IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNGELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA,INC.
`
`Petitioners,
`
`V.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184'
`
`Patent 8,532,641 B2
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`' Cases IPR2014-01181, IPR2014-01182, and IPR2014-01184 were consolidated
`on March 24, 2015. See IPR2014-01181, Paper 15 at 2.
`
`86566818.1
`
`
`Patent 8,532,641 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNGELECTRONICS CO., LTD; SAMSUNG
`ELECTRONICS AMERICA,INC.
`
`Petitioners,
`
`V.
`
`AFFINITY LABS OF TEXAS, LLC,
`
`Patent Owner.
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184'
`
`Patent 8,532,641 B2
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`' Cases IPR2014-01181, IPR2014-01182, and IPR2014-01184 were consolidated
`on March 24, 2015. See IPR2014-01181, Paper 15 at 2.
`
`86566818.1
`
`
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to 37 C.F.R. § 90.2(a), notice is hereby given that Patent Owner,
`
`Affinity Labs of Texas, LLC, (“Patent Owner’) hereby appeals to the United States
`
`Court of Appeals for the Federal Circuit from the Final Written Decision of the
`
`Patent Trial and Appeals Board entered on January 28, 2016 in case IPR2014-
`
`01181, Paper 36; IPR2014-01182, Paper 16; and IPR2014-01184, Paper16, and
`
`from all underlying findings, orders, decisions, rulings, and opinions.
`
`In accordance with 37 C-F.R. § 90.2(a)(3)(ii), Patent Ownerindicates that
`
`the issues on appealinclude:
`
`(1) whether the Boarderred in finding claims 1-3, 5, 9, 10, and 14 ofthe
`
`°641 patent unpatentable under 35 U.S.C. § 103 overthe combination of
`
`Abecassis, Herrod, and Chennakeshu,including the Board’s determination that
`
`Petitioners met their burden to show unpatentability by a preponderanceof
`
`evidence and any finding or determination supporting orrelated to this issue;
`
`(2) whether the Board erred in finding claims 6-7 ofthe 641 patent
`
`unpatentable under 35 U.S.C. § 103 over the combination of Abecassis, Herrod,
`
`Chennakeshu,and Galensky, including the Board’s determination that Petitioners
`
`86566818. 1
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`1
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`
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`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`mettheir burden to show unpatentability by a preponderance of evidence and any
`
`finding or determination supportingorrelated to this issue,
`
`(3) whether the Boarderredin finding claims 8, 11, and 13 of the 641
`
`patent unpatentable under 35 U.S.C. § 103 over the combination of Abecassis and
`Chennakeshu, including the Board’s determination that Petitioners met their
`
`burden to show unpatentability by a preponderanceof evidence and any finding or
`
`determination supportingor related to this issue,
`(4) whether the Board erred in finding claim 12 ofthe °641 patent
`
`unpatentable under 35 U.S.C. § 103 over the combination of Abecassis,
`
`Chennakeshu, and Galensky, including the Board’s determination that Petitioners
`
`met their burden to show unpatentability by a preponderance of evidence and any
`
`finding or determination supporting orrelated to this issue;
`
`(5) whether the Boarderred in finding claims 8,11, 13, and 14 of the ’641
`patent unpatentable under 35 U.S.C. § 103 over the combination ofIto, Haartsen,
`Nokia, and Rydbeck, including the Board’s determination that Petitioners met their
`
`burden to show unpatentability by a preponderanceof evidenceand any finding or
`
`determination supportingorrelatedto this issue;
`
`(6) whether the Board erred in finding claim 12 of the °641 patent
`
`unpatentable under 35 U.S.C. § 103 overthe combination of Ito, Haartsen, Nokia,
`
`Rydbeck, and Galensky, including the Board’s determinationthat Petitioners met
`
`86566818.|
`
`2
`
`
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`their burden to show unpatentability by a preponderance of evidence and any
`
`finding or determination supporting orrelated to this issue;
`
`(7) whether the Board erredin finding claims 8 and 11 of the *641 patent
`
`unpatentable under 35 U.S.C. § 103 over the combination of Ohmura and Ahn,
`
`including the Board’s determination that Ohmura and Ahnqualify as priorart to
`
`the 641 patent, that Petitioners met their burden to show unpatentability by a
`
`preponderance of evidence, and any finding or determination supporting orrelated
`
`to this issue;
`
`(8) whether the Board erred in finding claims 13-14 of the °641 patent
`
`unpatentable under 35 U.S.C. § 103 over the combination of Ohmura, Ahn, and
