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IPR2015-00820 - Post

1. according to the user s selection The streaming music data may be reproduced when the corresponding data are not completely recewed Id at 0036 0037 The music data providing server 10 wirelessly transmits the selected music file data to the user s mobile station 30 and the mobile station 30 receives the music file data from the music data providing server 10 and transmits them to the car kit 40 in step 150 Id at 0054 See also id at 0024 0029 0033 0050 0058 Figs 3A 3B Ex 1333 4172 79 1 I to recognize receipt of an incoming telephone call and to alter an outputting of the signal in connection with recognizing receipt of the incoming telephone call Hu in view of the knowledge of a POSITA or alternatively Hu in view of Ahn discloses this element Hu discloses P hone call operations can include d mute un mute audio system automatically depending on the cell phone status Ex 1303 at 0049 Ahn discloses When a third person calls the user s mobile station 30 while the user is listening to music selected through the car kit 40 the controller 420 temporarily or completely stops the present music reproducing operation Ex 1305 at 0060 See also id at 0061 0066 Ex 1333 1180 85 45 Inter Partes Review United States Patent No 8 532 641 To the extent that the preamble is considered a limitation of Claim 1 Hu discloses this elemen
2. 755 App at 20 0062 Radio dial 412 may also be displayed as a sepatate user interface and in some embodiments does not require a browsing environment to view radio dial 412 For example an electronic device such as a PDA having a display may graphically present radio dial 412 to a user One example may be using electronic device in association with an automobile audio system Electronic device may display radio dial 412 and may allow a user to navigate modify select adjust volume access day timer access phone lists etc or perform other functions while the electronic device is used in association with an automobile sound system Therefore radio dial 412 may be operable as an application for use with several different types of electronic devices 1 e computer systems portable computing devices cellular phones etc operable to display radio dial 412 and in s ome embodiments may be wirelessly communicated to an electronic device The Board properly found that the identified disclosure does not support Patent Owner s argument because the electronic device in the identified passage is not the automobile audio system or recipient device which displays the radio dial to the user Ex 1323 at 10 The same priority analysis that the Board applied with respect to claim 8 likewise applies to claims 9 10 and 12 which depend upon claim 8 and also applies with respect to claim 1 and claims 2 3 and 5 7
3. Claims 1 3 5 9 Ground 2 Obvious over Hu in view of Ahn amp Nokia Claims 1 3 5 9 10 Ground 3 Obvious over Hu in view of Ahn Nokia amp the knowledge of a POSITA Claims 1 3 5 9 10 Ground 4 Obvious over Hu in view of Ahn Galensky amp the knowledge of a POSITA Claims 7 12 Ground 5 Obvious over Hu in view of Ahn Galensky amp Nokia Claims 6 7 12 Ground 6 Obvious over Hu in view of Ahn Galensky Nokia amp the knowledge of a POSITA Claims 6 7 12 Ground 7 Obvious over Hu in view of Ahn amp Galensky Claim 12 Section VI C provides a claim chart specitying how the cited art renders obvious each of the Challenged Claims as confirmed by the knowledge and understanding of a person of ordinary skill in the art POSITA as of January 16 2008 as evidenced in the Declaration of Dr Schuyler Quackenbush Ex 1333 IV SUMMARY OF THE 641 PATENT A Overview of the 641 Patent The 641 specification generally describes a System and Method for Managing Media as applied to various electronic devices such as a PC portable device or vehicle audio system The Challenged Claims are directed to a system for delivering media content to a wireless telephone over a wireless network communicating Inter Partes Review United States Patent No 8 532 641 information about media content from the telephone to a recipient device to generate a graphical menu comprising selectable menu items on the display of t
4. amp Galensky It would have been obvious to a POSITA to combine Hu with Ahn Ex 1333 1978 84 106 see generally KSR at 415 17 Dystar Textilfarben GMBH v C H Patrick Co 464 F 3d 1356 1368 Fed Cir 2006 Both Hu and Ahn are in the same field of art and disclose cell phones that stream multimedia data to a recipient device g a vehicle via a local wireless network ag Bluetooth E g Ex 1303 at 0030 0041 0046 0060 Ex 1305 at 0012 0054 Fig 2 Ex 1333 178 Moreover Ahn specifically teaches transmitting data over an asynchronous call path of Bluetooth Ex 1305 at 0034 Ex 1333 478 Thus a POSITA would have understood that Ahn teaches a functional implementation for transmitting data over Bluetooth Ex 1333 78 In view of the foregoing a POSITA would have been motivated to look to Ahn s teachings to provide Hu s phone with the beneficial capability of streaming music data to a recipient device over an asynchronous channel Id As recognized by the 641 patent itself it was also well known in the art and conventional to transmit audio content across a channel in an asynchronous manner E g Ex 1301 at 6 34 39 Ex 1323 at 3 Ex 1333 478 Thus it would have been clear to a POSITA that such a combination would work and provide the expected functionality Ex 1333 978 As noted both Hu and Ahn are in the same field of art and both Hu and Ahn disclose systems where audio playback in a vehicle is
