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`IPR2021-01563
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`SONOS, INC.,
`Patent Owner
`__________________
`
`U.S. Patent No. 9,967,615
`__________________
`
`Inter Partes Review Case No.: IPR2021-01563
`__________________
`
`PATENT OWNER RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,967,615
`
`
`Pursuant to 37 CFR § 42.120(a), Patent Owner submits the following Patent
`
`Owner Response to the petition.
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`
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`TABLE OF CONTENTS
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`IPR2021-01563
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`
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`OVERVIEW OF ALLEGED PRIOR ART ................................................... 5
`A. Al-Shaykh ............................................................................................ 5
`B.
`Qureshey .............................................................................................. 7
`C.
`Phillips ............................................................................................... 11
`D.
`Ramsay ............................................................................................... 12
`E.
`Other Art ............................................................................................ 12
`III. THE ‘615 PATENT ..................................................................................... 12
`IV. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 18
`V.
`CLAIM CONSTRUCTION ......................................................................... 19
`A.
`“Transferring Playback” .................................................................... 20
`B.
`“Local Playback Queue” .................................................................... 22
`VI. THE CHALLENGED CLAIMS ARE PATENTABLE .............................. 26
`A.
`Independent Claims 1, 13, and 25 (Grounds I-II) .............................. 26
`Ground I: No Motivation to Combine Al-Shaykh and
`1.
`Qureshey .................................................................................. 26
`Ground I: The “Transferring Playback”/“Transfer
`Playback” Aspects of Limitation 1-c, 1-d, 1-e ........................ 31
`Ground I: Limitation 1-f .......................................................... 35
`a.
`No Motivation to Combine for Limitation 1-f .............. 35
`b.
`Qureshey Does Not Teach Limitation 1-f ..................... 45
`Ground I: Limitation 1-g ......................................................... 49
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`2.
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`3.
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`4.
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`i
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`IPR2021-01563
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`5.
`6.
`7.
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`Ground II: No Motivation to Combine for Limitation 1-g ...... 53
`Ground I: Limitation 1-h ......................................................... 58
`Ground I: Limitation 1-i .......................................................... 58
`a.
`Al-Shaykh ...................................................................... 59
`b.
`Qureshey ........................................................................ 60
`Claims 13 and 25 ..................................................................... 61
`8.
`Grounds I-II: Dependent Claims 6-12, 18-24, 27-29 ......................... 61
`1.
`Claim 6 ..................................................................................... 62
`2.
`Claim 9 ..................................................................................... 62
`3.
`Claim 11 ................................................................................... 63
`4.
`Claim 18-24 and 27-29 ............................................................ 63
`Grounds III-IV: Dependent Claims 2 and 14 ..................................... 64
`1.
`No Motivation to Combine ...................................................... 64
`2.
`Claim 2 & 14 ........................................................................... 67
`VII. CONCLUSION ............................................................................................ 68
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`B.
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`C.
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`ii
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`IPR2021-01563
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`TABLE OF AUTHORITIES
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`CASES
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................. passim
`Ex Parte Norwalk ,
`2022 WL 1315407 (P.T.A.B. Apr. 28, 2022) .................................................... 39
`Ex Parte Rinkevich,
`2007 WL 1552288 (B.P.A.I. May 29, 2007) ..................................................... 39
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) ................................................................... 31, 40
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ........................................................................... 36
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App'x 755 (Fed. Cir. 2015) .................................................................... 37
`Purdue Pharma L.P. v. Depomed, Inc.,
`643 F. App’x 960 (Fed. Cir. 2016) .............................................................. 26, 40
`Shire LLC v. Amneal Pharms., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) ........................................................................... 2
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed.Cir. 2019) .......................................................................... 27
`
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340, (Fed. Cir. 2000) ........................................................................ 41
`
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`iii
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`IPR2021-01563
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`TABLE OF EXHIBITS
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`Exhibit
`
`Description
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`Ex. 1001 U.S. Patent No. 9,967,615 (“the ‘615 Patent”)
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`Ex. 1002