`
`Nokia, including the Board’s determination that Ohmura, Ahn, and Nokia qualify
`
`as prior art to the °641 patent, that Petitioners met their burden to show
`
`unpatentability by a preponderance of evidence, and any finding or determination
`
`supporting or related to this issue;
`
`(9) whether the Board erred in construing the claim term “streaming audio
`
`signal” as “an audiosignal that is transferred in a continuous stream,” including
`
`any finding or determination supportingorrelated to this issue;
`
`(10) whether the Board erred in construing the claim term “communication
`
`rate that provides for a CD quality listening experience”as “a data transferrate that
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`86566818. ]
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`3
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`
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`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`provides audio of equal or comparable quality to sound stored on a compactdisc,”
`
`including any finding or determination supporting orrelated to this issue;
`
`(11) whether the Board erred in deciding issues ofpriority outside the scope
`
`of the Board’s statutory authority to decide issues of unpatentability “only on a
`
`ground that could beraised undersection 102 or 103”,
`
`(12) whether the Board erred in finding that claims8, 11, and 13-14 of the
`
`°641 patent are notentitled to a priority date earlier than November9, 2012,
`
`including any finding or determination supportingorrelatedtothis issue,
`
`(13) whether the Board erred in considering improper new arguments and
`
`evidence introduced for the first time in the Petitioners’ Reply;
`
`(14) whether the Board deprived the Patent Ownerofits constitutional right
`
`to a jury trial under the Seventh Amendmentofthe UnitedStates Constitution by
`
`denying Patent Ownerofits patent rights withouta jury trial or that the inter partes
`
`review processis a violation of the separation of powers provided in the United
`
`States Constitution, and any finding or determination supportingorrelated to these
`
`issues; and
`
`(15) any other issues decided adversely to Patent Ownerin anyorders,
`
`decisions, rulings, or opinions issued in these proceedings.
`
`Simultaneous with this submission, a copy ofthis Notice of Appeal is being
`
`filed with the Patent Trial and Appeal Board.In addition, this Notice of Appeal
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`86566818.|
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`4
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`
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`and the required fee are beingfiled with the Clerk’s Office for the United States
`
`Court of Appeals for the Federal Circuit.
`
`Dated: March 30, 2016
`
`Respectfully submitted,
`
`/s/Ryan M. Schultz
`yan
`M. Scnultz
`Registration No. 65,134
`
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`Phone:
`(612)349-8500
`Email: RSchultz@RobinsKaplan.com
`
`Attorneyfor Patent Owner
`
`86566818.1
`
`
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`
`CERTIFICATE OF SERVICE
`
`I herebycertify that on March 30, 2016,a true and correct copyofthe
`
`foregoing PATENT OWNER’S NOTICE OF APPEALwasfiled electronically
`
`throughthe Patent Trial and Appeal Board’s Patent Review Processing System and
`
`was filed with the Director of the United States Patent and Trademarkoffice c/o
`
`the Office of General Counsel via Priority Mail Expresssent to the following
`
`address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I hereby also certify that on March30, 2016, a true and correct copy of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically
`
`with the Clerk’s Office of the United States Court of Appeals for the Federal
`
`Circuit via CM/ECF.
`
`I hereby further certify that on March 30, 2016,a true and correct copy of
`
`the foregoing PATENT OWNER’S NOTICE OF APPEALhasbeen served in its
`
`entirety on the Petitioners by electronic mail, as agreed upon by the parties:
`
`Steven. Baughman@ropesgray.com
`Gabrielle. Higgins@ropesgray.com
`Kathryn. Hong@ropesgray.com
`
`86566818. 1
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`6
`
`
`
`IPR2014-01181, IPR2014-01182, IPR2014-01184
`Patent 8,532,641 B2
`
`SamsungIPRService@ropesgray.com
`
`Dated: March 30, 2016
`
`/s/Ryan M. Schultz
`Registration No. 65,134
`
`86566818.1
`
`7
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Entered: January 28, 2016
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD and
`SAMSUNG ELECTRONICS AMERICA,INC.,!
