throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Entered: January 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICSCo., LTD and
`SAMSUNG ELECTRONICS AMERICA,INC.,!
`
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`Case IPR2014-011817
`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-named Petitioner in this case, was merged into Samsung
`Electronics America, Inc. See IPR2014-01181, Paper 9.
`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
`
`Samsung Electronics Co., Ltd and Samsung Electronics America, Inc.
`
`(collectively “Petitioner”) filed Petitions in IPR2014-01181 (Paper4,
`
`“01181 Pet.’), IPR2014-01182 (Paper 4,“-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 IPR2014-01182 and IPR2014-
`
`01184 with IPR2014-01181. IPR2014-01181, Paper 15, 2. Patent Owner
`
`filed a consolidated Patent Owner Response (Paper 20, “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 All subsequentcitations to papers or exhibits refer to those in IPR2014-
`01181, unless otherwise noted.
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`Wehavejurisdiction under 35 U.S.C. § 6(c), and this Final Written
`
`Decision is 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 patentis directed to a system and methodfor
`
`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 radio stations, 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 be by various means, including cellular communications, AM or
`
`FMsignals, or “high speed, low-power microwavewirelesslink[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 channel in “an asynchronous manner.” Jd. 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 mayutilize a physical
`
`interface having two conductive paths, the first path for communicating
`
`information and the second path for providing powerto the device. Id. 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
`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 deviceto a recipient device
`such that
`the recipient device can use the collection of
`information to generate a graphical menu comprising a selectable
`menuitem 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
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`in connection with recognizing receipt ofthe 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
`configuredto 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 responseto
`a selection of a selectable menu item presented on a recipient
`device display, wherein the wireless communication module is
`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.
`
`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 sowing references:
`(keftrence|Paten@/Publiication ate
`US 6,990,334 BI
`lJan. 24, 2006 "003"
`
`4 Exhibits4Exhibitswith10XX,110XX, 11XX, and 12XX prefixes werefiled in IPR2014-
`
`01181, -01182, and -01184, respectively. Exhibits with 20XX, 21 XX, and
`22XX prefixes werefiled in IPR2014-01181, -01182, and -01184,
`respectively.
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2 -
`
`Reference
`
`patentjublication
`US 6,973,067 B1
`
`Dec. 6, 2005
`
`| 1006
`
`
`
`Rydbeck|US 7,123,936 BI Oct. 17, 2006|1008, 1112
`
`
`
`Galensky Jan. 18, 2005|1009, 1107, 1209US 6,845,398 Bl
`
`
`
`
`
`US 6,192,340 B1 Feb. 20, 2001|1103
`
`
`
`Chennakeshu| US 6,542,758 B1 Apr. 1, 2003|1105
`
`
`
`Owner’s Manual, Nokia 9000i Communicator, 1995-1997 Nokia Mobile
`Phones Ltd. (Ex. 1005B).
`FE. The Asserted Grounds of Unpatentability
`
`The Board instituted inter partes review on the following asserted
`groundsof unpatentability (-01181 Dec. on Inst. 19; -01182 Dec. on Inst.
`
`20-21; -01184 Dec. on Inst. 15):
`
`IPR2014-01181
`
`
`
`
`
`
`
`§ 103
`
`;
`{GroundepRetcrences
`Ito, Haartsen, Nokia, and
`§ 103
`Rydbeck
`Ito, Haartsen, Nokia,
`Rydbeck, and Galens
`
`edi
`
`
`. Challe
`
`8, 11,
`
`
`
`f l
`
`
`
`on af ) ;
`
`
`3, and 14
`
`
`12
`
`
`
`IPR2014-01182
`
`Challenged Claina(s)
`
`
`
`
`
`
`and Herrod
`
`
`Herrod, and Galens
`
`
`
`
`
`
`June. 11,
`2002
`Aug. 30,
`2005
`Ahn US 2004/0214525 Al|Oct. 28, 2004|1205
`
`Herrod
`
`US 6,405,049 B2
`
`Ohmura
`
`US 6,937,732 B2
`
`1106
`
`1203
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`Re
`
`
`
`
`
`
`§ 103
`
`Abecassis, Chennakeshu,
`and Galensk
`
`1
`
`
`
`
`Ohmura, Ahn, and Nokia_|13 and 14
`
`
`
`IPR2014-01184
`
`Ohmura and Ahn
`
`8 and 11
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review proceeding, we give each claim term its
`
`broadest reasonable interpretation, as understood by one ofordinary skill in
`
`the art in light of the specification of the involved patent. 37 C.F.R.