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`‘615 Patent Prosecution History (U.S. App. No. 14/628,952)
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`Ex. 1003 Declaration of Dr. Harry Bims (“Bims”)
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`Ex. 1006 U.S. Patent No. 8,799,496 (“Phillips”)
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`Ex. 1007 U.S. Patent Publ. No. 2011/0131520 (“Al-Shaykh”)
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`Ex. 1008 U.S. Patent No. 8,050,652 (“Qureshey”)
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`Ex. 1009 U.S. Patent No. 8,724,600 (“Ramsay”)
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`Ex. 2018 Declaration of Dr. Douglas C. Schmidt
`Curriculum Vitae of Dr. Douglas C. Schmidt
`Ex. 2019
`Ex. 2020 Google’s Responsive Claim Construction Brief, Sonos, Inc. v. Google
`LLC, 3:20-cv-06754-WHA (N.D. Cal. Apr. 4, 2022)
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`Ex. 2021 Deposition Testimony of Dr. Harry Bims (June 29, 2022)
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`Ex. 2022 U.S. Patent Application Publication 2011/0004330 (“Rothkopf”)
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`Ex. 2023 U.S. Patent Application Publication 2014/0075308 (“Sanders”)
`Ex. 2024 Deposition Testimony of Google’s Expert, Dr. Christos Kyriakakis, Sonos,
`Inc. v. Google LLC, 3:20-cv-06754-WHA (Mar. 1, 2022)
`Expert Report of Douglas C. Schmidt on Claim Construction, Sonos, Inc.
`v. Google LLC, 3:20-cv-06754-WHA (Mar. 21, 2022)
`Summons to Attend Oral Proceedings Pursuant to Rule 115(1) EPC
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`Ex. 2025
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`Ex. 2026
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`i
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`I.
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`INTRODUCTION
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`IPR2021-01563
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`Petitioner Google LLC (“Google”) alleges claims 1-2, 6-14, 18-25, and
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`27-29 (the “Challenged Claims”) of U.S. Pat. 9,967,615 (Ex.1001) (the “‘615
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`Patent”) are unpatentable based on four separate obviousness grounds.
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`Petition, 2-3. The Board instituted trial on all four grounds. For the reasons
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`set forth herein, Patent Owner Sonos, Inc. (“Sonos”) requests that the Board
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`issue a Final Written Decision confirming the patentability of all the
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`Challenged Claims.
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`None of Google’s obviousness grounds achieve the Challenged Claims,
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`as each proposed combination still misses key claim limitations. This is the
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`case even with Google mischaracterizing the references’ teachings.
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`Google’s Petition and the opinions of its expert, Dr. Bims, are also
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`fraught with impermissible hindsight bias. In this regard, Google’s
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`obviousness challenge to the ‘615 Patent is a textbook example of a petitioner
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`improperly using a patentee’s claims as a roadmap to pick-and-choose
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`disparate elements from the prior art to achieve the limitations of the
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`inventions – a practice that violates well-established Federal Circuit
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`precedent.
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`Google’s engagement in this improper practice is exemplified by the
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`fact that Google’s obviousness grounds with respect to the independent claims
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`are based entirely on three prior art references that were already before the USPTO
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`and the Challenged Claims were allowed over. Ex.1001, 2-3 (listing Qureshey, Al-
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`Shaykh, and Phillips). Because these prior art references are all listed on the face of
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`the ‘615 Patent, the examiner is presumed to have considered them, and thus, Google
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`has the “added burden of overcoming the deference that is due to a qualified
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`government agency presumed to have properly done its job” – an added burden that
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`Google has woefully failed to overcome. Shire LLC v. Amneal Pharms., LLC, 802
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`F.3d 1301, 1307 (Fed. Cir. 2015) (internal quotation marks omitted).
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`Google’s engagement in this improper practice is further exemplified by the
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`fact that the core of all four of Google’s obviousness grounds is the primary
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`reference, Al-Shaykh, which sets forth three different approaches for “transferring
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`media content,” and none of these three approaches achieve the Challenged Claims
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`that require “transferring playback.” As such, Google must modify Al-Shaykh to
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`manufacture an undisclosed and unrelated fourth approach. However, a POSA
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`having common sense would not take a system like Al-Shaykh that already solves a
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`problem – here, in three different ways – to come up with yet another entirely new
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`solution to that problem that fundamentally alters Al-Shaykh’s principles of
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`operation. Such a practice evinces nothing more than hindsight bias.
