`filtering, precoding, synchronization, and trellis coding. My graduate research
`
`focused on a method for improving the reliability of wireless communication links
`
`using advanced signal processing. My Ph.D. thesis at Stanford addressed the
`
`application of trellis coding and precoding to a wireless communication system,
`
`and was titled “Trellis Coding for Multi-Level, Partial Response Continuous Phase
`
`Modulation with Precoding.”
`
`11. After receiving my Ph.D. in 1993, I worked for Glenayre
`
`Technologies – Wireless Access Group, where I worked on applications for
`
`wireless communication, including inventing, designing, and building a patented
`
`two-way pager test system and co-developing a wireless application protocol. The
`
`
`
`4
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`U.S. Patent No. 9,967,615
`pager test system was used in early field trials of a nationwide narrowband PCS
`
`network being developed by SkyTel.
`
`12.
`
`In January of 1999, I launched a technology consulting company,
`
`Protocomm Systems, LLC. This company focuses on the development of advanced
`
`wireless communications protocols, and software implementations of those
`
`protocols, for wireless product companies. From 1999 to 2001, I was the Director
`
`of Software Architecture for Symmetry Communications Systems. In this position,
`
`I was responsible for improving the software architecture design and for the
`
`implementation of the company’s core SGSN (Serving GPRS Support Node) and
`
`GGSN (Gateway GPRS Support Node) products for the GPRS (Generic Packet
`
`Radio Services) market. I also held management responsibility for the Firmware,
`
`Hardware, Performance, and Systems Engineering Groups. Since the company was
`
`an OEM supplier to the marketplace, I provided management support of early field
`
`trials of the company products on a global basis.
`
`13. From March 2001 through December 2001, I was an Entrepreneur in
`
`Residence at Bay Partners. Bay Partners is an early-stage venture capital company
`
`located in Silicon Valley. My responsibilities there included reviewing business
`
`plans from prospective companies seeking funding and creating a fundable
`
`business plan of my own for an innovative 802.11 wireless network. In late 2001, I
`
`developed a business plan for building network infrastructure for 802.11 enterprise
`
`
`
`5
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`U.S. Patent No. 9,967,615
`networks, and founded AirFlow Networks, Inc. where I invented and received
`
`several patents on its core technology relating to the 802.11 specification.
`
`14.
`
`I have been a member of the Institute of Electrical and Electronics
`
`Engineers (“IEEE”) for more than thirty years. The IEEE is a U.S.-based,
`
`international organization of more than 400,000 engineers and is the world’s
`
`largest technical professional society, with locations in more than 160 countries. I
`
`am currently a Senior Member of the IEEE and serve in a variety of leadership
`
`roles within their 802 Committee, which defines protocol standards for Ethernet,
`
`WiFi, and a variety of other wired and wireless protocols that are in commercial
`
`use globally. I am currently a voting member of the IEEE 802.11 Working Group
`
`and Technical Editor for the IEEE 802.11b Task Group and the IEEE 802.15.16t
`
`Task Group.
`
`15.
`
`I am currently an expert consultant for Protocomm Systems, LLC and
`
`Bims Laboratories, LLC, both of which I founded. The services I provide include
`
`consulting in IEEE 802 standards setting, protocol simulation and implementation,
`
`technology assessments, engineering lab testing, and product analysis.
`
`III. Materials Considered
`16.
`In forming my opinions, I have reviewed the following documents,
`
`and any other document cited in this declaration:
`
`
`
`6
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 9,967,615 to Coburn (“the ’615 patent”)
`
`Ex. 1002
`
`’615 Patent Prosecution History (U.S. App. No. 14/628,952)
`
`Ex. 1004 Curriculum Vitae of Dr. Harry Bims
`
`Ex. 1005 U.S. Patent Publ. No. 2011/0131520 to Weel (“Weel”)
`
`Ex. 1006 U.S. Patent No. 8,799,496 to Phillips et al. (“Phillips”)
`Ex. 1007 U.S. Patent Publ. No. 2011/0131520 to Al-Shaykh et al. (“Al-
`Shaykh”)
`
`Ex. 1008 U.S. Patent No. 8,050,652 to Qureshey et al. (“Qureshey”)
`
`Ex. 1009 U.S. Patent No. 8,724,600 to Ramsay et al. (“Ramsay”)
`
`Ex. 1010 Deposition Testimony Sonos’ Expert, Dr. Douglas Schmidt, in
`Sonos, Inc. v. Google LLC, 6:20-cv-00881
`
`Ex. 1011 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Dkt. 60, Sonos’ Claim
`Construction Brief (W.D. Tex. April 27, 2021)
`
`Ex. 1012 Sonos’ List of Proposed Constructions exchanged in Sonos, Inc. v.