`
`Petitioner,
`
`V.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`Case IPR2014-01181
`Patent 8,532,641 B2
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW,and
`JON B. TORNQUIST,Administrative Patent Judges.
`
`TORNQUIST,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`' On January 1, 2015, Samsung Telecommunications America, LLC, an
`originally-namedPetitionerin this case, was merged into Samsung
`Electronics America, Inc. See IPR2014-01181, Paper9.
`2. On March 24, 2015, we consolidated IPR2014-01182 and IPR2014-01184
`with IPR2014-01181. IPR2014-01181, Paper 15, 2.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`I. INTRODUCTION
`
`A. Background
`SamsungElectronics Co., Ltd and Samsung Electronics America,Inc.
`(collectively “Petitioner’”) filed Petitions in IPR2014-01181 (Paper4,
`“01181 Pet.”), IPR2014-01182 (Paper4, “-01182 Pet.”), and IPR2014-
`01184 (Paper4, “-01184 Pet.’””) requesting inter partes review of claims 1-3
`and 5-14 of U.S. Patent No. 8,352,641 B2 (Ex. 1001, “the 641 patent”).
`
`Affinity Labs of Texas, LLC (“Patent Owner”)filed Preliminary Responses
`
`to the Petitions.
`
`Pursuant to 35 U.S.C. § 314(a), we instituted inter partes review in
`each of IPR2014-01181 (Paper 10, “-01181 Dec. on Inst.”), IPR2014-01182
`(Paper 10, “-01182 Dec. on Inst.”), and IPR2014-01184 (Paper 10, “-01184
`Dec. on Inst.’’) and subsequently consolidated IPR2014-01 182 and IPR2014-
`01184 with IPR2014-01181. IPR2014-01181, Paper 15,2. Patent Owner
`filed a consolidated Patent Owner Response (Paper20, “PO Resp.”) to the
`Petitions and Petitioner filed a Reply (Paper 23, “Reply”).? Patent Owner
`also filed a paper identifying arguments and evidence in Petitioner’s Reply
`that it contends were improper (Paper 26), to which Petitionerfiled a
`
`response (Paper 29).
`In support of their respective positions, Petitioner submitted four
`declarations from Dr. Schuyler Quackenbush, Exs. 1023, 1123, 1223, 1025,
`and Patent Ownerfiled a declaration from Dr. Marilyn Wolf, Ex. 2005.
`An oral hearing was held on October 28, 2015, and a transcript of the
`oral hearing is included in the record. Paper 35 (“Tr.”).
`
`3 Aj] subsequent citalions to papers or exhibits refer to those in IPR2014-
`01181, unless otherwise noted.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Wehave jurisdiction under 35 U.S.C.§ 6(c), and this Final Written
`Decisionis issued pursuant to 35 U.S.C. § 318(a) and 37 C-F.R.§ 42.73,
`where wefind claims 1-3 and 5—14 of the 641 patent to be unpatentable.
`
`B. The '641 Patent
`
`The ’641 patent is directed to a system and method for
`communicating selected information to an electronic device. Ex. 1001,
`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 “songs, on-line radiostations, on-line
`broadcasts, streaming audio, or other selectable information.” Jd. 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 from the communications
`engine may beby various means,including cellular communications, AM or
`FM signals, or “high speed, low-power microwave wireless link[s],” such as
`a “Bluetooth link.” Jd. at 2:33-43, 5:61-6:24.
`
`According to the 641 patent, “conventional” wireless systems
`communicate across a channelin “an asynchronous manner.” Id. at 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.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`In one embodiment, the electronic device is operable to communicate
`the 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 utilize a physical
`interface having two conductive paths, the first path for communicating
`information and the second path for providing powerto the device.
`/d. at
`
`18:40-53.
`
`C. Illustrative Claims
`
`1. A music enabled communication system, comprising: a
`wireless telephone device, the device having (1) a display at
`least partially defining a front surface ofthe device, (2) a housing
`componentatleast partially defining a back surface ofthe 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
`conductivepath, 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 deviceto 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 telephone call, and to alter an outputting of the signal
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`in connection with recognizingreceipt of the incoming telephone
`call.
