UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`__________________
`
`Case No. IPR2021-00721
`Patent No. 8,166,081
`
`DECLARATION OF TIM A. WILLIAMS, PhD
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,166,081
`
`Petitioner
`Ex. 1003 - Page 1
`
`

`

`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 4
`
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`
`III. MATERIALS CONSIDERED ........................................................................ 7
`
`IV. LEGAL PRINCIPLES OF ANTICIPATION AND OBVIOUSNESS ........... 7
`
`V. OVERVIEW OF THE ’081 PATENT .......................................................... 10
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 13
`
`VII. CLAIM CONSTRUCTION .......................................................................... 14
`
`A.
`
`B.
`
`Legal Principles and Methodology Applied ....................................... 14
`
`Construction of Specific Terms ........................................................... 15
`
`1.
`
`2.
`
`“media content” ......................................................................... 15
`
`“present … media content” ....................................................... 16
`
`VIII. THE PRIOR ART .......................................................................................... 17
`
`A. U.S. Patent No. 6,349,329 (“Mackintosh”) ......................................... 17
`
`B.
`
`U.S. Patent Application Publication No. 2005/0262542
`(“DeWeese”) ....................................................................................... 20
`
`IX. SUMMARY OF THE GROUNDS ............................................................... 23
`
`X. ANALYSIS .................................................................................................... 23
`
`A. Mackintosh Anticipates Claims 9–11 and 23...................................... 23
`
`1.
`
`2.
`
`3.
`
`Claim 9 ...................................................................................... 23
`
`Claim 10 .................................................................................... 52
`
`Claim 11 .................................................................................... 54
`
`
`
`Petitioner
`Ex. 1003 - Page 2
`
`

`

`4.
`
`Claim 23 .................................................................................... 57
`
`B. Mackintosh Renders Obvious Claims 9-11 and 23 ............................. 57
`
`C.
`
`DeWeese Anticipates Claims 9–11 and 23 ......................................... 58
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 9 ...................................................................................... 58
`
`Claim 10 .................................................................................... 79
`
`Claim 11 .................................................................................... 80
`
`Claim 23 .................................................................................... 81
`
`D. DeWeese Renders Obvious Claims 9–11 and 23 ................................ 83
`
`XI. CONCLUSION .............................................................................................. 84
`
`
`
`
`
`Petitioner
`Ex. 1003 - Page 3
`
`

`

`I, Tim A. Williams, declare as follows:
`
`I.
`
`INTRODUCTION
`I have been retained by Volkswagen Group of America, Inc.
`1.
`
`(“Volkswagen” or “Petitioner”) as an independent expert consultant in this
`
`proceeding before the Patent Trial and Appeal Board (“PTAB”) of the United
`
`States Patent and Trademark Office.
`
`2.
`
`Specifically, Volkswagen has asked me to provide technical
`
`assistance in this inter partes review (“IPR”) of U.S. Patent No. 8,166,081 (“the
`
`’081 Patent”).
`
`3.
`
`This declaration is a statement of my opinions on issues related to the
`
`unpatentability of Claims 9–11 and 23 of the ’081 Patent.
`
`4.
`
`I am being compensated by Volkswagen at the rate of $700 per hour
`
`for my work in this case, including time spent testifying. This rate is my standard
`
`hourly rate for engagements of this nature. I am being reimbursed for reasonable
`
`fees and expenses, including hotel and travel expenses, incurred as a result of my
`
`work on this case. My compensation does not depend on the outcome of the case,
`
`and the fact that I am being compensated has not altered the opinions that I have or
`
`will give in this case.
`
`II. BACKGROUND AND QUALIFICATIONS
`I am an independent consultant. All of my opinions stated in this
`5.
`
`
`
`Petitioner
`Ex. 1003 - Page 4
`
`

