Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Filed: January 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD;
`SAMSUNG ELECTRONICS AMERICA,INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,
`_ Patent Owner.
`
`Case IPR2014-01182
`Patent 8,532,641 B2
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW,and
`JON B. TORNQUIST,Administrative Patent Judges.
`
`TORNQUIST,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571.272.7822
`
`Paper 10
`Filed: January 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD;
`SAMSUNG ELECTRONICS AMERICA,INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,
`_ Patent Owner.
`
`Case IPR2014-01182
`Patent 8,532,641 B2
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW,and
`JON B. TORNQUIST,Administrative Patent Judges.
`
`TORNQUIST,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2014-01182
`Patent 8,532,641 B2
`
`I. INTRODUCTION
`
`SamsungElectronics Co., Ltd., Samsung Electronics America,Inc.,
`
`and Samsung Telecommunications America, LLC,(collectively,
`
`“Petitioner”) filed a Corrected Petition (Paper 4, “Pet.”) requesting
`institution of inter partes review of claims 1—3 and 5—14 of U.S. Patent No.
`
`8,532,641 B2 (“the ’641 patent”). Affinity Labs of Texas, LLC (“Patent
`Owner’) timely filed a Preliminary Response (Paper8, “Prelim. Resp.’’) to
`
`the Petition.
`
`.
`
`Wehavejurisdiction under 35 U.S.C. § 314(a), which providesthat an
`inter partes review may notbeinstituted “unless .
`.
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin the petition.”
`
`For the reasons given below, on this record wefind that Petitioner has
`
`established a reasonable likelihood of prevailing with respect to claims 1-3
`
`and 5—14 of the ’641 patent. Pursuant to 35 U.S.C. § 314, we authorize an
`
`inter partes review to be instituted as to these claims on the groundsset forth
`
`below.
`
`A. Related Proceedings
`Petitioner represents that the ’641 patentis being asserted in Affinity
`Labs of Texas, LLC v. Samsung Electronics Co., Ltd., 3:14-cv-3030 (N.D.
`
`Cal.) and Affinity Labs of Texas, LLC v. Blackberry, 5:14-cv-3031 (N.D.
`
`Cal.). Pet. 4. The ’641 patent is also the.subject of co-pending IPR petitions
`
`IPR2014-01181 and IPR2014-01184. Paper7, 1; Pet. 5.
`
`B. The ’64] Patent
`
`The ’641 patentis directed to a system and method for
`
`communicating selected information to an electronic device. Ex. 1101,
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
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`1:21—23, 2:15—-21. In the disclosed embodiments,a radio listener may create
`
`_ a personalized playlist and “listen to this playlist in a wireless atmosphere
`
`while enjoying CD quality sound.” Jd. at 2:18-21. The audio information
`
`transmitted to a user may include “streaming audio.” /d. at 3:67—-4:1.
`
`Electronic devices contemplated for use in the disclosed system
`
`include “a network radio, a modular device, an audio system, a personal
`
`digital assistant (PDA), a cellular phone, or other electronic devices operable
`
`to receive information wirelessly communicated” by a communications
`
`engine. Id. at 5:36-41. Wireless communication may be accomplished
`
`using various means,including cellular communications, AM or FM signals,
`
`and “high speed, low-power microwave wireless links,” such as a
`|
`“Bluetooth link.” Id. at 2:33-43, 5:61-6:24.
`Accordingto the 641 patent, “conventional” wireless systems
`
`communicate information across a channel in “an asynchronous manner.”
`
`Id. 6:34—39. In addition to this conventional asynchronous method, the ’641
`
`_ patent also “advantageously allows for signals to be transmitted to an
`
`electronic device in a less than asynchronous manner.” Jd. at 6:40—42.
`
`In one embodiment, the electronic device is operable to communicate
`
`received audio information to a different audio system, such as an audio
`
`radio receiver, using “a localized communications-signaling network.” Jd. at
`9:44—56, 10:26—-35, 12:29-35. The electronic device may also communicate
`with the audio system using a physical interface having at least two
`
`conductive paths, the first path for communicating information and the
`
`second path for providing powerto the electronic device. Jd. at 18:31-39.
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
`
`C. Illustrative Claims
`Claims 1—3 and 5—14 areat issue in this proceeding. Claims 1 and 8
`
`are independent. Claims 2, 3, and 5—7 depend,directly or indirectly, from
`
`claim 1 and claims 9-14 depend,directly or indirectly, from claim 8.