`
`Ex. 1001, 19:29-57.
`8. A system for wirelessly communicating musical content,
`comprising:
`a portable electronic device having a processor operable to play
`an audiofile that represents a song;
`a memory communicatively coupled to the processor and
`configured to store a plurality of audiofiles, 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 asynchronouschannel.
`
`Td. at 20:28-45.
`11, The system of claim 8, wherein the wireless communication
`module is operable to communicate the streaming audiosignalat
`a communication rate that provides for a CD quality listening
`experience.
`
`Id. at 20:64-67.
`
`D. The Evidence ofRecord
`Petitioner relies upon the following references:
`
`
`Reference_|Patent/Publication [Date Exhibit(s)
`
`
`
`
`
`Ito Jan. 24, 2006|1003US 6,990,334 Bl
`
`
`
`Se
`
`4 Exhibits with 10XX, 11XX, and 12XXprefixes were filed in IPR2014-
`01181, -01182, and -01184, respectively. Exhibits with 20XX, 21XX, and
`22XX prefixes were filed in IPR2014-01181, -01 182, and -01184,
`respectively.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Exhibit(s)
`
`
`
`US 6,973,067 B1 6, 2005|1006Dec.
`
`
`
`
`
`
`
`
`Rydbeck Oct. 17, 2006|1008, 1112US 7,123,936 B1
`
`Galensky Jan. 18,2005|1009, 1107, 1209US 6,845,398 B1
`
`
`
`
`
`US 6,192,340 Bl Feb. 20, 2001|1103
`
`
`
`
`
`
`
`
`
`
`
`
`
`2005
`US 2004/0214525 Al|Oct. 28, 2004|1205
`
`2002
`
`Owner’s Manual, Nokia 9000i Communicator, 1995-1997 Nokia Mobile
`Phones Ltd. (Ex. 1005B).
`E. The Asserted Grounds of Unpatentability
`
`The Board instituted inter partes review onthe following asserted
`
`groundsof unpatentability (-01181 Dec. on Inst. 19; -01182 Dec. on Inst.
`
`20-21; -01184 Dec. on Inst. 15):
`
`IPR2014-01181
`
`Statutory Ground
`§ 103
`
`§ 103
`
`Statutory Ground
`§ 103
`
`§ 103
`
`
`
`
`
`
`Ito, Haartsen, Nokia, and
`Rydbeck
`Ito, Haartsen, Nokia,
`Rydbeck, and Galens
`
`
`
`IPR2014-01182
`
`Abecassis, Chennakeshu,
`and Herrod
`Abecassis, Chennakeshu,
`Herrod, and Galens
`
`Challenged Claim(s)
`8,11, 13, and 14
`
`12
`
`Challenged Claim(s)
`1-3, 5,9, 10, and 14
`
`6 and 7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`
`
`Statutory Ground|References Challenged Claim(s) .
`
`
`Abecassis and Chennakeshu|8, 11, and 13
`
`
`§ 103
`Abecassis, Chennakeshu,
`12
`
`and Galens
`
`
`
`IPR2014-01184
`
`Statutory Ground
`
`
`
`
`
`
`
`8 and 11
`Ohmura and Ahn
`
`
`
`
`Ohmura, Ahn, and Nokia|13 and 14
`
`Challenged Claim(s)
`
`|
`
`I. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review proceeding, we give each claim term its
`broadest reasonable interpretation, as understood by one of ordinary skill in
`
`the art in light of the specification of the involved patent. 37 C.F.R.
`§ 42.100(b). Absent any special definitions in the specification, underthe
`broadest reasonable construction standard we give claim terms their ordinary
`
`and customary meaning, as would be understood by oneofordinary skill in
`the art at the time of the invention. See In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms
`must be set forth with reasonable clarity, deliberateness, and precision. See
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`1. streaming audio signal
`
`In the Decision to Institute, we preliminarily construed the term
`“streaming audio signal” to mean “an audio signal that is transferred ina
`continuous stream.” -01181 Dec. on Inst. 8. This construction was based, in
`
`part, on a dictionary definition of the term “streaming,” which is “relating to
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`or being the transfer of data (as audio or video material) in a continuous
`225
`stream especially for immediate processing or playback.