5. browsing and searching inbox emails Ex 1303 at 0049 see also zd at 0046 Ex 1333 1188 91 3 B a voicemail Hu or alternatively Hu in view of the knowledge of a client operable to POSITA discloses this element primary operations of such communicate with a system ate to perform incoming call receiving e g connect a voice mail server direct to voice mail Ex 1303 at 0047 Ex 1333 4492 94 3 C and a Hu alone or alternatively Nokia discloses this element browser operable Hu discloses Internet connection operations can include 50 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu to communicate e surf the Internet Ex 1303 at 0049 Nokia discloses The with an Internet downloaded WWW page is loaded zz the WWW browser Ex setvet 1308B at 7 13 see also id at 7 11 7 15 11 2 Ex 1333 95 98 With respect to Element 3 A a POSITA would have known that a system that allows a user to view incoming email and compose and send emails necessarily and thus inherently includes an email client operable to communicate with an email server Ex 1333 90 To the extent it is argued that further disclosure is required an email client operable to communicate with an email server was well known in the art see eg Ex 1308B at 7 5 through 7 10 and it would have been obvious to a PO
6. 1 4 and 9 as supporting disclosure Ex During reexamination of the 926 patent whose claims were all ultimately found invalid as affirmed by the Federal Circuit the Board also decided the issue of whether the 926 patent was entitled to the March 28 2000 priority date of the 812 application Ex 1321 In re Affinity 550 Fed Appx 884 Fed Cir Jan 9 2014 In that proceeding the Board originally affirmed the Examiner s finding that the 926 patent was not entitled to the March 28 2000 priority date but reversed its finding upon rehearing Petitioners respectfully submit that the Board s finding with respect to the 926 patent was incorrect The priority date issue of the 926 patent was not raised on appeal before the Federal Circuit 16 Inter Partes Review United States Patent No 8 532 641 1302 at 255 57 These citations along with the 812 and 755 applications generally however do not disclose that the claimed wireless telephone portable device is capable of sending a collection of information about media content available from the wireless telephone device to a recipient device such that 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 Exs 1318 1319 Nor is there any disclosure in the 812 or 755 applications that the claimed wireless portable device is able to communicate
7. 15 cv 29 WDTX Affinity v NHL Enterprises 7 15 cv 32 WDTX By separate motion filed herewith Petitioners request that this proceeding be joined with Case No IPR2014 01184 III PETITIONERS HAVE STANDING Grounds for Standing Under 42 104 a Petitioners certify that the 641 patent is eligible for IPR and that Petitioners are not barred or estopped from requesting IPR of the 641 patent Pursuant to 42 122 b although Petitioners were served with a complaint asserting infringement of the 641 patent more than one year ago the normal statutory one year bar under 315 b does not apply here because 1 the Board has already instituted IPR proceedings on this patent on timely first petitions filed by Petitioners IPR2014 01181 IPR2014 01182 and IPR2014 01184 and 2 Petitioners accompany this second petition with a motion for joinder under 315 c See IPR2014 00508 Pap No 31 at 2 The one year time bar however does not apply to a request for joinder The Petitioners and real parties in interest have not Inter Partes Review United States Patent No 8 532 641 initiated a civil action challenging validity of the 641 patent Claims Statutory Grounds Under 42 22 amp SS 42 104 b Petitioners request IPR of 641 claims 1 3 5 7 9 10 and 12 and assert that these claims are unpatentable based on one or more grounds under 103 Ground 1 Obvious over Hu in view of Ahn amp the knowledge of a POSITA
8. Obvious over Hu in view of Ahn amp Galensky Claim 12 In the Institution Decision in IPR2014 01184 the Board found that claims 8 and 11 are likely obvious over Ohmura in view of Ahn and claims 13 and 14 are likely obvious over Ohmura in view of Ahn and Nokia Ex 1323 With respect to claims 1 3 5 7 9 10 and 12 however the Board found that Petitioners had not met their burden because gliven that the Ohmura system already includes a separate cellular telephone Petitioner has not explained sufficiently why one of ordinary skill in the art would have found it beneficial or advantageous to modify Ohmura s portable audio apparatus to include Internet connectivity over a cellular connection Id at 14 While Petitioners respectfully disagree the Hu reference relied on in this Petition resolves any concerns that the Board had with respect to Ohmura As discussed more fully below Hu discloses a system for playing music stored in a portable device through a user interface and an audio system in a vehicle While the system disclosed in Hu shares many of the same features with the system disclosed in Ohmura such as the ability to wirelessly connect a portable device to a vehicle using Bluetooth stream music from the device to the vehicle and control the portable device through the vehicle interface the portable device in Hu is expressly disclosed to be a cellular telephone with Internet connectivity Accordingly Hu