`

`declaration are based on my own personal knowledge and professional judgment.
`
`In formulating my opinions, I have relied upon my knowledge, training, and
`
`experience in the relevant art.
`
`6.
`
`I am over 18 years of age, and, if I am called upon to do so, I would
`
`be competent to testify as to the matters set forth herein. While my qualifications
`
`are stated more fully in my curriculum vitae, attached hereto as Appendix A, I
`
`provide below a brief summary of my qualifications.
`
`7.
`
`I earned a Bachelor of Science degree in Electrical Engineering
`
`(BSEE) from Michigan Technological University in 1976. In 1982, I earned a
`
`Master’s degree, also in Electrical Engineering (MSEE), from the University of
`
`Texas at Austin. I earned a Doctor of Philosophy (Ph.D.), also from the University
`
`of Texas at Austin, in 1985. My doctorate dissertation was “Digital Signal
`
`Processing Techniques for Acoustic Log Data.” In 1991, I earned a Master of
`
`Business Administration degree from the University of Texas at Austin as well.
`
`8.
`
`I have over 40 years of professional experience in wireless
`
`communications and telecom technology, including roles in large corporations as
`
`well as start-ups and consulting work.
`
`9.
`
`For example, from 1979 through 1991, I held the positions of Senior
`
`Engineer, Senior Member of the Technical Staff, and Member of the Technical
`
`Staff at Motorola, Inc. My work at Motorola, Inc. included serving as business
`
`
`
`Petitioner
`Ex. 1003 - Page 5
`
`

`

`manager, project leader, and senior technical member for projects relating to the
`
`development of various cellular modems, transceivers, and transcoders.
`
`10. As another example, in 1991, I co-founded Wireless Access, Inc., a
`
`start-up company focused on the Narrow Band PCS equipment market and which
`
`developed the over-the-air protocols, subscriber equipment, and integrated circuits
`
`to deploy 2-way paging services. I held the positions of Co-Founder, Chief
`
`Technical Officer, Vice President of Engineering, and Vice President of Business
`
`Strategy at Wireless Access, Inc., until it was sold to Glenarye Electronics in 1998.
`
`11. As another example, between 1998 and 2000, I was the Chief
`
`Technology Officer and Advisory Board Member of Picazo Communications,
`
`which built and sold software PBXs Telephony equipment using VoIP and Circuit
`
`Switched Technologies.
`
`12. As another example, in 2004, I founded DoceoTech Inc., which
`
`provides training for engineers in Wireless, Networking, and Telephony
`
`technologies. Since 2004, I have served as the Chairman of DoceoTech Inc.
`
`13. These and other professional experiences, as well as other
`
`qualifications, are described in Appendix A.
`
`14.
`
`I hold over 25 United States patents in wireless and signal processing
`
`technology, as well as numerous patent applications in the same field.
`
`Additionally, I am a Patent Agent registered with the U.S. Patent and Trademark
`
`
`
`Petitioner
`Ex. 1003 - Page 6
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`

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`Office since January 2002.
`
`III. MATERIALS CONSIDERED
`In forming my opinions, I read and considered the ’081 Patent and its
`15.
`
`prosecution history, the exhibits listed in the Exhibit List filed with the petition for
`
`inter partes review of the ’081 Patent, as well as any other material referenced
`
`herein.
`
`16. For any future testimony I may give in this matter, I may use some or
`
`all of the documents and information cited to, referred to, and identified in this
`
`declaration, as well as any additional materials that are entered into evidence in
`
`this matter.
`
`IV. LEGAL PRINCIPLES OF ANTICIPATION AND OBVIOUSNESS
`I have been informed and I understand that a patent claim is
`17.
`
`anticipated when a single piece of prior art describes every element of the claimed
`
`invention, either expressly or inherently, arranged in the same way as in the claim.
`
`I have been told to consider elements to be inherently described only if they are
`
`necessarily present in the piece of prior art.
`
`18.
`
`I have been informed and I understand that a patent claim is
`
`unpatentable and invalid if the claim as a whole would have been obvious to a
`
`person of ordinary skill in the art in the field of the patent as of the time of the
`
`invention at issue. I have been informed and understand that the following factors
`
`
`
`Petitioner
`Ex. 1003 - Page 7
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`

`

`must be evaluated to determine whether a claim is obvious: (i) the scope and
`
`content of the prior art; (ii) the difference or differences, if any, between the claim
`
`and the prior art; (iii) the level of ordinary skill in the art at the time of the
`
`invention; and (iv) any objective indicia of non-obviousness.
`
`19.
`
`I have been informed and I understand that a prior art reference may
`
`be considered if it discloses information designed to solve any problem or need
`
`addressed by the patent or if it discloses information that has obvious uses beyond
`
`its main purpose and if a person of ordinary skill in the art would reasonably
`
`examine that reference when trying to solve any problem or need addressed by the
`
`patent.
`
`20.
`
`I have been informed and I understand that the objective indicia of
`
`non-obviousness (or “secondary considerations”) that should be considered
`
`include, for example, the following: (i) commercial success; (ii) long-felt but
`
`unresolved needs; (iii) copying of the invention by others in the field; (iv) initial
`
`expressions of disbelief by experts in the field; (v) failure of others to solve the
`
`problem that the inventor solved; and (vi) unexpected results. I have been
`
`informed and understand that evidence of these objective indicia must be
`
`commensurate in scope with the claimed subject matter, i.e., that the materiality of
`
`these objective indicia depends on the existence of a nexus between the indicia and
`
`the invention, as opposed to other factors. I am not aware of any objective indicia
`
`
`
`Petitioner
`Ex. 1003 - Page 8
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`

