UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MAZDA MOTOR OF AMERICA, INC., SUBARU OF AMERICA, INC.,
`and VOLVO CAR USA, LLC
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`__________________
`
`Case No. IPR2022-00203
`Patent No. 8,166,081
`
`Petition for Inter Partes Review
`
`EAST\186370135.1
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MAZDA MOTOR OF AMERICA, INC., SUBARU OF AMERICA, INC.,
`and VOLVO CAR USA, LLC
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`__________________
`
`Case No. IPR2022-00203
`Patent No. 8,166,081
`
`Petition for Inter Partes Review
`
`EAST\186370135.1
`
`
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices (37 C.F.R. §42.8) ............................................................. 1
`A.
`Real Party in Interest (37 C.F.R. §42.8(b)(1)) ...................................... 1
`B.
`Related Matters (37 C.F.R. §42.8(b)(2)) ............................................... 2
`C.
`Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4)) ........... 3
`Payment of Fees (37 C.F.R. §42.103) ............................................................. 4
`II.
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104) .......................... 4
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ...................................... 4
`B.
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22(a)(1)) ........................................... 4
`IV. Relevant Information Concerning the Contested Patent ................................. 4
`A. Overview of the ’081 Patent .................................................................. 4
`B.
`Person of Ordinary Skill in the Art ....................................................... 8
`C.
`Claim Construction (37 C.F.R. §42.104(b)(3)) ..................................... 8
`1.
`“media content” (Claims 9-11) ................................................... 9
`2.
`“present … media content” (Claim 9) ........................................ 9
`The Specific Grounds of Unpatentability ...................................................... 10
`A. Overview of the Prior Art .................................................................... 10
`1. Mackintosh ................................................................................ 10
`2.
`DeWeese ................................................................................... 14
`B. Ground 1: Mackintosh Anticipates Claims 9-11 and 23 ..................... 16
`1.
`Claim 9 ...................................................................................... 16
`
`V.
`
`i
`
`
`
`Claim 10 .................................................................................... 48
`2.
`Claim 11 .................................................................................... 50
`3.
`Claim 23 .................................................................................... 53
`4.
`C. Ground 2: Mackintosh Renders Obvious Claims 9-11 and 23 ........... 53
`D. Ground 3: DeWeese Anticipates Claims 9-11 and 23 ........................ 54
`1.
`Claim 9 ...................................................................................... 54
`2.
`Claim 10 .................................................................................... 77
`3.
`Claim 11 .................................................................................... 78
`4.
`Claim 23 .................................................................................... 79
`Ground 4: DeWeese Renders Obvious Claims 9-11 and 23 ............... 81
`E.
`VI. Conclusion ..................................................................................................... 82
`
`EAST\186370135.1
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`
`Apple Inc. v. Omni MedSci, Inc.,
`IPR2020-00175, Paper 11 (PTAB June 17, 2020) .......................................13
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .............................................................. 47, 75
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ......................................................................7
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) .............................................................. 47, 75
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ....................................................................7
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................7
`Zip Top, LLC v. Stasher, Inc.,
`IPR2018-01216, Paper 14 (PTAB Jan. 17, 2019) ........................................13
`Statutes
`35 U.S.C. §102 ..................................................................................................passim
`35 U.S.C. §103 ..................................................................................................passim
`Rules and Regulations
`83 Fed. Reg. 51340, Vol. 83, No. 197 (Oct. 11, 2018)...........................................7
`M.P.E.P. §2141.03 ..................................................................................................7
`
`EAST\186370135.1
`
`iii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`U.S. Patent No. 8,166,081
`
`File History of U.S. Patent No. 8,166,081
`
`Declaration of Dr. Tim Williams
`
`U.S. Patent No. 6,349,329 (Mackintosh)
`
`U.S. Patent Application Publication No. 2005/0262542
`(DeWeese)
`
`IP Address: Your Internet Identity, R. Smith (Mar. 29, 1997)
`
`TCP/IP ILLUSTRATED VOL. 1, W. R. STEVENS (1994)
`
`Data-Over-Cable Service Interface Specifications, DOCSIS
`1.1, Radio Frequency Interface Specification, September 7,
`2005 (“DOCSIS Standard”)
`
`EAST\186370135.1
`
`iv
`
`
`
`Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`
`USA, LLC (collectively “Petitioner”) respectfully requests Inter Partes Review
`
`(“IPR”) of claims 9-11 and 23 (the “Challenged Claims”) of U.S. Patent No.