`Independentclaims 1 and8areillustrative of the challenged claimsandare
`reproduced below:
`
`'
`
`1. A music enabled communication system, comprising: a
`wireless telephone device, the device having (1) a display at
`least partially defining a front surface of the device, (2) a
`housing componentatleast partially defining a back surface of
`the device, (3) an enclosure located between the front surface
`and the back surface, (4) a wireless communication module
`located within the enclosure, (5) a rechargeable power supply
`located within the enclosure, (6) a physical interface having a
`first and a second conductive path,
`the physical
`interface
`operable to communicate data via the first conductive path and
`to receive a recharging power for the rechargeable power
`supply via the second conductive path, and (7) a memory
`system, located within the enclosure; and
`
`a collection of instructions stored in the memory system, the
`collection
`of
`instructions
`operable when
`executed
`to
`communicate a collection of information about media content
`available from the wireless telephone device to a recipient
`device such that the recipient device can use the collection of
`information to generate a graphical menu comprising a
`selectable menu item associated with the available media
`content, to utilize the wireless communication module to stream
`a signal representing at least a portion of a song to the recipient
`device using a given asynchronous wireless channel of a
`localized communications
`signaling network,
`to recognize
`receipt of an incoming telephonecall, and to alter an outputting
`of the signal
`in connection with recognizing receipt of the
`incoming telephonecall.
`
`Ex. 1101, 19:29-57.
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
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`8. A system for wirelessly communicating musical content,
`comprising:
`
`a portable electronic device having a processor operable to play
`an audio file that represents a song;
`
`a memory communicatively coupled to the processor and
`configured to store a plurality of audio files; and
`
`a wireless communication module communicatively coupled to
`the processor and operable to communicate a streaming audio
`signal that represents a playing of the song to a recipient device
`via a localized communications signaling network in response
`to a selection of a selectable menu item presented on a recipient
`device display, wherein the wireless communication moduleis
`compliant with a Bluetooth standard,
`further wherein the
`wireless communication module is configured to communicate
`at least a portion of the streaming audio signal to the recipient
`device using an asynchronous channel.
`
`~ Id. at 20:28-45.
`
`D. The Relied Upon Prior Art
`
`Petitioner relies upon the flowing priorart references, as well as the
`
`Declaration of Dr. Schuyler Quackenbush, Ph.D., dated July 23, 2014 (Ex.
`1123):
`
`
`
`
`xhibit
`-
`
`1103
`
`1104
`
`
`
`Da
`Feb. 20, 2001
`
`Aug.
`
`3, 2004
`
`;
`
`Apr.
`
`1, 2003
`
`1105
`
`
`
`
`
`es
`Ga
`
`US 6,192,340 Bl
`
`US 6,772,212 B1
`
`US 6,542,758 Bl
`
`’ > >
`
`’ > >
`
`
`
`Referen
`
`Chennakeshu
`
`
`
`
`
`
`IPR2014-01182
`Patent 8,532,641 B2
`
`
`Ha ReTerence!
`Rydbeck
`
`
`
`
`!
`US 7,123,936 Bl
`
`
`
`ger abatepoelieaExtbigs
`Oct. 17, 2006
`1112
`
`
`
`
`
`E. The Asserted Grounds of Unpatentability
`
`
`
`Abecassis and Chennakeshu § 103|1-3, 5, 8-11, 13, 14
`
`References
`
`
`
`Claim(s) challenged .