`Google LLC, 6:20-cv-00881
`
`Ex. 1013 Sonos Infringement Contentions exchanged in Sonos, Inc. v. Google
`LLC, 6:20-cv-00881
`
`Ex. 1014 U.S. Patent No. 8,935,580 to Bims
`
`Ex. 1015 U.S. Patent No. 8,468,426 to Bims
`Ex. 1016 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Markman Hearing
`Transcript (W.D. Tex. August 10, 2021)
`
`Ex. 1017 Sonos, Inc. v. Google LLC, 6:20-cv-00881, Preliminary
`Constructions Order
`
`Ex. 1018 Scheduling Order, Sonos, Inc. v. Google LLC, 6:20-cv-00881-ADA
`(W.D. Tex. Feb. 11, 2021), ECF No. 48
`
`
`
`7
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`Ex. 1019 Declaration of Douglas C. Schmidt, Sonos, Inc. v. Google LLC, 6:20-
`cv-00881-ADA (W.D. Tex. April 27, 2021), ECF No. 60-24
`
`Ex. 1020
`
`In re: Google LLC, Case No. 2021-170, Order Granting Petition for
`Writ of Mandamus (Fed. Cir. 2021)
`
`Ex. 1021 U.S. Patent No. 8,611,317 to Banerjea
`
`Ex. 1022 U.S. Patent No. 8,184,641 to Alt et al.
`
`Ex. 1023 Shiann-Ysong Sheu and Chih-Chiang Wu, Dynamic access point
`approach (DAPA) for IEEE 802.11 wireless LANs, Gateway to 21st
`Century Communications Village. VTC 1999-Fall. IEEE VTS 50th
`Vehicular Technology Conference (Cat. No. 99CH36324), 1999, pp.
`2646-265.
`
`Ex. 1024 Correspondence to Sonos (September 27, 2021)
`
`
`
`17.
`
`I have also relied on my education, experience, research, training, and
`
`knowledge in the relevant art, and my understanding of any applicable legal
`
`principles described in this declaration.
`
`18. All of the opinions contained in this declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. My opinions
`
`have also been guided by my understanding of how a person of ordinary skill in the
`
`art would understand that the claims of the ’615 patent at the time of the alleged
`
`invention. For purposes of this declaration, I have been asked to assume that the
`
`date of the alleged invention is the earliest claimed priority date: December 30,
`
`2011.
`
`
`
`8
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`Case No. IPR2021-01563
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`I reserve the right to supplement and amend any of my opinions in
`
`19.
`
`this declaration based on documents, testimony, and other information that
`
`becomes available to me after the date of this declaration.
`
`IV. The Level of Ordinary Skill in the Art
`20.
`In rendering the opinions set forth in this declaration, I have been
`
`asked to consider the ’615 patent’s claims and the prior art through the eyes of a
`
`person of ordinary skill in the art. I considered factors such as the educational level
`
`and years of experience of those working in the pertinent art, the types of problems
`
`encountered in the art, the teachings of the prior art, patents and publications of
`
`other persons or companies, and the sophistication of the technology.
`
`21.
`
`I have been instructed to assume a person of ordinary skill in the art is
`
`not a specific real individual, but rather a hypothetical individual having the
`
`qualities reflected by the factors discussed above.
`
`22. Taking these factors into consideration, it is my opinion that a person
`
`of ordinary skill in the art of the ’615 patent as of its earliest priority date, would
`
`have had a bachelor’s degree in physics, mechanical engineering, electrical
`
`engineering, or audio engineering (or equivalent experience), and three years of
`
`experience designing or implementing networked wireless systems related to
`
`streaming media over the Internet. With more education, for example, postgraduate
`
`
`
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`degrees and/or study, less experience is needed to attain an ordinary level of skill
`
`in the art. Similarly, more experience can substitute for formal education.