`
`§ 42.100(b). Absent any special definitionsin the specification, under the
`
`_ broadest reasonable construction standard we give claim termstheir ordinary
`
`and customary meaning, as would be understood by one ofordinary skill in
`the art at the time ofthe invention. See In re Translogic T.ech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms
`
`mustbe 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 Decisionto Institute, we preliminarily construed the term
`“streaming audio signal” to mean “an audio signal that is transferred in a
`
`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
`stream especially for immediate processing or playback.”°
`
`Patent Ownercontends ourpreliminary construction is too broad.
`According to Patent Owner,a personofordinary skill in the art® would
`
`understand the term “streaming”in the ’641 patent to mean a “signal/audio
`
`signalthat is played as it arrives at a recipient device, not requiring that an
`
`entire file be transferred to and stored at a recipient device priorto initiating
`
`playback.” PO Resp. 7; Ex. 2005 4 114-115. Patent Owner contendsthis
`
`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 radio_station.an Internet 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.
`
`> 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
`Ownerdoesnotassert 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.
`Id. 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 andplayfiles” that are stored in
`
`memory. PO Resp.7.
`Patent Owneralso arguesthat the patentee’s statements during
`
`prosecution reinforce the difference between “streaming” and
`
`“download andplayfiles”:
`
`[S]treaming audio includes playing audio or video immediately
`as it is downloaded from the Internet, rather than storing it in a
`file on the receiving computerfirst.” A second reference defines
`streaming audio as “. .
`. streaming soundis played as it 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 contendsthe intrinsic
`
`evidence as a whole supports a construction that requires the immediate
`
`playback of “streaming audio.”
`
`Petitioner asserts the Board’s preliminary construction is consistent
`
`with the meaning oneofordinary skill in the art would give the term
`
`“streaming audio signal.” Reply 3. According to Petitioner, the ’641 patent
`
`does not disclose or require that “streaming audio”be playedasit arrives
`
`and, contrary to Patent Owner’s proposed construction, the 641 patent
`39 66
`
`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 downloadandplayfiles 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 ‘audio file’ 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 ‘audio file’.
`
`Ex. 1218, 394; Reply 4.
`
`Weagree with Patent Ownerthat the term “streaming”is often used in
`the context ofthe immediate processing and playback of audio information.
`-01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does
`
`not require the immediate playback of streaming audio information, and the
`
`portions of the ’641 patent identified by Patent Owner do not demonstrate
`
`with reasonable clarity, deliberateness, and precision that a narrower claim
`
`definition should apply. For example, although the discussion in the 7641
`
`patent of using high-speed communications for streaming an Internet radio
`
`station supports Patent Owner’s argumentthat “streaming audio” may be
`
`played immediately as it arrives, Ex. 1001, 7:3-7, the ’641 patent also
`
`discloses “downloading” “streaming audio”and “streaming Internet
`
`Broadcasts.” /d. at 3:67—4:1, 8:31-35, 17:1-2, 18:1-5. Thus, the
`
`disclosures of the ’641 patent are consistent with the dictionary definition of
`
`the term “streaming,” which contemplates the transfer of “streaming audio”
`
`as a constant stream 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 signal that is transferred in a continuous stream.”
`
`2. communication rate that provides for
`a CD quality listening experience
`The term “communicationrate that provides for a CD quality listening
`
`experience”is recited in dependent claim 11. This term is not explicitly
`
`defined in the Specification of the ’641 patent and we did not provide a
`
`preliminary construction for the term in the Decision to Institute. PO Resp.