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1-3, 5, 8-11, 13, 14
`§ 103
`Reaan: Chennakeshu, and
`-
`Treyz, Herrod, Gladwin,
`
`Chennakeshu, and Rydbeck § 103|1-3, 5, 9, 10, 13, 14
`Treyz, Gladwin, Chennakeshu,
`
`Rydbeck, and Galensk § 103|7, 12
`
`
`Treyz, Herrod, Gladwin,
`
`Chennakeshu, Rydbeck, and § 103|6,7, 12
`
`Galensk
`
`aoreassts Chennakeshu, and
`Abecassis, Chennakeshu, Herrod, and
`Galensk
`Abecassis, Chennakeshu, Lau, and
`Galensk
`Abecassis, Chennakeshu, Herrod,
`Lau, and Galensk
`
`§ 103
`§ 103
`
`Il. ANALYSIS
`
`A. Claim Construction
`In an interpartes review, “[a] claim in an unexpiredpatent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in whichit appears.” 37 C.F.R. § 42.100(b). In determining the
`
`6
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`IPR2014-01182
`Patent 8,532,641 B2
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`broadest reasonable construction, we presumethat claim termscarry their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted when a
`
`patentee, acting as a lexicographer, sets forth an alternate definition of a
`
`term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Streaming audio signal
`
`The term “streaming audio signal” is not expressly defined in the 641
`patent. Petitioner contendsthat the term “stream” meansto “transfer as a
`flow of data” and “streaming audio signal” should be construed to mean an
`“audio signal transferred as a flow ofdata.” Pet. 11; Ex. 1122, 4 (defining
`the term “stream” to mean “[t]o send data from one device toanother”).
`Patent Owner contendsthat a “streaming audio signal”is a
`
`“signal/audio signal that is played asit arrives at a recipient device, not
`
`requiring that an entire file be transferred to and stored at a recipient device
`
`’ prior to initiating playback.” Prelim. Resp. 7. In support ofthis
`
`construction, Patent Ownercites to several portions of the °641 specification
`that discuss transferringfiles and streaming audio broadcasts. Jd. (citing Ex.
`1101, 3:67—4:1, 7:4-7, 8:25—26, 10:20, 13:8-9).
`
`The ordinary meaning of “streaming”is “relating to or being the
`
`transfer of data (as audio or video material) in a continuous stream
`
`especially for immediate processing or playback.” (Streaming Definition,
`
`MERRIAM-WEBSTER.com,http://www.merriamwebster.com
`
`/dictionary/streaming)(last visited Jan. 15, 2015). This is consistent with
`Petitioner’s proposed construction requiring transfer of the audio
`
`information “as a flow of data.” Although the ordinary meaning of
`
`
`
`IPR2014-01182
`Patent 8,532,641 B2
`
`“streaming” encompassesthe immediate processing orplayback ofdata, as
`
`asserted by Patent Owner,it is not limited to this method, and the ’641
`
`patent Specification does not set forth an alternate definition of the term with
`
`reasonableclarity, deliberateness, and precision sufficient to justify
`departing from the ordinary meaning of the term. See In re Paulsen, 30 F.3d
`
`at 1480. Accordingly, we construe “streaming audio signal” to mean “an
`
`audio signal that is transferred in a continuous stream.”
`
`B. Prior Art
`
`Petitioner asserts that claims 1—3 and S—14 would have been obvious
`
`over various combinations of Abecassis, Chennakeshu, Herrod, Lau, and
`
`Galensky. Pet. 12.
`
`1. Abecassis
`
`Abecassisis directed to a system and methodfor “integrating a
`
`playing of music that is responsive to a‘user’s music preferences applied to
`
`the user’s audio library with a playing of real-time information that is
`
`responsive to the user’s information preferences.” Ex. 1103, 1:8-12. To
`implementthis method, Abecassis discloses a portable Multimedia Player
`that also functions as “a stand alone cellular phone.” Jd. at 9:26-30. The
`
`Multimedia Player may function “as a portable part of multiple-phone
`configuration, a radio, a remote control, as a digital audio player, and/or as a
`radio-on-demandplayer.” Jd. at 9:28-31.
`The Multimedia player may be controlled by a remote control device
`
`having various function keys useful for “program selection, music and
`
`information preference selection, and source selection.” Jd. at 9:47-55. The
`
`remote control may communicate directly with the Multimedia Player, using
`
`wired or wireless means, and mayrendera transmission “audible for the user
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
`
`throughits built-in speaker.” Jd. at 10:41-45, 12:28-39. In one
`embodiment, the Multimedia Player can be used in conjunction with a
`
`vehicle speaker system and maytransfer information by “meansof a cable
`or by direct insertion into a built-in docking bay.” Jd. at 14:12-17.