`Patent Ownercontends ourpreliminary constructionis too broad.
`According to Patent Owner, a person of ordinary skill in the art® would
`understand the term “streaming” in the 641 patent to mean a “signal/audio
`signal that is playedasit arrives at a recipient device, not requiring that an
`entire file be transferred to and storedat a recipient deviceprior to initiating
`playback.” PO Resp. 7; Ex. 2005 4 114-115. Patent Owner contends this
`narrower construction—requiring a “streaming audio signal” be played asit
`_ arrives—is supported by the “clear” delineation between “download and
`play files” and “streamingfiles” set forth in the °641 patent. PO Resp. 7.
`In support of this argument, Patent Ownerpoints to the following
`disclosures of the °641 patent regarding the transfer of content to an
`
`electronic device:
`
`For example, a user may wantto listen to an internet broadcast
`of
`an
`Internet
`radio
`station.
`Therefore,
`high-speed
`communication may be required to wirelessly communicate or
`stream the selected audio information to an electronic device.
`
`Ex. 1001, 7:3-7.
`
`5 Streaming definition, MERRIAM-WEBSTER.COM,http://www. merriam-
`webster.com/dictionary/streaming.
`6 Petitioner contendsthat a person ofordinary skill in the art would have a
`Bachelor’s degree in Electrical Engineering or Computer Science and
`approximately 1—2 years of experience in working with client/server
`architectures, Internet transmission protocols, wireless transmission
`protocols, Internet browser programming,and streaming media
`transmission.
`-01181 Pet. 12, Although Dr. Wolf’s identification of a
`person ofordinary skill in the art varies slightly from Petitioner’s, Patent
`Ownerdoes notassert that this difference is material to the outcomeofthis
`case. See Ex. 2005 § 34.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`*
`
`In another embodiment, portable radio 500 may include memory
`operably located within for storing downloaded information. For
`example, portable radio 500 may include 32 MB of RAM
`allowing electronic device 502 to receive selective information ©
`and download the selective information to memory located
`within the portable radio 500.
`- Td'at 13:4-9. According to Patent Owner,the first paragraph
`Identifies “streaming audio”that is played asit arrives and the second
`paragraph identifies “download and play files”that are stored in |
`memory. PO Resp.7.
`|
`Patent Owneralso arguesthat the patentee’s statements during
`prosecution reinforce the difference between “streaming” and
`“download and playfiles”:
`|
`[Streaming audio includes playing‘audio or video immediately
`as it is downloaded from the Internet, rather than storing it in a
`fileon the recelvingcomputer first.” A second reference defines
`streaming audio as “... streaming soundis playedasit arrives.
`The alternative is a sound recording that doesn’t start playing
`.
`until the entire file has arrived.”
`' Id. at 8 (quoting Ex. 2101, 2). Thus, Patent Owner contends the intrinsic
`evidence as a whole supports a construction that requires the immediate
`. playback of “streaming audio.”
`Petitioner asserts the Board’s preliminary constructionis consistent
`with the meaningoneofordinary skill in the art would give the term
`“streaming audio signal.” Reply 3.- According to Petitioner, the *641 patent
`doesnot disclose or require that “streaming audio”be playedasit arrives
`and, contrary to Patent Owner’s proposed construction, the °641 patent
`discusses “downloading” “audio information such as MP3s, streaming
`audio, [and] streaming Internet Broadcasts...
`.” Jd. at 4 (quoting Ex. 1001,
`8:31-35).
`,
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`With respect to Patent Owner’s statements during prosecution,
`Petitioner contends the Examinerspecifically rejected Patent Owner’s
`proposed distinction between “streaming” and downloadandplay files as
`unsupported by the Specification of the ’641 patent:
`The Applicant goes to great lengths to describe the differences
`between an ‘audio file’ and ‘streaming audio’ in his remarks.
`However,
`the examiner maintains that
`‘streaming audio’
`is
`transferred as an ‘audiofile’ and can be stored on the receiving
`device as such. The invention as claimed provides no teachings
`of any other definition or significant difference between
`‘streaming audio’ andthe transfer of an ‘audiofile’.
`Ex. 1218, 394; Reply 4.