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`Using Sonos’s claims as a roadmap to improperly concoct an obviousness
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`challenge is not the only well-established obviousness principle that Google and Dr.
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`Bims violate. For instance, they also (i) improperly resort to relying on the ‘615
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`Patent’s own words and motivations to advance some reason why a POSA would
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`have been motivated to make the alleged combinations and modifications set forth
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`in Google’s grounds, (ii) ignore that Al-Shaykh expressly teaches away from the
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`types of systems disclosed in the secondary references that they rely on and the types
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`of modifications that they propose to Al-Shaykh, (iii) disregard that their proposed
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`modifications to Al-Shaykh would change its principles of operation and fail to
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`provide any supported reason why a POSA would have sought to do so, and (iv) fail
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`to consider affirmative reasons why a POSA would not have been motivated to
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`modify Al-Shaykh in the manner they propose, including the benefits lost by their
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`proposed modifications.
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`Aside from improperly engaging in hindsight reasoning to modify Al-Shaykh,
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`Google and Dr. Bims also take untenable interpretations of prior-art teachings and
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`the claim language in an effort to manufacture an obviousness attack on the
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`Challenged Claims.
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`For example, at the core of the Challenged Claims is a limitation reciting
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`“transferring playback from [a] control device to [a] particular playback device ….”
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`In stark contrast, Al-Shaykh merely discloses a mobile device “transferring media
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`content” (e.g., media files) to a rendering device—a function that the ‘615 Patent
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`confirms is distinct from the “transferring playback” function recited in the
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`Challenged Claims. Ex.2018, ¶155-56. Google and Dr. Bims ignore this clear
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`distinction.
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`As yet another example, to support Google’s obviousness grounds, Dr.
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`Bims—who has a (unsuccessful) track record of offering opinions against Sonos’s
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`patents1—takes interpretations of the claim language that are contrary to a POSA’s
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`understanding. For instance, when asked whether “stopping playback means that
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`there was playback at some point” in the context of the independent claims reciting
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`“causing playback at the control device to be stopped,” Dr. Bims remarkably
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`testified “[n]ot necessarily.” Ex.2021, 29:19-30:11; see also id., 32:14-33:1
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`(testifying that “a [POSA] reading this claim does not see written in the claim that
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`playback at the control device is stopped only after playback at the control device
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`had been started.”).
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`Because Google’s positions are fraught with impermissible hindsight bias,
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`premised on contorting the teachings of the prior art, and inconsistent with a POSA’s
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`understanding of the claims, the Board should issue a Final Written Decision
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`confirming the patentability of all the Challenged Claims, thereby confirming that
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`the USPTO was correct in its original decision to grant the ‘615 Patent over the
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`references on which Google’s Petition is based.
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`1 Ex.2021, 13:19-15:22.
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`II. OVERVIEW OF ALLEGED PRIOR ART
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`IPR2021-01563
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`A. Al-Shaykh
`Al-Shaykh discloses techniques for “transferring media content” from a
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`“mobile device” to “rendering devices” in a “home network,” such as a “residential
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`local area network.” Ex.1007, ¶¶2, 14, 78. As background, Al-Shaykh discloses
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`“[t]hree well-known approaches [to] share media content from a mobile device to a
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`home network” and discusses various limitations thereof. Id., ¶¶7-13.
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`To address these limitations, Al-Shaykh discloses techniques for “transferring
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`media content” from a “mobile device” to “rendering devices” in a “home network,”
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`where “a media transfer control, a media transfer indication and a renderer selection
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`control/indication” are displayed “concurrently” in the “user interface of the mobile
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`device.” Id., ¶14.
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`To illustrate, FIG. 2 discloses “user interface 31” of a media application on
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`“mobile device 11” allowing a user to “enable and/or disable transfer” of “media
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`content” from the “media application to a target rendering device” using the “set of
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`controls and indications 35.” Id., ¶¶85, 89. Al-Shaykh’s FIG. 3 illustrates the “set
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`of controls and indications.” Id., ¶99; see also FIGs 4-5.