`|
`
`2. Chennakeshu
`
`“
`
`Chennakeshuis directed to a mobile radio telephonefor use in a
`
`vehicle. Ex. 1105, 1:9-12. The mobile telephone of Chennakeshu may
`
`communicate using a Bluetooth interface over an asynchronous data
`
`channel. Jd. at 4:60-5:15. In at least one embodiment, the system of
`
`Chennakeshuis configured to allow for “hands-free operation oncea callis
`established.” Jd. at 1:22-24,
`|
`
`3. Herrod
`
`Herrodis directed to a portable data device, or terminal, and a
`
`terminal docking device, or cradle. Ex. 1106, 1:5—7. The portable data
`device of Herrod “compris[es] cellular telephone means for conventional
`telephone communication.” Jd. at 3:32-36, 16:8-11. The portable data
`device of Herrod contains a rechargeable battery that may be rechargedat a
`
`cradle mountedin a user’s vehicle and a physical interface for connectingto,
`
`and communicating with, the cradle. Id. at 6:56—59, 18:66—19:14.
`
`4. Lau
`Lau is directed to a server for audio/visual data. Ex. 1104, 1:19-20.
`
`“In one embodiment, the audio/visual server stores music, emulates a disc
`
`changer, and communicates with an audio head unit,” such as “a standard
`
`automobile stereo head unit which is adapted to communicate with a disc
`
`changer.” Jd. at 2:54-56, 4:35-37. In Lau, the head unit contains various
`
`buttons which maybe pushed bya user, one of which may correspondto a
`playlist. Jd. at 11:34-39.
`Ifthe button corresponding to a particular playlist
`9
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`IPR2014-01182
`Patent 8,532,641 B2
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`~
`
`is selected, the music serverwill begin playing tracks from that playlist. Jd.
`
`at 11:9-41.
`3. Galensky
`Galenskyis directed to “[a] wireless device, system and method for
`receiving and playing multimedia files streamed from a multimedia server
`
`over a wireless telecommunications network.” Ex. 1107, Abstract.
`
`Galensky discloses that “to conserve bandwidth within the wireless
`
`network,”it is preferable to transmit data “at the highest data rate possible”
`to create a 5~10 second buffer and, once the desired buffer is created, to
`
`decrease the data transmission rate to the minimumrate necessary for
`
`adequate transmission of “streamed data.” Jd. at 6:1—18.
`C. Obviousness ofClaims 1-3, 5, 9, 10, and 14 over Abecassis,
`Chennakeshu, and Herrod
`Petitioner asserts that the combination of Abecassis, Chennakeshu,
`and Herroddiscloses, or renders obvious, every limitation of claims 1-3, 5,
`9,10, and 14. Pet. 12, 18-38. In particular, Petitioner asserts that Abecassis
`
`discloses: (1) a wireless telephone device having a display, housing, wireless
`
`communication module, and memory;(2) a collection of instructions
`
`operable to provide information about media content available from the
`
`wireless telephone device to a recipient device (in the form of a remote
`
`control) such that the recipient device can use the information to generate a
`
`graphical menu with a selectable menuitem associated with the available
`media content; and (3) streamingat least a portion of a song to the recipient
`device. Pet. 18-23. Petitioner further asserts that Chennakeshu discloses
`both using a Bluetooth communication module to transmit information over
`
`an asynchronous channel and hands-free operation of the wireless telephone.
`
`Pet. 21-22, 27. Finally, Petitioner asserts that Herrod discloses a display
`
`10
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`IPR2014-01182
`Patent 8,532,641 B2
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`that makes up more than half of the front surface of the device, a
`
`rechargeable power supply, and a physical interface operable to
`
`communicate data overa first path and receive power over a secondpath.
`Pet. 19.
`
`With respect to the reason to combinethe references, Petitioner
`asserts that it would have been obviousto incorporate the communication
`methods of Chennakeshu in the Abecassis system because one of ordinary
`
`skill in the art would have understood that Bluetooth modules were an
`
`“economically feasible” method for connecting devices and communicating
`over an asynchronouschannel provides “a simple, flexible, and cost-
`effective way to transmit data.” Pet. 15 (citing Ex. 1123 Jf 73, 74, 83, 84,
`97, 114, 115, 126). Petitioner further asserts that it would have been obvious
`to combinethe display, rechargeable power supply, and physical interface of
`
`Herrodin the wireless telephone of Abecassis because these elements were
`
`well knownin the art and would allow for easier navigation of displayed
`
`menu items,“eliminate the need to replace batteries of the phone,” and
`
`permit the phonetorecharge the batteries and communicate data using a
`single physical interface. ‘Pet. 16 (citing 1123 Y§ 44, 52, 90, 99, 118, 119,
`122, 138).