`

`of non-obviousness relevant to the claims of the ’081 Patent.
`
`21.
`
`I have been informed and I understand that independently made,
`
`simultaneous inventions, made within a comparatively short space of time, are
`
`evidence that the claimed apparatus was obvious.
`
`22.
`
`In determining whether the subject matter as a whole would have been
`
`obvious at the time that the invention was made to a person having ordinary skill in
`
`the art, I have been informed of and understand certain principles regarding the
`
`combination of elements of the prior art. A combination of familiar elements
`
`according to known methods is likely to be obvious when it yields predictable
`
`results. Also, if a person of ordinary skill in the art can implement a predictable
`
`variation in a prior art device, and would see the benefit from doing so, such a
`
`variation would be obvious. In particular, when there is pressure to solve a
`
`problem and there are a finite number of identifiable, predictable solutions, it
`
`would be reasonable for a person of ordinary skill to pursue those options that fall
`
`within his or her technical grasp. If such a process leads to the claimed invention,
`
`then the latter is not a patentable invention, but the result of ordinary skill and
`
`common sense.
`
`23.
`
`I have also been informed and understand that claims are obvious
`
`where they result from a simple substitution of one known element for another
`
`known element performing the same function, and where that substitution yields
`
`
`
`Petitioner
`Ex. 1003 - Page 9
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`

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`predictable results.
`
`24.
`
`I have also been informed and understand that a teaching, suggestion
`
`or motivation is a useful guide in establishing a rationale for combining elements
`
`of the prior art so as to render a claim obvious. The test poses the question as to
`
`whether there is a teaching, suggestion, or motivation in the prior art to combine
`
`prior art elements in a way that realizes the claimed invention.
`
`25. Though useful to the obviousness inquiry, I understand that this test
`
`should not be treated as a rigid rule. The teaching, suggestion or motivation could
`
`come from the prior art, the background knowledge of one of ordinary skill in the
`
`art, the nature of any problem or need to be addressed, market demand, or common
`
`sense. It is also permissible to consider the inferences and creative steps that a
`
`person of ordinary skill in the art (who is considered to have an ordinary level of
`
`creativity and who is not an automaton) would employ.
`
`V. OVERVIEW OF THE ’081 PATENT
`I have reviewed the ’081 Patent, which is entitled “System and
`26.
`
`Method for Advertisement Transmission and Display.” Ex. 1001. I have been
`
`asked to assume that the ’081 Patent is entitled to an effective filing date of
`
`February 5, 2008. Ex. 1001.
`
`27. The ’081 Patent is directed to a “media enhancement system
`
`configured to associate a secondary media signal (for example, the secondary
`
`
`
`Petitioner
`Ex. 1003 - Page 10
`
`

`

`media signal can comprise an advertisement) to a primary media signal (for
`
`example, a radio broadcast).” Ex. 1001 at 3:8–12. In one example, “a radio station
`
`transmits” a “first media signal” containing “a song that is received by a user
`
`enabled-device, such as a cellular phone with a radio.” Ex. 1001 at 3:27–30. The
`
`media enhancement system then sends to a user device “a secondary media signal
`
`that is separate and/or discrete from the first media signal.” Ex. 1001 at 3:32–35.
`
`“For example, the secondary media signal could be an advertisement for a
`
`particular truck.” Ex. 1001 at 3:35–36. “As the user enabled-device is playing a
`
`song obtained from the first media signal, the user enabled-device displays the
`
`media content in the second media signal, wherein the media content can be a still
`
`or moving picture of the advertised truck.” Ex. 1001 at 3:37–40. The
`
`advertisement may also include a “user selectable audio of the advertised truck
`
`wherein the first audio track could be paused upon selection.” Ex. 1001 at 3:41–
`
`47.
`
`28. The ’081 Patent’s figure 3, reproduced below, is illustrative of the
`
`above example. Figure 3 illustrates a user device 4, playing an audio broadcast
`
`received from radio “receiver 455” and outputting the sound using “speaker 453.”
`
`Ex. 1001 at 18:56–19:10. Device 4, while playing the audio, displays in an “upper
`
`panel 451” of “display 450” “textual information corresponding to the music being
`
`played on the radio” and in a “lower panel 452” of display 450 “an advertisement
`
`
`
`Petitioner
`Ex. 1003 - Page 11
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`