9. RAZR V3i GSM Motorola Inc 2006 Ex 1331 Archived web page of http www gsmarena com motorola razr v3i 1352 php accessed on February 24 2015 through the December 20 2005 archive of http web atchive org specifically https web archive org web 20051220091300 http www gsm arena com mototola razr v3i 1352 php vil Inter Partes Review United States Patent No 8 532 641 Exhibit Description Ex 1332 U S Patent No 7 123 936 Rydbeck Ex 1333 Declaration of Dr Schuyler Quackenbush Ex 1334 Declaration of Hayan Yoon in Support of Petition for Inter Partes Review of U S Patent No 8 532 641 viii Inter Partes Review United States Patent No 8 532 641 I INTRODUCTION Pursuant to 35 U S C 311 319 and 37 C F R 42 Petitioners respectfully request inter partes review IPR of claims 1 3 5 7 9 10 and 12 Challenged Claims of U S Pat No 8 532 641 the 641 patent currently assigned to Affinity Labs of Texas LLC Affinity The 641 patent is one of 14 patents that cite back to U S Pat App No 09 537 812 the 812 application filed on March 28 2000 and issued as U S Pat No 7 187 947 These patents all share a common specification and generally relate to the delivery of Internet media content such as songs on line radio stations on line broadcasts or streaming audio to a portable device The portable device may be use
10. Review United States Patent No 8 532 641 utilizing Bluetooth communication standard used to provide communication between electronic devices in a proximal setting In one embodiment electronic device 300 may be integrated into an audio component such as a radio receiver Electronic device 300 integrated into an audio component may be configured to process digital audio files wirelessly communicated to an audio component In another embodiment electronic device 300 may be operable to communicate with an analog receiver at a predetermined frequency For example a specific frequency may be selected i e 93 7 MHz for communicating the wireless received selected information from electronic device 300 to a localized audio system Electronic device 300 communication of the wirelessly received information allows a conventional receiver to receive the selected audio information In one embodiment the conventional receiver may be configured to receive a digital sub carrier on carrier or other within a specified frequency Therefore electronic device 300 may be operable to locally transmit the signal at a specific frequency thereby allowing the conventional receiver to receive the information In another embodiment electronic device 300 may be operable to scan plural bandwidths to receive the selective information For example transceiver 301 may be operable to receive selective information across several frequencies and process the rece
11. United States Patent No 8 532 641 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE United States Patent No 8 532 641 Attorney Docket No Inventors Russell W White 110797 0004 658 Kevin R Imes Customer No 28120 Formerly Application No 13 673 391 Petitioners Issue Date Sept 10 2013 Samsung Electronics Co Ltd Filing Date Nov 9 2012 Samsung Electronics America Inc Priority Date March 28 2000 S Former Group Art Unit 2646 Former Examiner Erika Washington S S For SYSTEM AND METHOD FOR MANAGING MEDIA MAIL STOP PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office Post Office Box 1450 Alexandria Virginia 22313 1450 CERTIFICATE OF SERVICE It is certified that copies of the following documents have been served in their entirety on the patent owner as provided in 37 C F R 42 105 Petition for Inter Partes Review of United States Pat No 8 532 641 Exhibit Description Ex 1301 USS Patent No 8 532 641 the 641 patent Ex 1302 U S Patent No 8 532 641 File History Ex 1303 U S Patent Publication No 2006 0262103 Hu Ex 1304 U S Patent App No 11 438 016 File History filed by Hu e al Ex 1305 U S Patent Publication No 2004 0214525 Ahn Inter Partes Review United States Patent No 8 532 641 Exhibit Description Ex 1306 International Public
12. a display that makes up more than half of the front surface and wirelessly upgrading software in Hu s cell phone and it would have been clear to a 41 Inter Partes Review United States Patent No 8 532 641 POSITA that such a combination would work and provide the expected functionality Ex 1333 4843 48 58 59 98 102 138 See KSR at 415 17 It would also have been obvious to a POSITA to combine Hu with Galensky Ex 1333 19108 111 117 see generally KSR at 415 17 Dystar at 1368 Both Hu and Galensky are in the same field of art and concern streaming audio over a wireless network to a portable device E g Ex 1303 at 0049 0060 Cl 22 25 Ex 1309 at Abstract 24 59 67 Ex 1333 44108 111 117 Thus a POSITA would have been motivated to look to Galensky s teachings in connection with Hu s phone to advantageously conserve bandwidth as taught by Galensky Ex 1309 at 5 66 6 15 Ex 1333 44108 111 117 Hu further recognizes that it is desirable to wirelessly transmit high quality media and that storing media data in a buffer can allow playback at a decent frame rate Ex 1303 at 0060 Ex 1333 44108 111 117 Thus a POSITA would have been motivated to look to Galensky s teaching of a buffer to provide for streaming and or storing high quality real time multimedia information to and or in Hu s phone E g Ex 1309 at 1 6 11 Ex 1333 44108 111 117 It would have been routine for a POSITA to implement Gal