`|
`|
`
`Patent Ownerasserts that Petitioner has not demonstrated that claim 1
`
`would have been obvious becauseit has not explained whyoneof ordinary
`
`skill in the art would modify the Multimedia Player of Abecassis to include
`
`the rechargeable battery of Herrod. Prelim. Resp. 34. In particular, Patent
`
`Ownerarguesthat the following discussion in Abecassis teaches away from
`
`using a rechargeable powersupply:
`In a preferred embodiment of a Multimedia Player, every
`component and subsystem is added or
`replaced without
`
`1]
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`IPR2014-01182
`Patent 8,532,641 B2
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`resorting to screwdrivers and the need to unplug and plug
`communications and power cables. The motherboard and
`cabinet permitting the replacement of, for example, the power
`supply 109 just as easily as a battery is replaced in a portable
`personal computer.
`Ex. 1103, 8:42-48; Prelim. Resp.34.
`. a replaceable
`.
`According to Patent Owner, by “explicitly teaching .
`powersupply Abecassis teaches away from using a rechargeable power
`
`supply.” Prelim. Resp. 34. Patent Owner does not explain, however, why a
`
`replaceable power supply, such as that. found in a portable personal
`computer, is necessarily not rechargeable or would teach away from using a
`rechargeable powersupply. See id. (citing Ex. 1103, 8:42-48).
`
`Accordingly, at this stage of the proceeding we are not persuadedthat
`
`Abecassis teaches away from using a rechargeable power supply.
`With respect to the reason to combine thereferences,at this stage of
`the proceeding we credit Dr. Quackenbush’s testimony that rechargeable
`
`batteries, as disclosed in Herrod, were commonin the art and one of
`
`ordinary skill in the art would have sought to implement such batteries in the
`
`wireless telephone of Abecassis in order to provide “true portability” to the
`Abecassis device and eliminate “the need to periodically replace ordinary
`(i.e., non-rechargeable) batteries.” Ex. 1123 qj 42-44.
`Patent Ownerfurtherasserts that Petitioner has not explained
`adequately whyoneof ordinary skill in the art would have combined
`Herrod’s interface—having two conducting paths for power and data—in the
`
`Multimedia Player of Abecassis. Prelim. Resp. 35. At this stage of the
`proceeding, however, given that Abecassis discloses communicating audio
`content using a wired connection, including a “built-in docking bay,” we
`
`credit Dr. Quackenbush’s testimony that one of ordinary skill in the art
`
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`IPR2014-01182
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`would have sought to implement Herrod’s physical interface in the
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`|
`
`Abecassis system in order to simultaneously recharge the power supply and
`send or receive data. Ex. 1123 § 48-52; Ex. 1103, 14:12-16.
`Patent Ownernext argues that Abecassis does not disclose
`transmitting information about media contentavailable from the wireless
`| telephone that may be usedbya recipient device to generate a selectable
`menu item. Prelim. Resp. 36. In particular, Patent Ownerasserts that the
`remote control deviceof Abecassis identified by Petitioner cannot be the
`recipient device of claim 1 “because the claimed ‘recipient device’ is the
`
`device to which a ‘signal representing at least a portion of a song’ can be
`
`streamed by the claimed wireless telephone device,” and “[u]nder
`
`Petitioners’ theory, the ‘remote control device’ of Abecassis corresponds to
`
`a wireless telephone device, not to a recipient device.” Jd. at 36—37 (citing
`
`Pet. 22).
`
`Petitioner presents evidence, however, that the remote control device
`ofAbecassis receives menu information from the Multimedia Player,
`displays various selectable, graphical menu items, and may directly receive
`from the Multimedia Player a transmission and renderit audible forthe user
`through its built-in speaker. Pet. 20, 22 (citing Ex. 1103, 9:31-33
`
`(disclosing that the remote control may operate using “any numberof
`
`technologies both wired and non-wired”), 9:50—59 (“In particular the
`
`interactively defined and labeled function keys may be automatically
`
`configured and reconfigured by a specific transmission or other information
`
`downloaded from, for example, the Multimedia Player”); 10:41-45 (noting
`
`that the remote control can directly receive a transmission from the
`
`Multimedia Player and play it throughits built-in speakers)). On this record,
`
`13
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`IPR2014-01182
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`therefore, we are not persuaded by Patent Owner’s argumentthat the remote
`
`_ control deviceis not a “recipient device.”