`
`10.
`
`Patent Ownercontendsthis term “has a specific and well-understood
`
`meaning” and should be construedas a “data transfer rate sufficient to obtain
`
`1.4 megabits per second.” Jd. Patent Ownerreasons that the Compact Disc
`
`Digital Audio Standard, commonlyreferred 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 one ofordinary skill in
`the art would look to this standard in interpreting the meaning of the term
`“communication rate 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 during his
`
`deposition that one of ordinary skill in the art would understand that the Red
`
`Bookspecifications are “related to CD audio”).
`
`Petitioner contends the broadest reasonable construction of the term
`
`“communication rate 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
`
`1]
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`compact disc.” Reply 9 (citing Ex. 1033 (Oxford English Dictionary)).
`
`Petitioner also argues that a transfer rate of 1.4 megabits per secondis not
`
`required to provide for a “CD quality listening experience” as audio
`
`compression standards such as MPEG-] 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 allow for “CD-quality audio”at transfer rates
`less than 1.4 megabits per second. Reply7-9, 27 (citing Ex. 1032, 328; Ex.
`1034, 2; Ex. 1025 J 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 of the ’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 cannottransfer data at a
`
`rate of 1.4 megabits per second. Tr. 12:20—23, 80:10-14. Thus, we are not
`persuaded that one of ordinary 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 sound stored on a
`
`compact disc.” See Ex. 1033, 3.
`
`12
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`3. remaining claim terms
`
`Patent Owneralso proposes constructions 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 Petitioner’s and Patent Owner’s arguments, we determine that
`
`construction of these additional claim termsis not required for purposes of
`
`this decision.
`
`B. Abecassis-Based Grounds—Obviousness of Claims 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 over Abecassis,
`
`Chennakeshu, and Galensky. -01182 Dec. on Inst. 20-21; Pet. 12-38.’
`
`1. Abecassis
`
`.
`
`Abecassis is directed to “[s]ystems for, and methodsof, integrating a
`
`playing of music that is responsive to a user’s music preferences applied to
`
`the user’s audio library witha playing of real-time information thatis
`responsiveto the user’s information preferences.” Ex. 1103, 1:8-12. To
`implement this 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.” Jd. 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 areto the Petition filed in IPR2014-
`01182.
`
`13
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`speaker system of a vehicle and maytransfer information by “meansof a
`
`cable or by direct insertion into a built-in docking bay.” Jd. at 14:12-17.
`
`Abecassis discloses that a “virtual audio item mayberetrieved at the
`
`time ofits playing,i.e, retrieved and played in a real-time manner;or
`retrieved in advance ofthe timeit is to be played, temporarily stored in any
`
`of a Multimedia Player’[s] storage means, and erased from memory after
`
`being utilized 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 headphonesconnected to the remote control... .”
`
`Id. at 10:41-45, 12:28—39.
`
`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 asynchronousdata
`
`channel. Jd. at 4:60-5:15. In at least one embodiment, the system of
`
`Chennakeshuis configured to allow for “hands-free operation oncea call is
`
`established.” Jd. at 1:22—24.
`
`3. Herrod
`
`Herrodis 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
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`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 also contains both a rechargeable battery and a physical
`
`interface that allows for connection of the terminal with a terminal docking
`
`device. Id. at 6:56—-59, 18:66-19:14. This terminal docking deviceis
`
`connected via a cable to both a powersource and a network. Jd. at 6:30—38,
`
`6:56-64, 18:66—19:14; Ex. 1123 Jf 45-52.
`
`4. Galensky
`Galenskyis directed to “[a] wireless device, system and method for
`
`receiving and playing multimediafiles 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 S—10 second buffer and, oncethe desired buffer is created, to
`
`decrease the data transmission rate to the minimum rate necessary for
`
`adequate transmission of“streamed data.” Id. at 6:1—-18.