`
`8,166,081 (Ex. 1001, “the ’081 patent”), currently assigned—according to Patent
`
`Office records—to StratosAudio, Inc. (“Patent Owner”). There is a reasonable
`
`likelihood Petitioner will prevail on at least one challenged claim.
`
`Concurrently, Petitioner is filing a Motion to join this proceeding with
`
`IPR2021-00721, instituted on October 22, 2021. This Petition and the Joinder
`
`Motion are filed within one month of institution of the proceeding sought to be
`
`joined, presents the same art, arguments, and grounds as the joined proceeding, and
`
`will not enlarge or delay the joined proceeding. In this Petition, Petitioner
`
`challenges a patent and claims that it has not previously challenged in any prior
`
`IPR. The Petition and expert declaration are substantially identical to those
`
`submitted in the joined proceeding, except for non-substantive introductory matters
`
`and mandatory notices, as explained in greater detail in the concurrently filed
`
`Motion for Joinder. To the extent necessary, additional General Plastic
`
`considerations with respect to Volkswagen’s prior petition are discussed in the
`
`accompanying joinder motion.
`
`I.
`
`Mandatory Notices (37 C.F.R. §42.8)
`A.
`Real Party in Interest (37 C.F.R. §42.8(b)(1))
`
`EAST\186370135.1
`
`1
`
`
`
`The real parties in interest are Mazda Motor of America, Inc., Mazda Motor
`
`Corporation, Subaru of America, Inc., Subaru Corporation, Volvo Car USA, LLC,
`
`and Volvo Car Corporation.
`
`Related Matters (37 C.F.R. §42.8(b)(2))
`B.
`The Challenged Claims are asserted by Patent Owner against Petitioner in
`
`StratosAudio, Inc. v. Mazda Motor of America, Inc. No. 6:20-cv-1126,
`
`StratosAudio, Inc. v. Subaru of America, Inc. No. 6:20-cv-1128, and Volvo Cars of
`
`North America, LLC and Volvo Cars USA, LLC in StratosAudio, Inc. v. Volvo
`
`Cars of North America, LLC et al., No. 6:20-cv-01129, pending in the United States
`
`District Court for the Western District of Texas. The Challenged Claims are also
`
`asserted by Patent Owner against (1) Hyundai Motor America in StratosAudio, Inc.
`
`v. Hyundai Motor America, No. 6:20-cv-01125; and (2) Volkswagen Group of
`
`America, Inc. in StratosAudio, Inc. v. Volkswagen Group of America, Inc., No.
`
`6:20-cv-01131, all of which are pending in the United States District Court for the
`
`Western District of Texas. Moreover, Petitioner Volkswagen Group of America,
`
`Inc. filed a petition for inter partes review of the ’081 Patent in Volkswagen Group
`
`of America, Inc. v. StratosAudio, Inc., IPR2021-00721 (PTAB Apr. 16, 2021),
`
`which was instituted on October 22, 2021. This petition is a “me-too” copy of the
`
`IPR2021-00721 Petition and is accompanied by a motion for Joinder.
`
`EAST\186370135.1
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`2
`
`
`
`Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4))
`C.
`Petitioner designates the following lead and back-up counsel:
`Lead Counsel
`
`Matthew D. Satchwell (Reg. No. 58,870; Tel. (312) 368-2111;
`
`matthew.satchwell@dlapiper.com), attorney at DLA Piper LLP (US), 444 West
`
`Lake Street, Suite 900, Chicago, Illinois 60606.
`
`Backup Counsel
`
`Paul R. Steadman (Reg. No. 43,932; Tel. (312) 368-2111;
`
`paul.steadman@dlapiper.com), attorney at DLA Piper LLP (US), 444 West Lake
`
`Street, Suite 900, Chicago, Illinois 60606.
`
`Lewis E. Hudnell, III (Reg. No. 51,185); (lewis@hudnelllaw.com), attorney
`
`at Hudnell Law Group P.C., 800 W. El Camino Real Suite 180, Mountain View,
`
`California 94040, Telephone: (650) 564-7720, Fax: (347) 772-3034.
`
`Nicolas S. Gikkas (Reg. No. 46,245); (nick@hudnelllaw.com), attorney at
`
`Hudnell Law Group P.C., 800 W. El Camino Real Suite 180, Mountain View,
`
`California 94040, Telephone: (650) 564-7720, Fax: (347) 772-3034.
`
`Petitioner consents to e-mail service at the above e-mail addresses and DLA-
`
`StratosAudio@us.dlapiper.com.