`
`Patent Ownernext argues that Abecassis does not disclose
`
`“streaming” a song to the recipient device using an “asynchronous wireless
`
`channel”and,to the extent Petitioner relies upon the disclosure of
`
`Chennakeshu, Petitioner has not explained why oneofordinary skill in the
`
`art would have implemented Chennakeshu’s asynchronous communication
`module in Abecassis, especially since Chennakeshu relates to
`“communicating asynchronous data,” whereas the claims require
`
`“stream[ing] a signal representing at least a portion of a song.” Prelim.
`
`Resp. 40.
`
`Petitioner presents evidence that the devices of Abecassis may
`
`retrieve a song “at the timeofits playing,i.e., retrieved and played in a real-
`
`time manner.” Pet. 22 (citing Ex. 1103; 11:1-8, 12:28-31, 13:62-67, 14:60—
`
`65). Weare persuadedthat this constitutes “streaming,” as we have
`
`construed that term. Moreover, although Petitioner does notidentify a
`
`disclosure in Abecassis of streaming audio content over an “asynchronous
`channel,” the ’641 patent acknowledgesthat prior to the 641 patent it was
`“conventional,” if not in fact required, to transmit audio over a channelin an
`
`asynchronous manner, as disclosed in Chennakeshu. Ex. 1101, 6:31-39
`
`(noting that “conventional” wireless systems communicate “in an
`asynchronous manner to provide a continuous audio signal to the recipient”
`and “[t]he present invention mayallow for a relative increase in transmission
`
`speed by removing the requirementthat information be communicated
`
`asynchronously to an electronic device’’). Finally, Patent Ownerdirects us
`
`to no credible evidence to suggest a functional difference exists between
`
`14
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`IPR2014-01182
`Patent 8,532,641 B2
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`streaming “data,” as disclosed in Chennakeshu, and a “song.” Indeed, the
`
`’641 patent discloses wirelessly transmitting “data” representing selected
`
`audio information. See, e.g., Ex. 1101, 2:15—51, 3:3-9. Accordingly, we are
`
`not persuaded by Patent Owner’s argument.
`
`Claim 2 requires that “the wireless communication module is
`
`compliant with a Bluetooth standard.” Ex. 1101, 19:58—-59. Petitioner
`contends that Abecassis in combination with Chennakeshudisclosesthis
`
`limitation. Pet. 26. Patent Owner respondsthat Petitioner has not explained
`
`whyoneof ordinary skill in the art would have implemented Chennakeshu’s
`
`Bluetooth communication methodin the Abecassis system. Prelim. Resp.
`
`40. At this stage of the proceeding, we are not persuadedby this argument.
`Ericsson,’ whichis incorporated by reference in Chennakeshu,describes the
`
`Bluetooth standard and its advantages over existing methodsof short range
`
`communications for portable devices. Ex. 1108A, 110 (noting that, in
`
`contrast to existing infrared links, Bluetooth provides greater range, does not
`require direct line-of sight, and can be used by morethan two devices at one
`time);” Pet. 15—16 (citing to the disclosure in Ericsson). Given these
`disclosed advantages, as well as Dr. Quackenbush’s testimony that
`Bluetooth technology “was being widely adopted by many companies in the
`industry” prior to March 28, 2000,at this stage of the proceeding we are’
`
`persuadedby Petitioner’s argumentthat one of ordinary skill in the art
`
`would have sought to implement Bluetooth functionality, as disclosed in
`
`' Jaap Haartsen, Bluetooth-The Universal Radio Interfacefor Ad Hoc,
`Wireless Connectivity, Ericsson Review No: 3 (1998) at 110.
`? Ericsson contains page numbers stampedonthe lowerright andoriginal
`page numbersin the lowerright and left sides of alternating pages. Our
`citations are to the original page numbersofthe reference.
`15
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
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`Chennakeshu,in the wireless device of Abecassis. Pet. 15; Ex. 1108A, 110;
`
`Ex. 1123 ¥ 74, 84.