`Weagree with Patent Ownerthat the term “streaming”is often used in
`the context of the immediate processing and playback of audio information.
`-01181 Dec. on Inst. 7. The ordinary meaningof the term, however, does
`not require the immediate playback of streaming audio information, and the
`portions of the 641 patent identified by Patent Ownerdo not demonstrate
`with reasonableclarity, deliberateness, and precision that a narrower claim
`definition should apply. For example,although the discussionin the °641
`patent of using high-speed communicationsfor streaming an Internet radio
`station supports Patent Owner’s argumentthat “streaming audio” may be
`played immediatelyasit arrives, Ex. 1001, 7:3-7, the °641 patent also
`discloses “downloading”“streaming audio”and “streamingInternet
`Broadcasts.” Jd. at 3:67-4:1, 8:31-35, 17:1-2, 18:1-5. Thus, the
`disclosures of the 641 patentare consistent with the dictionary definition of
`the term “streaming,” which contemplates the transfer of “streaming audio”
`as a constantstream of data for either immediate or delayed playback.
`
`10
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`Accordingly, we construe the term “streaming audio signal”as “an
`audio signalthat is transferred in a continuous stream.”
`2. communication rate that providesfor
`a CD quality listening experience
`The term “communication rate that provides for a CD quality listening
`experience”is recited in dependent claim 11. This term is notexplicitly
`defined in the Specification of the 641 patent and we did not provide a
`preliminary construction for the term in the Decisionto Institute. PO Resp.
`
`10.
`
`Patent Ownercontendsthis term “has a specific and well-understood
`meaning”andshouldbe construed asa “data transfer rate sufficient to obtain
`1.4 megabits per second.” Jd. Patent Ownerreasons that the Compact Disc
`Digital Audio Standard, commonly referred to as the “Red Book,”
`establishes “that CD audio should consist of a 44.1 kHz sampling frequency
`at a 16-bit signal quantization across 2 channels” and oneofordinary skill in
`the art would look to this standard in interpreting the meaning of the term
`“communicationrate that provides for a CD quality listening experience.”
`Id. at 10-11 (citing Ex. 2006, 4-9; Ex. 2005 § 133); see also id. at 11 (citing
`Ex. 2007, 40:2-17) (contending that Dr. Quackenbush admitted duringhis
`deposition that one ofordinary skill in the art would understandthat the Red
`Bookspecificationsare “related to CD audio”).
`Petitioner contends the broadest reasonable construction of the term
`
`“communicationrate that provides for a CD quality listening experience”is
`a “speed at which data is transmitted that provides for a listening experience
`that is similar to that of a CD.” Reply 6; -01182 Pet. 11-12. In support of
`this argument, Petitioner provides a dictionary definition of “CD-quality”
`that defines the term as “of equal or comparable quality to sound stored on a
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`compact disc.” Reply 9 (citing Ex. 1033 (Oxford English Dictionary)).
`Petitioner also arguesthat a transfer rate of 1.4 megabits per second1s not
`required to provide for a “CD quality listening experience”as audio
`compression standards such as MPEG-1 and Precision Adaptive Subband _
`Coding (PASC)could be used to compress data samples from a CD by “up
`to an order of magnitude” andstill provide “CD-Quality audio.” Jd. at 7-9
`(citing Ex. 1034, 2).
`|
`Wefind that Petitioner demonstrates persuasively that known
`compression standards would allowfor “CD-quality audio” at transferrates
`less than 1.4 megabits per second. Reply 7-9, 27 (citing Ex. 1032, 328; Ex.
`1034, 2; Ex. 1025 § 87; Ex. 1049A; Ex. 1050, 1:8-10, 3:4-11). Moreover,
`the 641 patent does not support Patent Owner’s proposed construction. For
`example, in the discussion of the various communications standards
`operable in the disclosed embodiments ofthe *641 patent to provide CD
`quality sound, it is noted that a Bluetooth link may be used. Ex. 1001, 2:18-
`21, 2:39-43. Yet, both parties agree that Bluetooth cannot transfer data at a
`rate of 1.4 megabits per second. Tr. 12:20-23, 80:10-14. Thus, weare not
`persuadedthat one ofordinary skill in the art would understand a “CD
`quality listening experience”to require a data transfer rate of 1.4 megabits
`per second.