`
`23. By December 30, 2011, I was at least a person of ordinary skill in the
`
`art. I held a B.S. in Computer and Systems Engineering from Rensselaer
`
`Polytechnic Institute (1985), a M.S. in Electrical Engineering from Stanford
`
`University (1988), and a Ph.D. in Electrical Engineering, also from Stanford
`
`University (1993). From 1993-2011, I had extensive work experience in wireless
`
`communication systems, including inventing, designing, and building a patented
`
`two-way pager test system and co-developing a wireless application protocol; and
`
`developed advanced wireless communications protocols for wireless product
`
`companies, as explained above in paragraphs 10-13.
`
`24. Sonos’s expert proposed a slightly different level of ordinary skill in
`
`the art. Specifically, he proposed that the level of skill in the art for the ’615 patent
`
`should be “a person having the equivalent of a four-year degree from an accredited
`
`institution (typically denoted as a B.S. degree) in computer science, computer
`
`engineering, electrical engineering, or an equivalent thereof, and approximately 2-
`
`4 years of professional experience in the fields of networking and network-based
`
`systems or applications, such as consumer audio systems, or an equivalent level of
`
`skill, knowledge, and experience.” However, the differences between the level of
`
`ordinary skill in the art are minor and immaterial to my opinions.
`
`
`
`10
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`V. Legal Understanding
`25. For purposes of this declaration, I have been asked to opine only on
`
`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`
`issues regarding obviousness under 35 U.S.C. § 103. I have been informed of the
`
`following legal standards, which I have applied in forming my opinions.
`
`26.
`
`I have been asked to provide my opinions as to whether the cited prior
`
`art anticipates or renders obvious the elements of claims 1-2, 6-14, 18-25, and 27-
`
`29 of the ’615 patent from the perspective of a person of ordinary skill in the art at
`
`the ’615 patent’s priority date in 2011, as described in more detail below.
`
`27. For purposes of this declaration, I have been informed and understand
`
`certain aspects of the law as it relates to my opinions.
`
`28.
`
`I have been advised and understand that there are two ways in which
`
`prior art may render a patent claim unpatentable. First, the prior art can
`
`“anticipate” the claim. Second, the prior art can make the claim “obvious” to a
`
`person of ordinary skill in the art. I understand that for an invention claimed in a
`
`patent to be patentable, it must not be anticipated and must not be obvious based
`
`on what was known before the invention was made.
`
`29.
`
`I have been advised and understand the information used to evaluate
`
`whether an invention was new and not anticipated or obvious when made is
`
`generally referred to as “prior art.” I understand that prior art includes patents and
`
`printed publications that existed before the earliest filing date of the patent (which I
`
`
`
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
`have been informed is called the “effective filing date”). I have been informed and
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`understand that a patent or published patent application is prior art if it was filed
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`before the effective filing date of the claimed invention and that a printed
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`publication is prior art if it was publicly available before the effective filing date.
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`30.
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`I have been advised and understand that a dependent claim is a patent
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`claim that refers back to another patent claim. I have been informed and
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`understand that a dependent claim includes all of the limitations of the claim to
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`which it refers.
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`31.
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`I have been advised and understand that a patent claim may be invalid
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`as anticipated under 35 U.S.C. § 102 if a prior art reference discloses each element
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`of the claimed subject matter.
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`32.
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`I have been advised and understand that a patent claim may be invalid
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`as obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`claimed and the prior art are such that the claimed subject matter as a whole would
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`have been obvious to a person of ordinary skill in the art at the time the invention
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`was made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art, (2) the level of ordinary skill in the field of the invention, (3) the
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`differences between the claimed invention and the prior art, and (4) any objective
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`evidence of non-obviousness (which I have been informed may also be called
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`“secondary considerations”).
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`33.
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`I have also been advised and understand that, where a party alleges
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`obviousness based on a combination of references, that party must identify a
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`reason why a person skilled in the art would have been motivated to combine the
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`asserted references in the manner recited in the claims and to explain why one
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`skilled in the art would have had a reasonable expectation of success in making
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`such combinations.
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`34.