`
`Patent Ownerfurther contends that Petitioner has not adequately
`
`“explained the teaching or motivation to combine that would haveled one of
`ordinary skill in the art” to include Chennakeshu’s hand-free communication
`
`method, as required in claim 5, in the Abecassis system. Prelim. Resp. 41—
`
`42. Both Abecassis and Chennakeshu, however, disclose using a wireless
`
`telephonein a vehicle. Ex. 1103, 14:8-18; Ex. 1105, 6:16-43. At this stage
`of the proceeding, we are persuaded by Petitioner’s argument—supported by
`
`the declaration testimony of Dr. Quackenbush—thatoneofordinary skill in
`the art would have recognized that Chennakeshu’s hands-free
`|
`communication method would provide an easier and safer way to operate the
`
`Abecassis phone in a vehicle. Pet. 16; Ex. 1123 797.
`
`Based on the foregoing, we are persuaded that Petitioner has set forth
`
`sufficient argument and evidence to demonstrate a reasonable likelihood that
`claims 1-3, 5, 9, 10, and 14 would have been obvious over Abecassis,
`Chennakeshu, and Herrod.
`|
`
`D. Obviousness of Claims 6 and 7 over Abecassis, Chennakeshu,
`Herrod, and Galensky
`Claim 6 depends from claim 1 and further requires a wireless
`telephone having a display that “makes up morethan half of the front
`
`surface” and is operable to receive a collection of data at a hybrid of
`
`communication rates. Ex. 1101, 20:11—15. Claim 7 depends from claim 1
`
`and further requires a wireless telephone having a buffer memory thatis
`
`“operable to cause a change in communication rates at which a given
`
`componentpart is received basedatleast partially upon an amountofdata
`
`located in the buffer memory.” Ex. 1101, 20:16—27.
`
`16
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`
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`IPR2014-01182
`Patent 8,532,641 B2
`
`Petitioner asserts that claims 6 and 7 would have been obvious over
`
`Abecassis, Chennakeshu, Herrod, and Galensky. Pet. 28-31. In particular,
`
`Petitioner asserts that Herrod discloses a wireless telephone with a display
`that makes up morethan halfofthe front surface of the device and Galensky
`
`discloses using two different communication rates, which are selected based
`
`upon the amount of data in a buffer. /d. (citing Ex. 1106, Figs. 1, 2b; Ex.
`
`1107, 2:21-47, 6:2-18; Ex. 1123 4] 98-102, 104-109). Petitioner further
`
`asserts that one of ordinary skill in the art would have implemented Herrod’s
`
`larger display in the Abecassis device in order to “provide a larger screen for
`viewing menus,selecting audiofiles, and performing other tasks on the
`device” and would have implemented Galensky’s varying communication
`
`rates in order to conserve bandwidth within the network, as taught by
`
`Galensky. Pet. 16—18 (citing Ex. 1123 JJ 90, 99, 102, 109, 129; Ex. 1107,
`
`5:66-6:15).
`
`Patent Ownerasserts that Petitioner has not explained sufficiently
`
`what would have compelled oneofordinary skill in the art to implement
`
`Herrod’s larger display or Galensky’s method of using hybrid
`communication rates in the device ofAbecassis. Prelim. Resp. 42-43. In
`particular, Patent Ownerasserts that Petitioner ignores the fact that Galensky
`
`is concerned with altering communication rates in order to serve multiple
`
`subscribers, “which is not applicable here.” Prelim. Resp. 23. We are not
`
`persuaded by this argument, however, because Patent Ownerdoesnot .
`
`explain sufficiently why maximizing network resources in order to serve
`
`multiple subscribers “is not applicable here.” See Ex. 1103, 8:55—59 (noting
`
`that “the communications module supports cellular phone communications,
`
`
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`IPR2014-01182
`Patent 8,532,641 B2
`
`the reception of broadcasted content .
`
`.
`
`. and accessto a variety of
`
`communication networks”).
`
`Based on the foregoing, we determinethat Petitioner has
`
`demonstrated a reasonable likelihood that claims 6 and 7 would have been
`
`obvious over Abecassis, Chennakeshu, Herrod, and Galensky.
`
`E. Obviousness ofClaims 8, 11, and 13 over Abecassis and
`Chennakeshu
`
`Petitioner asserts that claims 8, 11, and 13 would have been obvious
`
`over Abecassis and Chennakeshu. In support of its argument, Petitioner
`
`provides detailed claim charts and the testimony of Dr. Quackenbush. Pet.