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`signal 113.” Ex. 1001 at 19:11–46. The “textual information” presented in upper
`
`panel 451 can be acquired using receiver 455 from an “RBDS and/or RDS signal”
`
`accompanying an FM audio broadcast. Ex. 1001 at 19:17–22, 24:63–66. The ’081
`
`Patent contemplates that the “advertisement media signal 113 can be provided by
`
`any of the communication methods disclosed herein, and/or can comprise any form
`
`of media content.” Ex. 1001 at 12:40–42.
`
`Ex. 1001, Fig. 3.
`
`29. The ’081 Patent further discloses that, “[t]o facilitate the assignment
`
`
`
`
`
`Petitioner
`Ex. 1003 - Page 12
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`

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`and/or sending of an advertisement media signal 113 with a first media signal 111,
`
`a unique identifier 115 can be provided to each media signal (the first media signal
`
`111 [and] the advertisement media signal 113…. These identifiers 115 can be
`
`stored in a database and/or other location such as the control management system
`
`100, along with other relevant information. The unique identifier 115 can be used
`
`… to track and/or record the results of any given signal as well as to determine
`
`whether the signal should be provided to the primary and/or ancillary devices 4, 5
`
`and/or the user.” Ex. 1001 at 12:66–13:22.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`I have been informed and understand that the disclosure of patents and
`30.
`
`prior art references are to be viewed from the perspective of a person having
`
`ordinary skill in the art at the time of the alleged invention (“POSITA”), and that a
`
`POSITA is a hypothetical person who is presumed to have known all the relevant
`
`art prior to the date of invention to which challenged claims are entitled.
`
`31.
`
`I have provided my opinions from this perspective. I have been told
`
`to assume that this date of invention was February 5, 2008, the filing date of a
`
`provisional patent application to which the ’081 Patent claims priority.
`
`32.
`
`I have been informed and understand that prior art references can
`
`provide evidence of the level of ordinary skill in the art, and that factors that may
`
`be considered in determining this level of skill can include the educational level of
`
`
`
`Petitioner
`Ex. 1003 - Page 13
`
`

`

`the inventors and active workers in the field, the types of problems encountered in
`
`the art, the prior art solutions to those problems, the rapidity with which
`
`innovations are made, and the sophistication of the technology.
`
`33.
`
`It is my opinion that a POSITA during the relevant period would have
`
`had at least a B.S. in computer science or electrical engineering (or a related field),
`
`and approximately three years of experience working in the communications- or
`
`Internet-related industries, or, alternatively, an advanced degree (such as a master’s
`
`degree) in computer science or electrical engineering (or a related field). This
`
`description is an approximation of the level of skill of a POSITA, as a higher
`
`education or skill level might make up for less experience, and vice-versa. I am
`
`familiar with this level of skill because at the time of the ’081 Patent, I had over 30
`
`years of experience building digital radio systems and equipment, as well as
`
`supervising junior engineers doing the same. And, of course, at the time, I would
`
`have at least qualified (and presently do qualify) as a POSITA for the ’081 Patent.
`
`VII. CLAIM CONSTRUCTION
`A. Legal Principles and Methodology Applied
`I have been informed and understand that the United States Patent and
`34.
`
`Trademark Office interprets claim terms in an inter partes review proceeding
`
`under the same claim construction standard that is used in a United States federal
`
`court. I understand that, under this standard, the meaning of claim terms is
`
`
`
`Petitioner
`Ex. 1003 - Page 14
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`