`
`5. Combination ofAbecassis, Chennakeshu, and Herrod
`Petitioner asserts that the combination of Abecassis, Chennakeshu,
`
`and Herrod discloses, 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 deviceto a recipient device(in the form of a
`
`- remote control) such that the recipient device can use the information to
`
`generate a selectable menu item associated with available media content;
`
`15
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`and (3) streamingat least a portion of a song to the recipient device. Jd. at
`
`18-23 (citing Ex. 1103, 14:60—65 (“A virtual audio item may.beretrieved at
`
`the timeofits playing, i.e., retrieved and played in a real-time
`
`manner... .”)). Petitioner further asserts that Chennakeshu discloses hands-
`
`free operation of a wireless telephone and the use of a Bluetooth
`
`communication module to transmit information over an asynchronous
`
`channel. /d. at 21-22, 26-28. Petitioner also asserts that Herrod discloses a
`
`display that makes up morethan half of the front surface of the device, a
`
`rechargeable powersupply, and a physical interface operable to
`
`communicate data overa first path and receive power over a second path.
`
`Id. at 18-19. Petitioner further asserts that USB interfaces were “well-
`knownprior to March 28, 2000 and provided a non-circular interface to
`
`communicate data via a first conductive path and receive a recharging power
`
`via a second conductive path.” Jd. at 24 (citing Ex. 1123 | 46; Ex. 1113A;
`
`Ex. 1118, 13-14, 19-20).
`
`With respect to the reason to combinethe references, Petitioner
`
`asserts it would have been obvious to incorporate Chennakeshu’s Bluetooth
`
`communication module in the Abecassis device because “Bluetooth was
`
`being widely adopted by many companiesin the industry” and provided an
`
`“economically feasible” method for connecting various devices. Id. at 15
`
`(citing Ex. 1108A, 110; Ex. 1123 ff] 74, 84). Petitioner furtherasserts that
`
`one of ordinary skill in the art would have understood that an asynchronous
`
`channel provides “a simple, flexible, and cost-effective way to transmit
`
`data,” Pet. 15 (citing Ex. 1123 J 73), and implementing the larger display,
`
`rechargeable powersupply, and physical interface of Herrod in the wireless
`
`telephone of Abecassis would allow for easier navigation of displayed menu
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`items, “eliminate the need to replace batteries of the phone,” and permit
`
`recharging and data communication using a single physical interface. Jd. at
`
`15-16 (citing 1123 F§ 44, 52, 90, 99, 118, 119, 138) (noting that larger
`
`screen sizes, rechargeable batteries, and physical interfaces with access to
`
`both power and data communications were well knownin the art).
`
`a. Claim 1
`
`Rechargeable Battery
`
`Patent Ownerasserts that Abecassis does not disclose explicitly or
`
`inherently a rechargeable battery, as recited in claim 1. PO Resp. 54-55.
`
`Patent Ownerfurther asserts that one of ordinary skill in the art would not
`
`have been motivated to incorporate the rechargeable battery of Herrod in the
`
`Abecassis device because the two referencesrelate to different fields of art
`
`and there is no reported difficulty or problem that would suggest modifying
`
`the powersupply of Abecassis. Jd. at S6—57.
`
`Petitioner responds that rechargeable batteries were “common and
`
`well-known”in the art, as confirmed by Herrod,and a person of ordinary
`
`skill in the art would have soughtto use the rechargeable battery of Herrod
`
`in the Abecassis device “to eliminate the need to periodically replace
`
`ordinary (i.e., non-rechargeable) batteries.” Reply 10-11 (citing Ex. 1106,
`
`14:18-24). Petitioner further responds that Herrod and Abecassis are in the
`
`samefield of art, as both references disclose the use of cellular telephones
`
`that support multimedia applications. /d. (citing Ex. 1123 9 44; Ex. 1025
`
`{ 90); Pet. 16.
`
`Weagree with Petitioner that the addition of well-known rechargeable
`
`battery technology (as disclosed in Herrod) in the device of Abecassis would
`
`have been obvious, at a minimum,to eliminate the need to periodically
`
`17
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
`
`according to known methodsis likely to be obvious when it does no more
`
`than yield predictable results.”). Moreover, we are not persuaded by Patent
`
`Owner’s argument that Abecassis and Herrodare in different fields of
`
`endeavor, as both references relate to the communication of data using a
`
`cellular phone.’