13. a priority date for any claim is a matter for which the Patent Owner bears the burden of proof Ex 1317 at 16 CBM2012 00003 Pap 15 see also In re NIP Inc 654 F 3d 1268 1276 Fed Cir 2011 for a patent s claims to be entitled to an earlier priority date the patentee must demonstrate that the claims meet the requirements of 35 U S C 120 While reserving for another forum whether the claims have any support in any of the listed priority applications Petitioners respectfully submit that for the Challenged Claims in this Petition Affinity is not entitled to claim priority to a date Petitioners reserve the right to raise in an appropriate forum invalidity based on 112 as well as the right to challenge in another forum that the 641 patent is not entitled to the claimed March 28 2000 priority date on other grounds 12 Inter Partes Review United States Patent No 8 532 641 earlier than at least January 16 2008 which is the filing date of the 595 patent the great grandparent to the 641 patent At minimum the 812 and 755 applications do not disclose independent claim 1 s recitation of communicat ing 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 a
14. altered depending on the status 36 Inter Partes Review United States Patent No 8 532 641 of the cell phone E g Ex 1303 at 0049 Ex 1305 at 0060 Ex 1333 984 Thus particularly in the context of overlapping teachings a POSITA would have been motivated to look to Ahn s teachings to provide Hu s phone with the beneficial capability of stopping playback of an audio signal when recognizing receipt of an incoming call as taught by Ahn Ex 1333 184 This feature is desirable to provide a safer way to receive a call while driving and listening to music so the driver can receive a call without the distraction of music playing in the background or the distraction of attempting to turn off the music manually when a call is received Id In addition it would have been clear to a POSITA that such a combination would work and provide the expected functionality Id Further both Hu and Ahn disclose a system that can receive streaming media from a server E g Ex 1303 at 0049 0060 Cl 22 25 Ex 1304 at 67 68 Ex 1305 at 0014 0054 Ex 1333 1106 Thus a POSITA would have been motivated to look to Ahn s express teachings of receiving music data from a server amp g through a mobile communication network in implementing Hu s phone Ahn also teaches that wireless data terminals such as mobile stations e 2 cell phones have spread and accordingly wireless data communication services and in particular wireless Internet
15. does not disclose that information about the audio content such as the name of the audio file or song is sent from the portable device to the automobile audio system to generate a graphical menu or that audio content is sent from the portable device to the automobile audio system in response to a selection of a selectable menu item on a display of the automobile audio system Ex 1301 at 9 37 10 20 Ex 1318 at 612 14 812 App at 21 32 23 24 Ex 1319 at 376 77 755 App at 15 16 0049 0052 Electronic device 300 may then be coupled to an automobile sound system using an interface and communicate the received information to the automobile sound system In this manner electronic device 300 may be used to provide the automobile sound system with audio files received via wireless communication In another embodiment electronic device 300 may be operable to communicate the received audio information to an audio system via a localized communications signaling network One such network may include Applicants consistently use the term audio information in the specification to refer to audio content itself and not information about the audio content See e g Ex 1301 at 3 64 4 1 a user may select information from an Internet website operable to allow selectivity of audio information such as songs on line radio stations on line broadcasts streaming audio or other selectable information 18 Inter Partes
16. in response to a selection of a menu item on the recipient device Ex 1301 at 4 21 24 Ex 1318 at 601 812 App at 10 2 6 Ex 1319 at 367 755 App at 6 0022 One skilled in the art can appreciate that other types of information such as video textual etc may be communicated utilizing the systems and methods disclosed herein without departing from the spirit and scope of the present invention Ex 1301 at 6 37 39 see also Ex 1318 at 606 812 App at 15 4 6 Ex 1319 at 371 755 App at 10 0031 As such information is communicated across a channel in an asynchronous manner to provide a continuous audio signal to the recipient Ex 1301 at Figs 1 2 3 Ex 1318 at 583 585 812 App at Figs 1 2 3 Ex 1319 at 402 404 7755 App at Figs 1 2 3 947 patent claim 1 as issued 947 patent at 19 39 42 45 50 A cellular communication device comprising a processor communicatively coupled to the memory module and configured to process the audio information and to output a digital representation of the audio information an interface configured to releasably engage with a docking mechanism of a separate sound system such that 1 a power 26 Inter Partes Review United States Patent No 8 532 641 supply of the separate sound system can recharge the local rechargeable battery via the interface 2 the digital representation can be communicated to the separate sound system