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`considered from the viewpoint of a POSITA at the time of the alleged invention.
`
`35.
`
`I have been informed and understand that claim terms are generally
`
`given their plain and ordinary meaning as understood by a POSITA, in light of the
`
`specification and the prosecution history pertaining to the patent. I have been
`
`further informed and understand that claim terms are generally not to be imported
`
`from the embodiments described in the specification unless the patentee has
`
`demonstrated a clear intention to limit the claim scope.
`
`36.
`
`I have been informed and understand that, in addition to the claims,
`
`specification, and prosecution history, other evidence may be considered to
`
`ascertain the meaning of claim terms, including textbooks, encyclopedias, articles,
`
`and dictionaries. I have been informed and understand that this other evidence is
`
`often less significant and less reliable than the claims, specification, and
`
`prosecution history.
`
`37.
`
`In order to determine the proper scope of claims 9–11 and 23 of the
`
`’081 Patent, and to compare these claims to the prior art, I have carefully
`
`considered the text and figures of the ’081 Patent and its file history based upon
`
`my experience and knowledge in the relevant field.
`
`B. Construction of Specific Terms
`“media content”
`1.
`Independent Claim 9 and dependent Claims 10 and 11 recite “media
`
`38.
`
`
`
`Petitioner
`Ex. 1003 - Page 15
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`

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`content.”
`
`39. The ’081 Patent specification defines “media content” as follows:
`
`[T]he terms “media” or “media content” are broad terms
`that comprise any form of content, including without
`limitation, graphics, videos, sounds, text, text messages,
`interactive applications, vibrations, television and/or radio
`programming, podcasts, movies, songs, games, telephone
`conversations,
`speeches,
`news,
`information,
`advertisements, polls votes, personal messages, and/or
`other physical manifestations capable of communicating a
`concept or idea.
`
`Ex. 1001 at 5:22–29.
`
`40. Thus, in my opinion, the phrase “media content” should be construed
`
`according to the ’081 Patent’s definition.
`
`“present … media content”
`2.
`Independent Claim 9 recites “present … media content.”
`
`41.
`
`42. As explained immediately above, the ’081 Patent specification
`
`broadly defines “media content.” Ex. 1001 at 5:22–29.
`
`43. The ’081 Patent explains that “media content” can be “presented” in
`
`different ways:
`
`[T]he terms “display,” “present,” their synonyms, and
`their
`alternative
`conjugations
`should
`be
`used
`interchangeably and be broadly interpreted as providing
`
`
`
`Petitioner
`Ex. 1003 - Page 16
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`

`

`media to be sensed by the user.
`
`Ex. 1001 at 5:36–40.
`
`44. Further, the ’081 Patent specification makes explicit that media
`
`content “need not be presented through the display panel, but could alternatively be
`
`presented through the speaker, a vibration system, and/or any other primary device
`
`output 402, 403.” Ex. 1001 at 19:52–19:56, see also 19:1–65.
`
`45. Thus, in my opinion, the phrase “present … media content” should be
`
`construed to mean “provide an output, related to a media content, that can be
`
`sensed by the user,” for example, display, audio, and vibration.
`
`VIII. THE PRIOR ART
`A. U.S. Patent No. 6,349,329 (“Mackintosh”)
`46. Mackintosh, entitled “Coordinating Delivery of Supplemental
`
`Materials with Radio Broadcast Material,” was filed on September 29, 1998, and
`
`issued as a patent on February 19, 2002. Ex. 1004. I have been informed and
`
`understand that Mackintosh is prior art to the ’081 Patent.
`
`47. Mackintosh’s invention is directed toward a system for enhancing a
`
`listener’s broadcast experience by providing to the listener certain “supplemental
`
`materials” in combination with an audio broadcast. Ex. 1004 at 2:40–45
`
`(emphasis added).
`
`48. Mackintosh explains that:
`
`
`
`Petitioner
`Ex. 1003 - Page 17
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`

`

`According to one aspect of the invention, supplemental
`materials can be provided to a user in a coordinated
`fashion with the broadcast materials being delivered. The
`supplemental materials can be provided in a coordinated
`fashion such that they relate to the actual broadcast
`materials as they are being streamed or otherwise
`delivered to the user. For example, according to one
`embodiment, the broadcast material is delivered to the user
`in segments such as, for example, tracks of music,
`advertisements, and promotional materials in a radio
`broadcast. In this embodiment, the supplemental materials
`can be coordinated with the individual segments (e.g.,
`tracks) such that supplemental materials relating to the
`segments can be provided as the segments are being
`provided to the user.
`
`Ex. 1004 at 2:43–56.
`
`49. Mackintosh explains that “radio broadcast materials can include a
`
`plurality of tracks that can be streamed to a user via the Internet, [which] can
`
`include, for example, music tracks … along with program data that can indicate,
`
`for example, an identification of the track, the type of track, and other pertinent or
`
`relevant information regarding the particular track being broadcast at that time.”
`
`Ex. 1004 at 3:1–11. Mackintosh implements its system through a “player” that
`
`executes on a “client computer or other end use device within the communications
`
`network.” Ex. 1004 at 21:56–58.
`
`
`Petitioner
`Ex. 1003 - Page 18
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`