`
`EAST\186370135.1
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`3
`
`
`
`II.
`
`Payment of Fees (37 C.F.R. §42.103)
`The Director is authorized to charge the filing fee for this Petition, as well as
`
`any other fees that may be required in these proceedings, to Deposit Account
`
`503266.
`
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104)
`A.
`Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner certifies that the ’081 patent is available for IPR, and that
`
`Petitioner is not barred or estopped from requesting an IPR challenging the claims
`
`on the identified grounds.
`
`B.
`
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22(a)(1))
`Petitioner requests the Board institute IPR on the Challenged Claims
`
`because they are anticipated or obvious under pre-AIA 35 U.S.C. §§102 and 103
`
`on the following grounds:
`
`Grounds
`
`Prior Art
`
`1, 2
`
`3, 4
`
`U.S. Patent No. 6,349,329
`(“Mackintosh”)
`U.S. Patent Application Publication
`No. 2005/0262542 (“DeWeese”)
`
`Claims
`Challenged
`9-11, 23
`
`9-11, 23
`
`Basis
`
`§102,
`§103
`§102,
`§103
`
`IV. Relevant Information Concerning the Contested Patent
`A.
`Overview of the ’081 Patent
`
`The ’081 patent is directed to a “media enhancement system configured to
`
`associate a secondary media signal (for example, the secondary media signal can
`
`EAST\186370135.1
`
`4
`
`
`
`comprise an advertisement) to a primary media signal (for example, a radio
`
`broadcast).” Ex. 1001, 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, 3:27-30; Ex. 1003, ¶27.1 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, 3:32-35; Ex. 1003,
`
`¶27. “For example, the secondary media signal could be an advertisement for a
`
`particular truck.” Ex. 1001, 3:35-36; Ex. 1003, ¶27. “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, 3:37-40; Ex.
`
`1003, ¶27. 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, 3:41-47; Ex. 1003, ¶27.
`
`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
`
`by radio “receiver 455” and outputting the sound using “speaker 453.” Ex. 1001,
`
`1 Declaration of Dr. Tim Williams, an expert in electrical engineering. Ex. 1003,
`
`¶¶5-14; see also CV attached to same.
`
`EAST\186370135.1
`
`5
`
`
`
`18:56-19:10; Ex. 1003, ¶28. 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 signal 113.” Ex. 1001, 19:11-46; Ex. 1003, ¶28. 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,
`
`19:17-22, 24:63-66; Ex. 1003, ¶28. 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, 12:40-42; Ex. 1003, ¶28.
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`EAST\186370135.1
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`6
`
`
`
`Ex. 1001, Fig. 3.
`
`The ’081 patent further discloses that, “[t]o facilitate the assignment 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
`
`EAST\186370135.1
`
`7
`
`
`
`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, 12:66-13:22; Ex. 1003, ¶29.
`
`Person of Ordinary Skill in the Art
`B.
`Here, the level of skill is apparent from the cited art. See In re GPAC Inc.,
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995); M.P.E.P. §2141.03. Petitioner submits that a
`
`person of ordinary skill in the art (“POSITA”) 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. Ex. 1003, ¶33. This description is approximate—a higher education or
`
`skill level might make up for less experience, and vice-versa; for example, a
`
`POSITA could have a master’s degree with no industry experience. Ex. 1003, ¶33.
`
`Claim Construction (37 C.F.R. §42.104(b)(3))
`C.
`This Petition construes terms consistent with the understanding a POSITA
`
`would have had, at the time of the invention, in view of the ’081 patent’s intrinsic
`
`evidence. See 83 Fed. Reg. 51340, Vol. 83, No. 197 (Oct. 11, 2018); Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Only terms subject
`
`to a legitimate dispute need to be construed for the purposes of IPR. Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`EAST\186370135.1
`
`8
`
`
`
`2017). Terms not expressly construed should be given their plain and ordinary
`
`meaning.
`
`“media content” (Claims 9-11)
`1.
`For purposes of this IPR, Petitioner adopts the ’081 patent’s broad definition
`
`of “media content”:
`
`[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, 5:22-29; Ex. 1003, ¶¶39-40.
`
` “present … media content” (Claim 9)
`2.
`Consistent with the intrinsic evidence, the term “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. Ex. 1003,
`
`¶45.
`
`As explained immediately above, the ’081 patent specification broadly
`
`defines “media content.” Ex. 1001, 5:22-29; Ex. 1003, ¶42.