17. invalid under the requirements of 103 because they are obvious in light of the prior art as explained below in Section VI C Specifically this Petition relies on one primary reference Hu Hu has never been presented or considered by the PTO during prosecution or any other PTO proceedings of the 641 patent As detailed below 28 Inter Partes Review United States Patent No 8 532 641 pursuant to 42 104 b 4 5 all of the Challenged Claims are unpatentable A Claim Construction Under 42 104 b 3 Pursuant to 42 100 b and solely for purposes of this review Petitioners construe the claim language such that terms are given their broadest reasonable interpretation in light of the specification Terms not specifically listed and construed below should be given their plain and ordinary meaning under the broadest reasonable interpretation See 42 100 b Because the standard for claim construction at the PTO is different than that used in U S District Court litigation see In re Am Acad of Sci Tech Ctr 367 F 3d 1359 1364 1369 Fed Cir 2004 MPEP 2111 Petitioners expressly reserve the right to argue in a different forum a different claim construction for any term in the 641 patent as appropriate in that proceeding stream Claim 1 streaming audio signal Claim 8 In IPR2014 01181 01182 and 01184 Petitioners proposed that for review purposes stream should be construed to mean trans
18. knowledge of POSITA Hu in view of Ahn amp instructions comprises a set Nokia or alternatively Hu in view of Ahn of hands free telephone Nokia amp the knowledge of a POSITA discloses instructions operable when claim 2 Hu discloses this element The executed to allow the wireless operations described above can be extended to telephone device to operate zuteraction with a cellular telephone by wireless connection in a hands free mode when such as by Bluetooth A ny cellular telephone that is the wireless telephone device compatible with hands free operation can be dialed remotely is wirelessly coupled with a using a touchpad Ex 1303 at 0046 See also Ex 1303 wireless component of an at 0004 0005 0014 0027 0031 0038 automobile 0046 0048 0050 Fig 3 Ex 1333 499 100 With respect to Claim 5 a POSITA would understand that the hands free mode in Hu necessarily and thus inherently discloses the use of instructions that are operable when executed to allow the wireless telephone device to operate in the hands free mode Ex 1333 4100 641 Claims U S Pat Pub No US 2006 0262103 Hu 6 The As discussed above Hu in view of Ahn amp the knowledge of system of POSITA Hu in view of Ahn amp Nokia or alternatively Hu in claim 1 view of Ahn Nokia amp the knowledge of a POSITA discloses wherein claim 1 6 A the Nokia discloses this el
19. performing other tasks on the device e 2 Internet browsing and email as also taught by Hu Id 102 A POSITA would have been further motivated to use Nokia s large display on Hu s phone as Hu specifically recognizes the inconvenience of using a tiny display on a cell phone Ex 1303 at 0004 without the need to press tiny buttons or read the tiny display of the cellular telephone device see also Ex 1333 102 Moreover Nokia expressly teaches the benefit of using a large display See eg Ex 1308B at 1 2 The Jarge display makels using the applications easy Ex 1333 102 Finally both Hu and Nokia disclose cell phones that require software for a variety of applications e g surfing the Internet email etc E g Ex 1303 at 0049 Claim 25 Ex 1308B at 7 5 7 13 7 15 Ex 1333 9138 A POSITA would have known that software upgrades are beneficial to obtain the latest features of the software Ex 1333 1138 In addition since the software resides on a cell phone which generally has a wireless data connection it would be beneficial to upgrade the software at anytime using the wireless connection Id Thus a POSITA would have been motivated to look to Nokia s teachings to wirelessly upgrade the software of Hu s cell phone Id It would have been routine for a POSITA to implement Nokia s express teachings of a housing an enclosure a rechargeable power supply a physical interface an Internet browser
20. possible Ex 1303 at 0028 In the case of a ce phone it is envisioned that a docking station can be used to transfer the video data to a video media player of the vehicle at a fast rate Id at 0060 see also zd at 0027 0035 0046 0049 CL 44 Ex 1304 at 73 Nokia discloses 3 System connector for car installation and for the adapter Figure 2 6 4 Adapter for connecting the charger and the RS 232 cable to the communicator The connector on the left side 5 of the adapter is for the RS 232 cable plug and the one on 43 Inter Partes Review United States Patent No 8 532 641 memoty system located within the enclosure and 641 Claims U S Pat Pub No US 2006 0262103 Hu data via the the right 6 is for the charger plug Figure 2 6 Ex 1308B at 2 4 To first establish a serial cable connection 1 Connect the adapter to the conductive communicator 2 Connect the 9 pin adapter end of the RS 232 cable to path and to the COM port of the PC and the other end to the adapter into the connector on receive a the left side of the adapter Id at 10 6 Id at Figs 2 6 2 8 recharging a SR power for the rechargeable power supply g via the second EE conductive Fg t Mags coe Figure 2 8 Charaerteod See also id at 2 4 2 6 10 6 10 7 path and Ex 1333 449 60 1 F 7 a Hu discloses this element cellular telephone 26 may include an inte