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`In practice, Al-Shaykh discloses that a user “may enable transfer of the media
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`content to a target rendering device … when the media application [of the mobile
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`device] has the internal state set to ‘PAUSE.’” Id., ¶132. In response, Al-Shaykh
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`discloses that “the media application may change the internal state from ‘PAUSE’
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`to ‘PLAY,’” and “[a]s a result, the media application may begin and/or may resume
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`rendering of the media content on the mobile device 11 substantially simultaneously
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`with the transfer to and/or the rendering of the media content on the target rendering
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`device.” Id.
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`Al-Shaykh discloses three different approaches in which the “mobile device”
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`transfers “media content” to a “target rendering device” with the vast majority of Al-
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`Shaykh’s disclosure focusing on the first and second approaches.
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`In the first approach, Al-Shaykh discloses, “[i]f the ‘media in context’ in the
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`media application is locally stored on the mobile device 11, the media content may
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`be transferred from the mobile device 11 to the target rendering device using the
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`home network 20.” Id., ¶95; see also id., ¶19.
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`In the second approach, Al-Shaykh discloses that a “remote content provider
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`transmits the… media content to the mobile device… and the mobile device
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`transmits [that] media content to the… target rendering device using the home
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`network….” Id., ¶20. In this regard, the “mobile device” relays the “media content”
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`directly to the “target rendering device.” See id., ¶95 (“[M]obile device 11 may
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`relay the media content to the target rendering device using the home network 20,”
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`such that “the media content from the remote content service may flow through the
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`mobile device 11….”).
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`In the third approach, Al-Shaykh’s “mobile device 11 may access the media
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`content stored on a media server in the home network 20,” and then “the mobile
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`device 11 may instruct the target rendering device to obtain the media content
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`directly from the media server in the home network 20 ….” Id., ¶96. In this respect,
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`Al-Shaykh’s “mobile device” facilitates the retrieval of “media content” from a local
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`“media server” in the “home network 20” to “the target render device” without the
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`need for a “remote content service.” Id.; see also id., ¶78 (describing “home network
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`20” as “a residential local area network”), ¶80.
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`B. Qureshey
`Qureshey “relates to the field of audio file transfers and … distribution of
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`audio files over a computer network such as the Internet.” Ex.1008, 1:21-24;
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`FIG.11. In this respect, Qureshey discloses an “intelligent radio device” that can
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`IPR2021-01563
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`operate in two different “modes of operation.” Id., 10:49-50, 16:29-36, cl. 1.
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`In a first “Web Radio mode,” Qureshey discloses an “intelligent radio device”
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`with particular “hardware and software” that can “receive digitized audio from the
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`Web without the need for a personal computer or other expensive equipment.” Id.,
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`7:28-33, 10:49-50.
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`As annotated below, the intelligent radio includes a “display device 112” and
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`“user controls” 116, 118 that are “used to select a Web broadcast and provide
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`information about the selected Web broadcast.” Id., 10:58-63, FIG 1:
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`After a user identifies and selects a given Web broadcast using the intelligent
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`radio’s “user controls” and “display device,” the intelligent radio “receives the Web
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`broadcast” over the Internet. Id., 12:60-64, 13:8-14.
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`In a second, different mode of operation (“playlist mode”), Qureshey
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`discloses an “intelligent radio” in the form of a “network-enabled audio device”
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`“configured for use with other electronic devices.” Id., 16:29-34, cl. 1. In particular,
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`“software on a PC can be used to assign playlists of songs to the network-enabled
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`audio device.” Id., 16:34-36. FIG. 11 illustrates how a playlist is assigned to a
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`“network-enabled audio device”:
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`As shown, playlists are assigned via an Internet Personal Audio Network
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`(“IPAN 1100”) that includes an “IPAN server,” a “PC IPAN client,” and network-
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`enabled audio devices (“device B” and “device A”). Id., 16:56-62. Each of these
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`entities is installed with special “IPAN software” that is used for assigning playlists.
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`Id., 20:61-63, 21:43-46, 21:50-53, 22:36-42, FIG. 15.
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`To illustrate the functionality of this special “IPAN software,” FIG. 17C
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`provides an example display “provided by the PC IPAN client software 1532 and
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`the server site IPAN software 1433,” where “[t]he user can choose the menu option
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`of ‘Make Available On’ to assign the playlist from one device to another[.]” Id.,
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`23:28-30, 24:50-57.