`
`EAST\186370135.1
`
`9
`
`
`
`And, the ’081 patent explains that “media content” can be “presented” in
`
`various ways:
`
`[T]he terms “display,” “present,” their synonyms, and
`their
`alternative
`conjugations
`should
`be
`used
`interchangeably and be broadly interpreted as providing
`media to be sensed by the user.
`
`Ex. 1001, 5:36-40; Ex. 1003, ¶43.
`
`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, 19:52-19:56, see also 19:1-65; Ex. 1003, ¶44.
`
`V.
`
`The Specific Grounds of Unpatentability
`A.
`Overview of the Prior Art
`1. Mackintosh
`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. It is therefore prior art under at least 35
`
`U.S.C. §102(b).
`
`Mackintosh’s invention is directed toward a system for enhancing a
`
`listener’s broadcast experience by providing to the listener certain “supplemental
`
`EAST\186370135.1
`
`10
`
`
`
`materials” in combination with an audio broadcast. Ex. 1004, 2:40-45 (emphasis
`
`added); Ex. 1003, ¶47.
`
`Mackintosh explains that:
`
`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, 2:43-56; Ex. 1003, ¶48.
`
`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,
`11
`
`EAST\186370135.1
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`
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`3:1-11; Ex. 1003, ¶49. Mackintosh implements its system through a “player” that
`
`executes on a “client computer or other end use device within the communications
`
`network.” Ex. 1004, 21:56-58; Ex. 1003, ¶49.
`
`Mackintosh discloses several examples intended to highlight the features of
`
`its system. Ex. 1003, ¶50. 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:
`
`Ex. 1003, ¶50.
`
`EAST\186370135.1
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`12
`
`
`
`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; Ex. 1003, ¶51. Mackintosh asserts that this
`
`“specific example is provided by way of example only, and it should be
`
`appreciated that other environments are possible … including the more generic
`
`examples described [elsewhere in Mackintosh],” Ex. 1004, 24:5-9:
`
`Mackintosh itself was not listed in an IDS or cited during prosecution. An
`
`international publication (WO 2000/019662) to the same assignee
`
`(Radiowave.com, Inc.) was listed in a 107-reference IDS, but it too was never cited
`
`by the Examiner. Ex. 1002, 127-31. Thus, the Board should decline to exercise its
`
`EAST\186370135.1
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`13
`
`
`
`discretion pursuant to 35 U.S.C. § 325(d). See Zip Top, LLC v. Stasher, Inc.,
`
`IPR2018-01216, Paper 14, 35 (PTAB Jan. 17, 2019); see also Apple Inc. v. Omni
`
`MedSci, Inc., IPR2020-00175, Paper 11 (PTAB June 17, 2020) (declining to
`
`exercise §325(d) discretion where, inter alia, there was an absence of record “of
`
`what the Examiner’s consideration of these references entailed”).
`
`DeWeese
`2.
`DeWeese, entitled “Television Chat System,” was filed on August 12, 2004,
`
`and was published on November 24, 2004. Ex. 1005. It is therefore prior art under
`
`at least 35 U.S.C. §102(b).
`
`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; Ex.
`
`1003, ¶53. Main facility 12 provides television distribution facility 16 with
`
`electronic program information, which includes “television program listings data
`
`such as program times, channels, titles, descriptions.” Ex. 1005, ¶¶51-53; Ex.
`
`1003, ¶53. “Television distribution facility 16 distributes [the] program guide data
`
`and other information to the user television equipment 20 of multiple users via
`
`communications paths 24.” Ex. 1005, ¶55; Ex. 1003, ¶53. “Communication paths
`
`24 … allow television distribution facility 16 to distribute scheduled television
`
`EAST\186370135.1
`
`14
`
`
`
`programming, pay programming, real-time communications, chat requests and
`
`other video and audio information to user television equipment 20 in addition to
`
`non-video program guide information and communications.” Ex. 1005, ¶55; Ex.
`
`1003, ¶53.
`
`Ex. 1005, Fig. 1A.
`
`In one example, as illustrated in figure 9, reproduced below, “[t]elevision
`
`program 202 may be displayed in region 203 of display screen 200, while a chat
`
`room region 206 may be displayed simultaneously in the lower portion of display
`
`EAST\186370135.1
`
`15
`
`
`
`screen 200.” Ex. 1005, ¶93; Ex. 1003, ¶54. “Participants in the chat room send
`
`chat messages [208 and 210] which appear in region 206.” Id. Moreover, as
`
`illustrated in figure 4, reproduced below, each user of the chat system has an
`
`associated unique user identification (“USER ID 138”), so that “real-time
`
`communications and chat requests can be directed to specific users.”