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`I have been advised and understand that the law permits the
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`application of “common sense” in examining whether a claimed invention would
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`have been obvious to a person skilled in the art. For example, I have been advised
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`that combining familiar elements according to known methods and in a predictable
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`way may suggest obviousness when such a combination would yield nothing more
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`than predictable results. I understand, however, that a claim is not obvious merely
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`because every claim element is disclosed in the prior art and that a party asserting
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`obviousness must still provide a specific motivation to combine the references as
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`recited in the claims and explain why one would have reasonably expected to
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`succeed in doing so.
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`35.
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`I have been advised and understand that two references are considered
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`to be in the same field of art when the references are either (1) in the same field of
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`endeavor, regardless of the problems they address, or (2) reasonably pertinent to
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`the particular problem being solved by the inventor in his patent.
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`36.
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`I am not aware of any evidence of secondary considerations that
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`would support a determination of non-obviousness of the claimed subject matter in
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`the ’615 patent.
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`37.
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` I have been informed that in inter partes review proceedings, such as
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`this one, the party challenging the patent bears the burden of proving
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`unpatentability by a preponderance of the evidence. I understand that a
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`preponderance of the evidence means “‘more likely than not.”
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`VI. Claim Construction
`38.
`I have been informed that the Board construes claims consistent with
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the standard
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`used in district court litigation. 37 C.F.R. § 42.100(b). I was further informed that
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`claims should only be construed to the extent necessary to resolve a controversy.
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`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017).
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`39. Google’s counsel has informed me that the District Court for the
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`Western District of Texas held that the following terms that appear in the ’615
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`patent should be construed to their plain and ordinary meanings: “multimedia,”
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`“network interface,” “playback device,” and “local area network.” Exs. 1016-1017.
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`Additionally, Google’s counsel has informed me that, although dropped from
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`consideration before argument and ruling and thus not construed by the district
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`court, Sonos and the defendants agreed to construe “one or more transport controls
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`to control playback” as “one or more user input elements, each enabling control of
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`a respective playback-related function.” Ex. 1012 at 4. Additionally, Google’s
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`counsel informed me that Sonos proposed construing “wireless communication
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`interface” as “physical component of a device that provides a wireless
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`interconnection with a local area network.” Id. at 3.
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`40.
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`I am further informed by Google’s counsel that Sonos asserted the
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`plain and ordinary meaning for the following claim terms: “first cloud servers,”
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`“second cloud servers of a streaming content service,” and “playback queue.”
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`Google’s counsel has advised me to adopt the constructions of the District Court
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`for the Western District of Texas and Sonos’ claim constructions for the purposes
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`of this IPR.
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`VII. The Prior Art
`41. The ’615 patent was filed on February 23, 2015, and claims priority to
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`the filing date of U.S. Non-Provisional Patent No. 9,654,821, which is December
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`30, 2011. Google’s counsel has informed me that December 30, 2011, is the ’615
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`patent’s earliest possible priority date.
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`A. Overview of Al-Shaykh
`42. U.S. Patent Application Publication No. 2011/0131520 (Ex-1007,
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`Case No. IPR2021-01563
`U.S. Patent No. 9,967,615
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`“Al-Shaykh”) was published on June 2, 2011, and filed on November 29, 2010,
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`and claims priority to provisional application no. 61/283,426, filed on December 2,
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`2009.
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`43. Al-Shaykh broadly describes its invention "generally relates to a
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`system and a method for transferring media content from a mobile device to a
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`home network. More specifically, the present invention relates to a system and a
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`method which enable a media application on the mobile device to share media
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`content with rendering devices in the home network.” Id., [0002]. Al-Shaykh
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`informs the reader that at the time “[m]edia home networking is gaining popularity.
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`An increasing number of affordable rendering devices, such as televisions, stereos,
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`gaming consoles, and digital photo frames, may support home networking
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`standards . . . Home networking standards allow the rendering devices to connect
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`to a home network using a suitable connection, such as IEEE 802.11, wired
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`Ethernet cables, or FireWire.” Id., [0004]. It goes on to say “[r]endering devices in
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`the home network may discover, may access and/or may play media content
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`accessible using the home network. For example, accessible media content may
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`reside on a media server device . . . accessible using the home network. A network-
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`capable rendering device may present a user interface by which a user may
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`discover, may select, may render and/or may control the accessible media content
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`using the rendering device. Alternatively, an external control point may be used to
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`discover and select the media content for rendering on an available rendering
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`device. The external control point may reside on a PC, a laptop co