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`After a given playlist has been assigned to a particular audio device,
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`Qureshey’s special “IPAN software” enables a user to “download” the audio files in
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`the given playlist to the audio device. Id., 17:1-2, 17:17-31, 22:47-53.
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`Subsequently, as shown in FIG. 18D, if a user wishes to playback the given playlist
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`on the particular audio device, the user must utilize that audio device’s integrated
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`user controls to select the given playlist. Id., 26:20-33, 26:63-27:15.
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`IPR2021-01563
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`C.
`Phillips
`Phillips relates to “transferring display of video content from one device to
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`another.” Ex.1006, 1:14-15. Phillips discloses that “a mobile, or handheld, device
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`receives user input that initiates transfer of display of video content from the mobile
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`device to a desired renderer located proximate to the mobile device,” and “[t]he
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`mobile device then causes transfer of display of the video content from the mobile
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`device to the desired renderer.” Id., 1:51-56.
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`FIG. 7 below illustrates the operation of Phillips’s system “to provide transfer
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`of display of video content” from a “mobile device” to “one of the renderers.” Id.,
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`9:12-15, FIG. 7.
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`IPR2021-01563
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`D. Ramsay
` Ramsay relates to techniques “for providing media playback in a networked
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`environment.” Ex.1009, 1:7-8. In particular, Ramsay discloses a “wireless speaker
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`group,” such as a “stereo pair[ ],” that “presents a single virtual device interface for
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`receiving playback/control commands directed to the group as a whole ….” Id.,
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`6:18-29. With respect to FIG. 1, Ramsay discloses “wireless speakers 101a and
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`101b” that “are controllable individually, or collectively as a speaker set 101c” and
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`that implement special protocols to operate. Id., 4:60-63, 13:21-36, 15:60-61.
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`E. Other Art
`While Google cites Weel as “other art,” Google does not rely on Weel in this
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`IPR. Thus, Weel is not relevant for this IPR.
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`III. THE ‘615 PATENT
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`The ‘615 Patent claims priority to a patent filing on December 30, 2011 and
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`discloses a “local playback system” that comprises one or more “playback devices”
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`(“zone players”) that connect to a local “data network.” Ex.1001, 1:13-15, 1:66-2:9,
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`2:51-3:13, 5:21-54, 10:64-66, 16:1-8. The “local playback system” can include one
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`or more control devices (sometimes referred to as “controllers”) that also connect to
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`the local “data network” and are capable of controlling the operation of the “local
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`playback system.” Id., 3:17-37, 4:53-5:11.
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`In the “local playback system,” each “playback device” and control device
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`can retrieve multimedia from an Internet-based media source over a wide-area
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`network (e.g., via the local “data network”). Id., 5:38-41, 6:64-7:12, 12:44-67,
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`FIG.6.
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`The ‘615 Patent explains that the “playback devices” can playback
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`multimedia content, such as audio. Id., 1:13-15, 1:66-2:9, 2:51-3:13, 3:28-31, 12:44-
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`67. In this respect, a “playback device” may maintain a “local playback queue” for
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`multimedia that the “playback device” is to playback. Id., 16:20-31, 16:53-57,
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`16:63-17:4. The “playback device” may contain a resource locator (e.g., a URL, an
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`identifier, or other reference) corresponding to a piece of multimedia content (e.g.,
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`audio track) that facilitates the “playback device” accessing that multimedia content
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`for playback from the cloud. Id., 11:62-12:3, 12:53-63, 13:31-40, 15:59-67.
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`The ‘615 Patent explains that a “playback device” can queue one or multiple
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`pieces of multimedia content (e.g., song or playlist) for playback, which a POSA
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`would understand means that the “local playback queue” could contain a single
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`resource locator corresponding to a piece of content or multiple resource locators
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`each corresponding to a respective piece of content. Id., 9:27-31, 10:42-46, 11:65-
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`12:3, 12:49-63, 13:33-40, 15:59-62, 16:63-17:4; Ex.2018, ¶54. Moreover, in
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`example embodiments, a “playback device” queues a single resource locator that
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`corresponds to a playlist of multiple pieces of content. Ex.1001, 12:56-61, 15:59-
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`62.