`
`Ex. 1005, ¶76, Figs. 4 (annotated) and 9.
`
`DeWeese was not cited during prosecution of the ’081 patent.
`B.
`Ground 1: Mackintosh Anticipates Claims 9-11 and 23
`1.
`Claim 9
`9[preamble] “A system for combining multiple media
`comprising:”
`Regardless of whether the preamble is limiting, it is disclosed by
`
`Mackintosh. Mackintosh discloses a system for combining multiple media. Ex.
`
`1003, ¶¶55-66.
`
`EAST\186370135.1
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`16
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`
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`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, 2:40-45; Ex. 1003,
`
`¶56. Mackintosh explains that a radio station, for example, transmits over the
`
`Internet (via, e.g., “broadcast internet service provider 208” or “broadcast server
`
`509”) the audio broadcast (and certain program data, such as cut codes, associated
`
`with the audio broadcast) to a user. Ex. 1004, Figs. 5 and 10; Ex. 1003, ¶56. And,
`
`Mackintosh explains that certain servers (e.g., “data server 214,” or “support server
`
`511”) provide “supplemental materials” to the user (which “supplemental
`
`materials” provide additional information about, and potential actions regarding,
`
`the broadcast). Ex. 1004, Figs. 5 and 10; Ex. 1003, ¶56. Figures 5 and 10,
`
`showing two of Mackintosh’s exemplary broadcast architectures, are reproduced
`
`below:
`
`EAST\186370135.1
`
`17
`
`
`
`Ex. 1003, ¶56.
`
`In order to coordinate the delivery of the supplemental materials, the server
`
`is provided certain program data (e.g., “event codes,” “cut codes” or some 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 to the
`
`user. Ex. 1004, 3:19-26; 5:36-42; 5:50-54; 5:59-6:2; 7:16-20; 8:40-55; 9:7-59;
`
`10:4-16; 21:13-25; Ex. 1003, ¶57.
`
`Mackintosh explains that the “supplemental materials” can broadly include
`
`“images, video clips, audio clips, data, or other materials that may be provided to
`
`the user in conjunction with the broadcast materials. The supplemental materials
`
`can also include advertising information that is provided to the user during
`
`EAST\186370135.1
`
`18
`
`
`
`particular segments of the broadcast material.” Ex. 1004, 2:57-62, 10:32-33,
`
`22:55-60; Ex. 1003, ¶58.
`
`For example, Mackintosh explains that:
`
`[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, 10:67-11:15; Ex. 1003, ¶59.
`
`Mackintosh discloses that the broadcast and supplemental materials can be
`
`presented to its users on a device such as “user terminal 212,” or, more
`
`EAST\186370135.1
`
`19
`
`
`
`specifically, “computer system 702.”2 Ex. 1004, 24:10-25:4, 8:32-35; 5:28-37
`
`(“Depending on the broadcast or delivery medium, the user equipment can include,
`
`for example a processor-based system, such as a personal computer (PC) or other
`
`processor-based system, having an appropriate communication interface. In the
`
`Internet embodiment described above, user equipment 112 can include, for
`
`example, an Internet terminal having an Internet communication interface.”); Ex.
`
`1003, ¶60.
`
`Figure 13, which depicts a “diagram illustrating an example computer
`
`architecture according to one embodiment of the invention,” Ex. 1004, 4:55-56, is
`
`reproduced below:
`
`2 For ease of reference, Petitioner will hereinafter refer to each of Mackintosh’s
`
`“user terminal 212” and “computer system 702” as “computer.” Ex. 1003, ¶61.
`
`EAST\186370135.1
`
`20
`
`
`
`Ex. 1003, ¶62.
`
`The user’s computer plays the audio broadcast materials, sent by the
`
`broadcaster, through speakers (not shown), and displays the “supplemental
`
`materials,” sent by a server (e.g., “support server 511”), to the user through
`
`“player” software (e.g., “player 510”) that can reside on the user’s computer. Ex.
`
`1004, 3:17-23, 21:56-67, Fig. 7 (showing a generic “player”) and Fig. 12 (showing
`
`a more specific example: “player 510”); Ex. 1003, ¶63.
`
`A generic software “player” with placeholder boxes for where various
`
`elements of the “supplemental materials” are displayed, is depicted in figure 7;
`
`and, a more specific example of Mackintosh’s “player”—with the placeholder
`
`boxes of figure 7 filled in with examples—is depicted in figure 12:
`
`EAST\186370135.1
`
`21
`
`
`
`Ex. 1003, ¶64.