`Based onthe dictionary definition provided by Petitioner and the
`disclosures of the 641 patent, we construe the term “communicationrate
`that provides for a CD quality listening experience” to mean “a data transfer
`rate that provides audio of equal or comparable quality to soundstored on a
`compact disc.” See Ex. 1033, 3.
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`3. remaining claim terms
`
`Patent Owneralso proposesconstructions for the terms wireless
`telephone device, a signal representing at least a portion ofa song, while,
`and portable electronic device. PO Resp. 5-6, 8-10, 11-12. Upon review
`~ of Pctitioner’s and Patent Owner’s arguments, we determinethat
`construction ofthese additional claim terms is not required for purposes of
`
`this decision.
`
`.
`
`.
`
`B. Abecassis-Based Grounds—ObviousnessofClaims 1-3 and 5-14
`Petitioner asserts that claims 1—3, 5, 9, 10, and 14 of the °641 patent
`would have been obvious over Abecassis, Chennakeshu, and Herrod; claims
`6 and 7 would have been obvious over Abecassis, Chennakeshu, Herrod, and
`Galensky; claims 8, 11, and 13 would have been obvious over Abecassis and
`-Chennakeshu; and claim 12 would have been obvious overAbecassis,
`Chennakeshu, and Galensky. -01182 Dec. on Inst. 20-21; Pet. 12-38.7
`
`1, Abecassis
`‘ Abecassisis directed to “[s]ystemsfor, and methodsof,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 informationthat is
`responsive to the user’s information preferences.” Ex. 1103, 1:8-12. To
`implementthis method, Abecassis discloses a portable Multimedia Player
`that is “intended to function as a stand alone cellular phone,as a part of
`multiple-phone configuration, a radio, a remote control, as a digital audio
`player, and/or as a radio-on-demandplayer.” /d. at 9:26-31. In one
`embodiment, the Multimedia Player can be used in conjunction with the
`
`7 Citations to the Petition in Section II.B are to the Petition filed in IPR2014-
`01182.
`.
`
`13
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`speaker system of a vehicle and may transfer information by “means of a
`cable or by directinsertion into a built-in docking bay.” Jd. at 14:12-17.
`Abecassisdiscloses that a “virtual audio item may beretrieved at the
`
`time ofits playing,i.e, retrieved and played in a real-time manner;or
`retrieved in advanceofthetimeit is to be played, temporarily stored in any
`of a Multimedia Player’ [s] storage means, and erased from memory after
`beingutilized for a single playing or for a plurality of scheduled or projected
`playings.” Jd. at 14:60-65.
`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 may “directly receive from the Multimedia
`Player a transmission and renderit audible for the user throughits built-in
`speaker or by means of headphones connected to the remote control... .”
`Id. at 10:41-45, 12:28-39.
`
`2. Chennakeshu
`Chennakeshuis directed to a mobile radio telephone for 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 configuredto allow for “hands-free operation onceacall is
`
`established.” /d. at 1:22—24.
`
`3. Herrod
`Herrod is directed to a portable data device, or terminal, for use with a
`terminal docking device, or cradle. Ex. 1106, 1:5-7. The portable data
`
`14
`
`
`
`IPR2014-01181
`Patent 8,532,641 B2
`
`device of Herrod “compris[es] cellular telephone meansfor conventional
`telephone communication.” Jd. at 3:32-36, 16:8-11. The portable data
`device of Herrod also contains both a rechargeable battery and a physical
`interface that allows for connectionof the terminal with a terminal docking
`device. Jd. at 6:56-59, 18:66-19:14. This terminal docking device is
`connectedvia a cable to both a power source and a network.
`/d. at 6:30-38,
`6:56-64, 18:66-19:14; Ex. 1123 9 45-52.
`
`4. Galensky
`Galensky is 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 bufferis created, to
`decrease the data transmission rate to the minimum rate necessary for
`adequate transmissionof “streamed data.” Jd. at 6:1-18.
`
`5. Combination ofAbecassis, 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 of the 641 patent. Pet. 12-38. 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 ofa
`remote control) such that the recipient device can use the information to
`generate a selectable menu item associated with available
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