`

`50. Mackintosh discloses several examples intended to highlight the
`
`features of its system. Figures 5, 6, and 7, reproduced below, depict: a block
`
`diagram illustrating the example application of the invention in which a radio
`
`station provides its broadcast materials to a listener at its user terminal; an
`
`operational flow diagram illustrating an example process by which supplemental
`
`information can be coordinated with the broadcast material; and a diagram
`
`illustrating an example user interface, respectively:
`
`
`
`51. A specific implementation of Mackintosh’s system is depicted in
`
`
`
`figures 10 through 13, with exemplary architecture of “computer system 702”
`
`shown in figure 13 (reproduced, below left), and “player 510” shown in figure 12
`
`(reproduced, below right). Ex. 1004, Figs. 10–13. Mackintosh asserts that this
`
`“specific example is provided by way of example only, and it should be
`
`
`
`Petitioner
`Ex. 1003 - Page 19
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`

`

`appreciated that other environments are possible … including the more generic
`
`examples described [elsewhere in Mackintosh],” Ex. 1004 at 24:5–9:
`
`
`
`B. U.S. Patent Application Publication No. 2005/0262542
`(“DeWeese”)
`52. DeWeese, entitled “Television Chat System,” was filed on August 12,
`
`2004, and was published on November 24, 2004. Ex. 1005. I have been informed
`
`and understand that DeWeese is prior art to the ’081 Patent.
`
`53. DeWeese is directed to a “television chat system 10,” as illustrated in
`
`figure 1A, reproduced below. Ex. 1005. Television chat system 10 includes a
`
`“main facility 12,” a “television distribution facility 16” having “chat equipment
`
`22” (e.g., a chat server), and “user television equipment 20.” Ex. 1005, Fig. 1A.
`
`Main facility 12 provides television distribution facility 16 with electronic program
`
`
`
`Petitioner
`Ex. 1003 - Page 20
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`