`
`Mackintosh’s system, as illustrated in, e.g., figures 5 and 10—in which a
`
`broadcaster transmits audio broadcast data to a user and a server transmits
`
`“supplemental materials” to the user—corresponds to the claimed “system for
`
`combining multiple media,” which media are combined at the user’s computer.
`
`Ex. 1003, ¶65. This is discussed in additional detail with respect to the individual
`
`limitations below. Ex. 1003, ¶66.
`
`9[a] “a first receiver module configured to receive at least a
`first media content and data enabling the identification of a
`specific instance of the first media content from a first
`broadcast medium;”
`Mackintosh discloses a first receiver module configured to receive at least a
`
`first media content and data enabling the identification of a specific instance of the
`
`first media content from a first broadcast medium. Ex. 1003, ¶¶67-73.
`
`As illustrated in figures 5 and 10, reproduced below, Mackintosh discloses
`
`that a broadcaster (shown as “broadcast internet service provider 208” and
`
`EAST\186370135.1
`
`22
`
`
`
`“broadcast server 509,” respectively) transmits broadcast material, including audio
`
`and program data, to a user (shown, respectively, as “user terminal 212” and
`
`“player 510”). Ex. 1004, 8:40-49, 9:48-50; Ex. 1003, ¶67.
`
`Ex. 1004, Figs. 5 and 10.
`
`The “program data” that is sent with the audio data “can include, for
`
`example, a cut number, a category of the cut, and a duration of the cut. In these
`
`embodiments, the cut number can include number [sic: a numeric] or other alpha-
`
`numeric designation assigned by the radio station for recorded components that air
`
`on their station.” Ex. 1004, 9:7-12, 21:11-24; Ex. 1003, ¶68. Mackintosh explains
`
`that the “cut number can be a numeric or alphanumeric identification (ID) that
`
`identifies the particular cut,” and that each “cut code correspond[s] to and uniquely
`
`EAST\186370135.1
`
`23
`
`
`
`identif[ies] a segment from the standpoint of the radio station.” Ex. 1004, 9:18-19,
`
`21:21-25; Ex. 1003, ¶68. Additional “program data” can include “format
`
`information,” and a “station ID” that “uniquely identif[ies] that station from among
`
`a plurality of other stations.” Ex. 1004, 9:25-47, 21:11-24; Ex. 1003, ¶68. The
`
`station ID allows for “cut number[s] or other codes from different stations [to] be
`
`differentiated.” Ex. 1004, 10:11-13, 21:11-24; Ex. 1003, ¶68. Thus, the station ID
`
`and the cut number, collectively, correspond to the claimed data that enable the
`
`identification of a specific instance of the first media content. Ex. 1003, ¶68.
`
`Mackintosh discloses that a server, having the station ID and cut number,
`
`can “correlate [the] station ID and cut code with an ID of the album containing the
`
`song, the name of the artist, the album name, and the song name,” and that the
`
`server “obtains the album ID for the album containing the song associated with the
`
`cut code and station ID.” Ex. 1004, 22:15-23; Ex. 1003, ¶69.
`
`Mackintosh further discloses that “player” software (e.g., “software
`
`application resident on user terminal 212” or “player 510” running on “computer
`
`system 702”) “play[s] the broadcast material broadcast from the broadcast Internet
`
`service provider 208.” Ex. 1004, 12:18-22, 21:56-67 (“The player is configured to
`
`receive the merged stream over signal line 513 and play the audio component
`
`thereof through speakers or the like (not shown) configured as part of the client
`
`computer/end user device.”); Ex. 1003, ¶70.
`
`EAST\186370135.1
`
`24
`
`
`
`Figures 7 and 12, reproduced below, illustrate exemplary screenshots of
`
`Mackintosh’s “player” software:
`
`Ex. 1003, ¶71.
`
`Mackintosh’s computer, on which the “player” software operates, includes a
`
`“communications interface 724,” which “allows software and data to be transferred
`
`between computer system 702 and external devices.” Ex. 1004, 24:55-58; Ex.
`
`1003, ¶72. Mackintosh explains that:
`
`Examples of communications interface 724 can include a
`modem, a network interface (such as, for example, an
`Ethernet card), a communications port, a PCMCIA slot
`and card, etc. Software and data
`transferred via
`communications interface 724 are in the form of signals
`which can be electronic, electromagnetic, optical or other
`signals capable of being received by communicati
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