`
`Physical Interface
`
`Patent Ownerasserts that Abecassis does not disclose a physical
`
`interface having first and second conductive paths for the transfer of data
`
`and power, respectively, as recited in claim 1. PO Resp. 58. Patent Owner
`
`further asserts that one of ordinary skill in the art would not have sought to
`
`implementthe physical interface of Herrod in the Abecassis device because
`
`Abecassis does not disclose a rechargeable battery. Jd. at 59-60. And, to
`
`the extent that Petitioner relies upon a USBinterface for this claim
`
`limitation, Patent Owner contendsthere is no evidence that “USB could
`
`have been successfully used to provide the power needed to recharge a
`
`battery.” Jd. at 59.
`
`Herrod discloses a cradle with an interface operable to provide both
`
`recharging power and data communications. Ex. 1103, 6:56—64, 14:12—-17,
`
`18:66-19:4. Dr. Quackenbushpersuasively testifies that one of ordinary
`
`skill in the art would have sought to use this multipurpose interface (as well
`
`8 Given that both Herrod and Abecassis relate to the communication of
`information over a network usinga cellular telephone, we are also persuaded
`that Herrod would have cometo the attention of one of ordinary skill in the
`art considering how to improvethe portability and usability of the cellular
`phone of Abecassis.
`
`18
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`as a rechargeablebattery) in the device of Abecassis to “advantageously
`
`provide[] a convenient way to both recharge the device and sendor receive
`
`files or other data to or from the device.” Ex. 1123 952. In addition,
`
`Petitioner presents persuasive evidence that the USB interface was well
`
`knownin theart prior to 2000 and could be used to communicate data via a
`
`first conductive path and provide recharging powerfor a cellular phone via a
`
`second conductive path.’ Pet. 23-24 (citing Ex. 1123 | 46; Ex. 1113A; Ex.
`
`1118, 13-14, 19-20); Reply 11-12 (citing Ex. 1025 Ff 95-98).
`
`Although Patent Owner and Dr. Wolfassert that Petitioner does not
`
`explain specifically how the physical interface of Herrod would work in the
`
`Abecassis device, they do not provide any persuasive evidence tending to
`refute Dr. Quackenbush’s testimony that Herrod’s interface could be
`
`implemented in the Abecassis device and would workforits intended
`
`purpose. See PO Resp.60; Ex. 2005 {§ 241-242; Ex. 1023 952. Thus, we
`
`are persuadedthat oneofordinary skill in the art would have foundit
`obvious to implementeither a USBinterface or the physical interface of
`Herrod in the Abecassis device and would have had a reasonable expectation -
`
`of success in adding these features to the device.
`
`Collection ofInstructions
`
`Claim 1 of the ’641 patent also requires:
`
`instructions operable when executed to
`a collection of
`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
`
`» We address below (discussion of claim 9) Patent Owner’s argumentthat a
`USBinterface could not recharge the battery of a cellular phone in the year
`2000. See PO Resp. 60-61.
`
`19
`
`

`

`IPR2014-01181
`Patent 8,532,641 B2
`
`menuitem associated with the available media content.
`
`Ex. 1101, 19:43—50.
`
`Patent Ownerasserts that there is no teaching in Abecassis of a
`
`“sraphical menu item associated with . .. media content” available from a
`
`wireless telephone device. PO Resp. 63. According to Patent Owner,
`
`although the graphical menu items of Abecassis allow for “subject category
`
`selection, program selection, music and information preference selection,
`
`and source selection,” these selectable menu items are merely preferences
`
`and do not necessarily represent available media content. Jd. at 63-64; Tr.
`
`76:16—-77:15; Ex. 2005 J 254. Patent Owneralso argues that graphical
`
`menusare not generated by the recipient device. PO Resp. 63-64(citing Ex.
`
`2005 Jf 253-254).
`Abecassis discloses, however, that “function keys” on the remote

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