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`With respect to the disclosed control device, such a device could be a
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`dedicated hardware device that serves as a controller for the “local playback system”
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`(id., 4:53-65, FIG. 3) or such a device could be a user’s personal computing device
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`(e.g., smartphone or tablet) that has a software controller application for the “local
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`playback system” installed thereon enabling the device to serve as a controller for
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`the “local playback system.” Id., 4:66-5:11. When the device is a personal
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`computing device with an installed software controller application, the ‘615 Patent
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`typically refers to the installed application for the “local playback system” as the
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`“controller application” or “local playback controller application.” Id., 15:29-32,
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`15:58-59, 16:9-19, 16:47-52.
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`Section “IV. Example Controller” describes functions that a dedicated
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`hardware controller or “controller application” could perform to control the
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`operations of the “local playback system.” Id., 9:10-10:52; see also id., 4:52-5:11.
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`Such functions include allowing a user to navigate a playlist of multimedia items
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`and cause a “playback device” to queue the playlist for playback. Id., 4:55-60, 9:27-
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`31.
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`As claimed and described in the ‘615 Patent, a control device could be
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`provisioned with software enabling it to playback multimedia at the control device
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`itself and also transfer that playback to one or more “playback devices” of a “local
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`playback system.” Id., 2:51-3:13, 12:44-67, cl. 1, 13, 25. The ‘615 Patent describes
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`one such control device as a user’s personal computing device installed with a “third-
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`party application” or “music-playing application” provisioned with the technology
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`of the invention. Id., 2:10-19, 12:44-13:30, FIG. 7. Section “VI. Example Music
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`Sharing and Playback Configuration” describes functions that such a control device
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`could perform in connection with playing back multimedia at the control device
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`itself and transferring playback to a “playback device.” Id., 12:5-17:20.
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`The ‘615 Patent describes different manners by which a control device
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`transfers playback of media from itself to a “playback device.” In one
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`implementation, the control device transferring playback involves the control device
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`causing at least one resource locator (e.g., a URI, URL, or “track identifier”) to be
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`added to a playback queue of the “playback device,” and the playback device then
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`retrieving the media data corresponding to the resource locator from a cloud server.
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`Id., 12:53-63; see also, id., 14:13-18, 15:51-57, 15:58-67. In this implementation,
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`- 15 -
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`the control device does not provide the media data directly to the playback device.
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`IPR2021-01563
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`Ex.2018, ¶60.
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`A POSA would readily appreciate that the claims of the ‘615 Patent are
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`directed to this implementation, as opposed to any other disclosed implementation.
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`Ex.2018, ¶61. For example, additional limitations of the independent claims make
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`clear that the claimed “transferring playback from the control device to the particular
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`playback device” is not synonymous with the control device merely transmitting or
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`sourcing the media data to the “playback device.” Id.
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`For instance, the independent claims recite that “transferring playback from
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`the control device to the particular playback device” involves causing “one or more
`
`first cloud servers to add multimedia content to a local playback queue on the
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`particular playback device” by “adding, to the local playback queue, one or more
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`resource locators corresponding to respective locations of the multimedia content,”
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`which a POSA would appreciate makes clear that these claims are expressly
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`referring to the above implementation. Id., ¶62.
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`Further, the independent claims confirm that the “control device” does not
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`transmit or otherwise source the media data to the playback device by virtue of the
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`final limitation reciting “the particular playback device playing back the multimedia
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`content comprises the particular playback device retrieving the multimedia content
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`from one or more second cloud servers of a streaming content service and playing
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`- 16 -
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`back the retrieved multimedia content.” Id., ¶63.
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`IPR2021-01563
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`Consistent with the claims, the system architecture shown in Figure 7 enables
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`the user’s personal computing device to communicate with one or more cloud-based
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`servers to facilitate the transfer of playback from the personal computing device to
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`one or more “playback devices” in a “local playback system.” Ex.1001, 12:19-43,
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`15:18-46, 16:1-8, 17:12-20.
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`
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`Independent claim 1 is directed to aspects of these features and
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`recites:
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`- 17 -
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`IPR2021-01563
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`For purposes of this IPR, Sonos agrees that claims 13 and 25 are substantially
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`
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`similar to claim 1. Petition, 45-48.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`For purposes of this IPR, Sonos agrees with the Board’s conclusions regarding
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`the level of skill in the art. Institution Decision, 17-18.