21. provides the teaching in the 31 Inter Partes Review United States Patent No 8 532 641 art that the Board found to be lacking from Ohmura because the portable device in Hu is already a cellular telephone with the capabilities claimed in the 641 patent Lest Patent Owner argue that the Board should deny review under 325 d without regard to this Petition s merits Petitioners note that this Petition does not raise substantially the same arguments or prior art as the original petition This Petition relies in significant part on a new reference Hu that was not previously known to Petitioners or presented in the prior petition and that contains explicit disclosure of the teachings that the Board found absent from the previously cited art See e g CBM2013 00009 Pap 10 at 20 21 rejecting argument under 325 d that cited art was substantially the same as art previously before PTO where recognition of principle in newly cited reference was not expressed so clearly in earlier considered references Moreover although this Petition relies on other references that were previously considered t he permissive language of 325 d does not prohibit instituting IPR based on prior art previously presented to the Office IPR2014 01002 Pap 11 at 14 see also IPR2014 01235 Pap 12 at 7 The statutory language gives the Director the authority not to institute review on the basis that the same or substantialy
22. setvices using them have increased and online music data distribution services for distributing music files through the Internet have become available Ex 1305 at 0005 0006 Ex 1333 106 Receiving music data from a server over a wireless network eg a mobile communication network is beneficial because it conveniently 37 Inter Partes Review United States Patent No 8 532 641 allows a user to wirelessly access media available over that network on demand to provide access to media that may not be currently available as stored data on the user s phone Ex 1333 1106 In view of the foregoing a POSITA would have been motivated to provide Hu s cell phone with the advantageous capability of receiving music data over a wireless network eg a mobile communication network as taught by Ahn Id It would have been clear to a POSITA that such a combination would work and provide the expected functionality Id It would also have been obvious to a POSITA to combine Hu with Nokia Ex 1333 1943 48 58 59 98 102 138 see generally KSR at 415 17 Dystar at 1368 Both Hu and Nokia are in the same field of art and disclose cell phones that can receive and transmit audio files include software applications g web surfing and e mail and communicate data via a physical interface E g Ex 1303 at 0035 0041 0049 0060 Ex 1308B at 2 4 7 5 7 10 7 13 7 15 10 6 Figs 2 6 2 8 Ex 1333 943 Thus a POSITA would have bee
23. specification itself makes clear that the applicants did not purport to invent zer alia the following claim Inter Partes Review United States Patent No 8 532 641 elements cellular telephone Ex 1301 at 5 36 41 display 11 1 3 12 35 40 housing and enclosure Fig 9 wireless communication module 2 33 43 5 42 6 6 9 57 67 rechargeable power Supply 13 26 32 non circular physical interface for communicating data and recharging power 18 33 55 Fig 9 memory 8 48 52 8 66 9 3 streaming media 8 31 37 asynchronous channel 6 34 39 Bluetooth 2 41 43 9 47 49 email client 10 40 45 voicemail client 77 Internet browser 9 17 22 10 66 11 14 hands free mode 10 45 46 buffer memory 8 48 52 audio player 9 13 19 11 35 39 16 29 34 In the same way that these elements have been combined in the 641 patent claims it would have been obvious and straightforward to a POSITA to have combined them in the prior art B 641 Patent Prosecution History The application leading to the 641 patent was filed on November 9 2012 as a continuation of U S Pat No 8 521 140 filed 5 27 11 which is a continuation of U S Pat No 7 953 390 the 390 patent filed 6 30 09 which is a continuation of U S Pat No 7 778 595 the 595 patent filed 1 16 08 which is a continuation of the 833 patent filed 9 23 04 which is a continuation of the 947 patent filed 3 28 00 On March 13 2013 the Examiner i
24. terr ave i se be de EE E 59 Inter Partes Review United States Patent No 8 532 641 TABLE OF AUTHORITIES Page s CASES Dystar Textilfarben GMBH v C H Patrick Co 464 F 3d 1356 Ped Cir 2000 iiie tite RE Pepe Debate sg Laits 36 38 42 In re Affinity Labs of Texas LLC 550 Fed Appx 984 red CIE aa 2014 aer is 16 In re Am Acad of Sa Tech Ctr 307 BP dl DER Fed DOOM ME ee n N Ge Ge 29 In re NTP Inc 654 F 9d 1265 1276 Fed Cir 20T TY asias tia 12 Kaiser Aluminum v Constellium Rolled Prods Ravenswood LLC Case IPR2014 01002 Paper 11 Dec 29 201 dai 32 KSR Intl Co v Teleflex Inc S50 US O08 200 A A passim Liberty Mutual Insurance Co v Progressive Casualty Insurance Co Case CBM2012 00003 Paper 15 Feb 12 2013 siete d erbe Waid waitin 12 Liberty Mutual Insurance Co v Progressive Casualty Insurance Co Case CBM2013 00009 Paper 10 Mar 28 2013 adas 32 Nestle USA Inc v Steuben Foods Inc Case IPR2014 01235 Paper 12 Dec 22 20 149 iuit atri satire tonii tonto Ee ed ee 32 Studiengesellschaft Kohle M B H v Shell Oil Co 112 F 3d LUI AO OU UR N OE ET Patito liaise 27 Target Corp v Destination Maternity Corp Case IPR2014 00508 Paper 28 Feb 12 2015 bid 33 Target Corp v Destination Maternity Corp Case IPR2014 00508 Paper 31 Feb 12 2015 iss iets vate des NEIG col n 7 33 Target Corp v Destination Maternity Corp Case IPR2014 00508 Paper 32 Feb 12 2015 arcad