`

`information, which includes “television program listings data such as program
`
`times, channels, titles, descriptions.” Ex. 1005, ¶¶51–53. “Television distribution
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`facility 16 distributes [the] program guide data and other information to the user
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`television equipment 20 of multiple users via communications paths 24.” Ex.
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`1005, ¶55. “Communication paths 24 … allow television distribution facility 16 to
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`distribute scheduled television programming, pay programming, real-time
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`communications, chat requests and other video and audio information to user
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`television equipment 20 in addition to non-video program guide information and
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`communications.” Ex. 1005, ¶55.
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`Petitioner
`Ex. 1003 - Page 21
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`
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`Ex. 1005, Fig. 1A.
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`54.
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`In one example, as illustrated in figure 9, reproduced below,
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`“[t]elevision program 202 may be displayed in region 203 of display screen 200,
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`while a chat room region 206 may be displayed simultaneously in the lower
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`portion of display screen 200.” Ex. 1005, ¶93. “Participants in the chat room send
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`chat messages [208 and 210] which appear in region 206.” Ex. 1005, ¶93.
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`Moreover, as illustrated in figure 4, reproduced below, each user of the chat system
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`has an associated unique user identification (“USER ID 138”), so that “real-time
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`
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`Petitioner
`Ex. 1003 - Page 22
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`communications and chat requests can be directed to specific users.”
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`
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`Ex. 1005, Figs. 4 (annotated) and 9.
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`IX. SUMMARY OF THE GROUNDS
`Ground(s)
`Description
`
`Mackintosh Anticipates, or Renders Obvious, Claims 9–11 and 23
`
`DeWeese Anticipates, or Renders Obvious, Claims 9–11 and 23
`
`1, 2
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`3, 4
`
`
`
`X. ANALYSIS
`A. Mackintosh Anticipates Claims 9–11 and 23
`Claim 9
`1.
`9[preamble] “A system for combining multiple media
`comprising:”
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`55. Regardless of whether this preamble is limiting, in my opinion, it is
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`disclosed by Mackintosh.
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`
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`Petitioner
`Ex. 1003 - Page 23
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`56. Mackintosh’s invention is directed toward a system for enhancing a
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`listener’s broadcast experience by providing to the listener certain “supplemental
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`materials” in combination with an audio broadcast. Ex. 1004 at 2:40–45.
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`Mackintosh explains that a radio station, for example, transmits over the Internet
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`(via, e.g., “broadcast internet service provider 208” or “broadcast server 509”) the
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`audio broadcast (and certain program data, such as cut codes, associated with the
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`audio broadcast) to a user. Ex. 1004, Figs. 5 and 10. And, Mackintosh explains
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`that certain servers (e.g., “data server 214,” or “support server 511”) provide
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`“supplemental materials” to the user (which “supplemental materials” provide
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`additional information about, and potential actions regarding, the broadcast). Ex.
`
`1004, Figs. 5 and 10. Figures 5 and 10, showing two of Mackintosh’s exemplary
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`broadcast architectures, are reproduced below:
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`
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`Petitioner
`Ex. 1003 - Page 24
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`
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`
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`57.
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`In order to coordinate the delivery of the supplemental materials, the
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`server is provided certain program data (e.g., “event codes,” “cut codes” or some
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`other “identifying indicia,” which pertain to a “distinct segment” of the broadcast)
`
`that the server uses to look up the relevant supplemental materials that it provides
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`to the user. Ex. 1004 at 3:19–26, 5:36–42, 5:50–54, 5:59–6:2, 7:16–20, 8:40–55,
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`9:7–59, 10:4–16, 21:13–25.
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`58. Mackintosh explains that the “supplemental materials” can broadly
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`include “images, video clips, audio clips, data, or other materials that may be
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`provided to the user in conjunction with the broadcast materials. The supplemental
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`materials can also include advertising information that is provided to the user
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`during particular segments of the broadcast material.” Ex. 1004 at 2:57–62, 10:32–
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`
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`Petitioner
`Ex. 1003 - Page 25
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`33, 22:55–60.
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`59. For example, Mackintosh explains that:
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`[T]he user may be provided with an image of an album
`currently being played, album title, artist, and track
`number, links to purchase the album, additional materials
`such as promotional materials, concert schedules and
`materials, memorabilia, artists bios, other images or
`videos relating to the album or artists, or virtually any
`other information that may be somehow related to the
`current item being played by radio station 204.
`
`Additionally, advertising information can be retrieved and
`provided on user terminal 212 in conjunction with the
`current broadcast material. For example, particular
`advertising spots may be keyed to particular songs or
`broadcast material to further enhance the user interface.
`Advertising can be keyed to attributes identified by the
`program data such as music types, products or product
`categories, artists, and so on.
`
`Ex. 1004 at 10:67–11:15.
`
`60. Mackintosh discloses that the broadcast and supplemental materials
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`can be presented to its users on a device such as “user terminal 212,” or, more
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`specifically, “computer system 702.” Ex. 1004 at 24:10–25:4, 8:32–35; 5:28–37
`
`(“Depending on the broadcast or delivery medium, the user equipment can include,
`
`
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`Petitioner
`Ex. 1003 - Page 26
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`for example a processor-based system, such as a personal computer (PC) or other
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`processor-based system, having an appropriate communication interface. In the
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`Internet embodiment described above, user equipment 112 can include, for
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`example, an Internet terminal having an Internet communication interface.”).
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`61. For ease of reference, I will hereinafter refer to each of Mackintosh’s
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`“user terminal 212” and “computer system 702” as “computer.”
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`62. Figure 13, which depicts a “diagram illustrating an example computer
`
`architecture according to one embodiment of the invention,” Ex. 1004 at 4:55–56,
`
`is reproduced below:
`
`
`
`63. The user’s computer plays the audio broadcast materials, sent by the
`
`broadcaster, through speakers (not shown), and visually displays the “supplemental
`
`
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`Petitioner
`Ex. 1003 - Page 27
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`materials,” sent by a server (e.g., “support server 511”), to the user through
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`“player” software (e.g., “player 510”) that can reside on the user’s computer. Ex.
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`1004 at 3:17–23, 21:56–67, Fig. 7 (showing a generic “player”) and Fig. 12
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`(showing a more specific example: “player 510”).
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`64. A generic software “player,” with placeholder boxes for where
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`various elements of the “supplemental ma