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`- 18 -
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`V. CLAIM CONSTRUCTION
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`IPR2021-01563
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`The parties dispute the meaning of terms relevant to the Challenged Claims in
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`the parallel district-court litigation (“parallel litigation”). No court has issued a final
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`claim construction order, and the disputed terms relevant to the Challenged Claims
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`are as follows:
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`Ex.2018, ¶70.
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`Despite IPRs and district-court litigations now using the same claim
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`construction standard, Google and Dr. Bims deliberately chose not to address these
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`- 19 -
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`proposed constructions, including Google’s proposed construction for “playback
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`IPR2021-01563
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`queue.” Ex.2021, 96:4-18. In fact, Dr. Bims testified that he was instructed to apply
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`his understanding of the plain and ordinary meaning of the terms recited in the
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`Challenged Claims, some of which are inconsistent with Google’s litigation
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`positions, including Google’s construction for “playback queue.”
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`Moreover, Dr. Bims applies a meaning to at least one additional claim term
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`that is not currently in dispute in the parallel litigation (e.g., “transferring playback”),
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`but Dr. Bims’ interpretation is contrary to how a POSA would have understood the
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`term in the context of the ‘615 Patent.
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`A.
`“Transferring Playback”
`Dr. Bims opines that disclosures in Al-Shaykh describing techniques for
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`“transferring media content” allegedly amount to the claimed “transferring
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`playback” (or “causing playback to be transferred”) but fails to expressly specify the
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`meaning that he ascribed to the term “transferring playback,” as claimed. Ex.1003,
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`¶¶94, 104-106.
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`During his deposition, Dr. Bims testified that he applied his “common
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`understanding” of the term “playback,” which refers to “the function of rendering
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`multimedia content.” Ex.2021, 26:20-27:7. In his declaration, however, Dr. Bims
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`equates “transferring playback” to merely “transferring media content,” which is
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`contrary to his common understanding of “playback” and the plain and ordinary
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`- 20 -
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`meaning that a POSA would have applied in the context of the ‘615 Patent at the
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`IPR2021-01563
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`time of invention. Ex.2018, ¶74.
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`In this regard, a POSA would not have equated the claimed function of the
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`control device “transferring playback” to a playback device with the prior art’s
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`function of a control device merely “transferring media content” (e.g., transmitting
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`or sourcing media data) to a playback device (without more). Id., ¶75. Rather, a
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`POSA would have understood from the plain claim language that the control device
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`must be capable of being in a playback (or rendering) state when it “detect[s] a set
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`of inputs to transfer playback” and after such detecting, “caus[e] playback to be
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`transferred from the control device to the particular playback device,” which
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`includes, inter alia, “causing playback at the control device to be stopped” and
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`“causing the particular playback device to playback the multimedia content.” Id.;
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`Limitations 1-d, 1-e, 1-g, 1-i. In other words, a POSA would have understood that
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`the claimed “causing playback to be transferred” necessarily requires causing the
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`transfer of the function of rendering of the multimedia content by the control device.
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`A POSA’s understanding of the term “transferring playback” is further
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`supported by intrinsic evidence. Id., ¶¶76-78. For instance, the ‘615 Patent discloses
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`a control device installed with a media-playing application that can playback (i.e.,
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`render) multimedia and also transfer that playback to one or more “playback
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`devices.” Supra §III.
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`- 21 -
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`IPR2021-01563
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`As one illustrative example, the ‘615 Patent describes how a smartphone
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`equipped with such a “third-party application” transfers its own playback to the
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`user’s home “playback system.” Id., 12:44-53. In this example, the user’s
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`smartphone is rendering multimedia content via a “third party music application,”
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`and the user then “selects an option to continue playing” (or rendering) the
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`multimedia content on a “playback system” that causes the transfer of the rendering
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`of the multimedia content from the user’s smartphone to the “playback system,”
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`which includes the “playback system pick[ing] up” where the smartphone left off
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`before the transfer and “output[ting] that [multimedia] content (e.g., that song) on
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`speakers and/or other playback devices….” Id.; see also, e.g., id., 15:58-65
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`(disclosing how transferring playback can “enable near-seamless ‘handoff’ of music
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`from a portable device to a local playback system.”).
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`B.
`“Local Playback Queue”
`Google asserts that disclosure
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