25. the same prior art or arguments were presented previously to the Office but does not require that result Biewendt and the specific combinations of Biewendt and other prior art asserted by Petitioner in this proceeding were not considered during prosecution of the 013 patent the cnr partes reexamination of the 013 patent or during IPR2014 00041 Indeed in a recent 32 Inter Partes Review United States Patent No 8 532 641 decision of an expanded panel in Target Corp the Board granted joinder and instituted an IPR that was filed more than one year after the date on which the petitioner was served with a complaint based at least in part on a reference that had been relied upon by the same petitioner in a previously rejected petition challenging the same claim IPR2014 00508 Pap 31 at 1 4 granting joinder noting that t he only additional prior art cited in the instant proceeding on which we institute review is the Asada reference in the Decision to Institute we institute only on two grounds Claim 21 as anticipated by Asada and claim 21 as obvious over the JCP fold over panel jeans and Asada Pap 32 Petitioners respectfully submit that the demonstration herein of the unpatentability of actively litigated claims that should nevet have issued is a worthwhile subject for the Board s consideration 1 Overview of U S Patent Pub No 2006 0262103 Hu Hu Ex 1303 titled Human Machine Interface Metho
26. to download the package After the software package has been successfully downloaded the software installation view opens Id at 7 15 See also id at 10 6 10 11 11 1 Ex 1333 11135 138 58 Inter Partes Review United States Patent No 8 532 641 With respect to Claim 10 a POSITA would have been motivated and found it obvious and straightforward to use Nokia s teaching of wirelessly upgrading a software application in implementing Hu s cell phone See VI C 5 641 Claims U S Pat Pub No US 2006 0262103 Hu 12 The system As discussed above Hu in view of Ahn or alternatively Hu of claim 8 in view of Ahn amp the knowledge of a POSITA discloses wherein claim 8 12 A the portable electronic device is operable as a wireless telephone device and has As discussed above Hu discloses this element See supra discussion of claim 1 A in this Section Ex 1333 139 12 B 1 a display at least partially defining a front surface of the device 2 As discussed above Hu alone Hu in view of the knowledge of a POSITA or alternatively Hu in view of Nokia a housing component at least partially defining a back surface of the device 3 an enclosure located between the front surface and the back surface discloses this element See supra discussion of claim 1 B in this Section Ex 1333 4140 12 C 4 a wide area wireless communication module operable to rece
27. to the vehicle Id at 0005 0046 0049 2 Overview of U S Patent Pub No 2004 0214525 Ahn Ahn Ex 1305 titled On line Music Data Providing System via Bluetooth Car Kit was filed on October 26 2001 as Intl App No PCT KRO1 01824 claiming priority to KR 2001 28429 filed 5 23 01 Ahn was published on October 28 2004 as U S Pat Pub No 2004 0214525 making it prior to the 641 patent under at least 102 a b and e All of the subject matter relied on from Ahn is also disclosed in Int Pub No WO 02 096 137 published 11 28 02 to Ahn Ex 1306 and is also prior art to the 641 patent under at least 102 a and b Ahn generally discloses a wireless phone e g mobile station that is able to wirelessly receive music data from a servet and transmit music data to a cat kit over Bluetooth Ex 1305 at 0029 0030 0036 0037 0054 Fig 2 Ahn further discloses that data can be 34 Inter Partes Review United States Patent No 8 532 641 transmitted over an asynchronous call path of Bluetooth Id at 0034 Ahn also discloses that when a call is recetved music playback can be temporarily or completely stopped and further that the car kit can operate as a hands free function of the wireless telephone Id at 0060 3 Overview of Nokia 9000 9000i Owner s Manual Nokia The Nokia 90001 Communicator Owner s Manual Exs 1308 1308B was printed and publicly available at least as of
28. using a single physical interface for both data communication and recharging eliminates the need to have two separate ports which is simpler from a design standpoint Ex 1333 952 In view of the foregoing a POSITA would have been motivated to and would have found it obvious to include a physical interface such as a USB port in Hu s phone to allow for data communication and recharging Id It would have been routine for a POSITA to use such a physical interface in implementing Hu s cell phone and it would have been clear to a POSITA that such a combination would work and provide the expected functionality Id To the extent it is argued that further disclosure is required Hu in view of Nokia discloses Element 1 E A POSITA would have been motivated and 48 Inter Partes Review United States Patent No 8 532 641 found it obvious and straightforward to provide the physical interface in Hu s cell phone with the additional ability to recharge as taught by Nokia See VI C 5 With respect to Element 1 G a POSITA would have understood that communicating a collection of information about media to a recipient device to generate a menu comprising a selectable menu item necessarily and thus inherently requires execution of a collection of instructions stored in memory Ex 1333 4 71 With respect to Element 1 H a POSITA would have found it obvious and straightforward to implement Ahn s teaching of streaming music data over an asynchronous