`32-33, 35-38; Ex. 1123 J§ 110-115, 123-126, 130-137. With respect to
`claim 8, Patent Ownerasserts the same general arguments regarding
`streaming, Bluetooth, asynchronous channels,and selection of a selectable
`
`menu item as set forth for claims 1 and2. Prelim. Resp. 36-41. Patent
`Ownerdoes not address claims 11 and 13 with particularity.
`For the reasons set forth above, at this stage of the proceedings we are
`
`not persuaded by Patent Owner’s arguments. Weare persuaded,therefore,
`
`‘ that Petitioner has demonstrated a reasonable likelihood that claims8, 11,
`and 13 would have been obvious over Abecassis and Chennakeshu.
`
`F. Obviousness of Claim 12 over Abecassis, Chennakeshu, and
`Galensky
`Claim 12 dependsfrom claim 8 and further requires, inter alia, a
`wireless telephone device having a wide area communication module
`
`“operable to receive a collection of data representing a media at a hybrid of
`
`wireless communication rates” and a “buffer memory, wherein a change in
`communicationrates is at least partially based upon an amountof data
`located in the buffer memory.” J/d. at 21:1-12. Petitioner asserts that claim
`
`18
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`
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`IPR2014-01182
`Patent 8,532,641 B2
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`12 would have been obvious over Abecassis, Chennakeshu, and Galensky.
`
`Pet. 12. In support, Petitioner provides a claim chart and the supporting
`
`testimony of Dr. Quackenbush. Pet. 36; Ex. 1123 9{ 127-129.
`|
`Patent Ownerasserts that Petitioner’s argument fails because
`Abecassis only discloses “temporary data buffering” and Petitioner has “not
`
`explained the teaching or motivation to combine that would have led one of
`ordinary skill in the art at the time of the invention to modify the Multimedia
`
`Player disclosed in Abecassis with the[] particular teachings in Galensky.”
`
`Prelim. Resp. 44-45.
`
`Atthis stage of the proceeding, we are not persuaded by Patent
`
`Owner’s argument. Although Abecassis discloses a method of temporarily
`buffering information in memory thatis not identical to that required in
`
`claim 12, Petitioner relies upon the combined teachings of Abecassis and
`
`Galenskyfor this claim element. And, for the reasons set forth above, we
`
`_are persuaded that Galensky discloses the claimed buffering method andthat
`
`Petitioner has set forth sufficient articulated reasoning with rational
`underpinning to support the combination of Abecassis and Galensky. Pet.
`
`17, 36; KSR Int’ Co. v. Teleflex Inc., 550 US. 398, 418 (2007).
`
`Accordingly, we are persuaded that Petitioner has demonstrated a reasonable
`
`likelihood that claim 12 would have been obvious over Abecassis,
`
`Chennakeshu,and Galensky.
`
`G. Remaining Grounds Based on Abecassis
`
`Based on our decision to institute inter partes review ofall challenged
`
`claims on the groundsset forth above, we exercise our discretion and decline
`
`to institute review on the grounds based on: Abecassis, Chennakeshu and
`
`Lau; Abecassis, Chennakeshu, Herrod, and Lau; Abecassis, Chennakeshu,
`
`19
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`
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`IPR2014-01182
`Patent 8,532,641 B2.
`
`Lau, and Galensky; and Abecassis, Chennakeshu, Herrod, Lau, and
`Galensky. See Pet. 12; see also 37 C.F.R. § 42.1(b) (proceedings before the
`Board are to be construed to “secure the just, speedy, and inexpensive
`
`resolution of every proceeding”).
`
`H. Grounds Based on Treyz
`
`Petitioner asserts that claims 1—3 and 5—14 would have been obvious
`
`over various combinations of Treyz, Gladwin, Chennakeshu, Herrod,
`
`Rydbeck, and Galensky. Pet. 38. Petitioner does not explain, however, why.
`the grounds based on Treyz are stronger with respect to any of the
`_
`challenged claims than the grounds based on Abecassis. Accordingly,
`
`because ourinstitution of an inter partes review on the Abecassis-based
`
`grounds covers each of the challenged claims, we exercise our discretion and
`
`decline to institute an inter partes review of the ground based on Treyz as to
`
`the same claims. See 35 U.S.C. § 314(a); 37 C_F.R. § 42.108(a).
`
`Ill. CONCLUSION
`For the reasons
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