29. via the interface These disclosures do not describe at all sending information about audio content from a wireless telephone device to a recipient device so that the recipient device can generate a graphical menu comprising a selectable menu item associated with available media content nor do they disclose communicating audio content from a wireless telephone to a recipient device in response to selection of a menu item on the recipient device display None of the foregoing citations proffered by Affinity disclose that the portable device wireless telephone can communicate information about media content to a recipient device so that the recipient device can use the information to generate a graphical menu comprising a selectable menu item nor that a streaming audio signal can be sent from the wireless telephone portable device im response to a selection of a selectable menu item on a recipient device display At best the disclosures that Affinity cites only discuss receiving audio content on the portable device transmitting audio content from the portable device to a recipient device and displaying a graphical user interface on the portable To the extent Affinity intends to rely on 947 claim 1 as issued as supporting disclosure of the limitations at issue such reliance is improper because 947 claim 1 as issued was not a part of the original disclosure in the 812 application Ex 1318 at 512 648 see Studiengesellschaft Ko
30. view of the knowledge of a POSITA or alternatively Hu in view of Nokia discloses this element Hu discloses display of the cellular telephone Ex 1303 at 0004 see also 2d at Fig 3 item 26 Nokia discloses Ex 1308B at Fig 1 2 1 1 1 2 2 3 Ex 1333 439 43 surface of the communication module located within the enclosure 1 D 5 a rechargeable power supply located within the enclosure 1 C 4 a wireless Hu alone or alternatively Hu in view of the knowledge of a POSITA discloses this element T he cellular telephone is integrated with the vehicle audio system via a Bluetooth wireless connection Ex 1303 at 0005 See also id at 0046 Ex 1333 1144 45 Hu in view of the knowledge of a POSITA or alternatively Nokia discloses this element Hu discloses a cellular telephone Ex 1303 at 0008 0031 Nokia discloses Your Nokia 2000 Communicator 1s powered by a rechargeable Lithium Ion battery Ex 1308B at 2 5 See also id at 2 3 2 6 16 3 Ex 1333 1946 48 1 E 6 a physical interface having a first and a second conductive path the physical interface operable to communicate Hu in view of the knowledge of a POSITA or alternatively Hu in view of Nokia discloses this element Hu discloses A wireless communication module 25 brovides wireless communication with cellular phone 26 Of course wired communication links are also
31. 1997 Exs 1307 1308 1308B making it prior art to the 641 patent under at least 102 a and b Nokia describes the Nokia 9000i a cell phone that had a rechargeable battery a physical interface to communicate data and receive a recharging powet an e mail client voice mail client Internet web browser a display that makes up more than half of the front surface housing an enclosure and capability to wirelessly download and install software applications Ex 1308B at 2 3 2 6 4 6 7 5 7 15 10 6 10 7 Figs 1 2 2 6 2 8 4 Overview of U S Pat No 6 845 398 Galensky Galensky Ex 1309 titled Wireless Multimedia Player was filed on August 2 1999 and issued on January 18 2005 making it prior art to the 641 patent under at least 102 3 b and e Galensky describes a system having a portable device that is able to wirelessly receive streamed multimedia files from a server Ex 1309 at Abstract 2 8 12 When streaming data from the server to the portable device Galensky discloses that it is preferable to initially stream at the highest rate possible and to fill a buffer of e g 5 to 10 seconds in size Once filled the rate is decreased to 95 Inter Partes Review United States Patent No 8 532 641 a lower rate such that the buffer size does not fall below a size of eg 2 to 3 seconds over the course of the streaming media transmission Id at 6 2 18 5 Motivation to Combine Hu with Ahn Nokia
32. 41 patent based on the Ito reference The following additional matters concern one or more of the 641 patent and or patents that are related to the 641 patent IPR2014 00209 IPR2014 00212 IPR2014 00407 IPR2014 00408 90 011 254 95 001 262 90 010 333 95 001 223 95 001 264 90 011 982 95 001 281 95 001 263 95 001 266 95 001 782 Affinity v Apple 9 09 cv 47 EDTX 1 11 cv 349 EDTX amp 4 09 cv 4436 NDCA Affinity v Dice Elecs 9 08 cv 163 EDTX Affinity v BMW 9 08 cv 164 EDTX Affinity v Alpine 9 08 cv 171 EDTX Affinity v Nike 2 10 cv 54 EDTX amp 4 10 cv 5543 NDCA Affinity v Volkswagen 1 11 cv 36 EDTX Affinity v Clear Channel Broadcasting 1 12 cv 205 WDTX Affinity v Samsung 4 13 mc 80209 4 14 cv 2717 4 14 cv 02966 NDCA Affinity v Ford 1 12 cv 580 Inter Partes Review United States Patent No 8 532 641 EDTX amp 6 13 cv 363 WDTX Affinity v General Motors 1 12 cv 582 EDTX 6 13 cv 370 WD TX Affinity v Toyota 6 13 cv 365 WDTX Affinity v Volvo 6 13 cv 366 WDTX Affinity v Honda 6 13 cv 367 WDTX Affinity v Jaguar 6 13 cv 368 WDTX Affinity v Nissan 6 13 cv 369 WDTX Affinity v Bosch 6 14 cv 396 WDTX Affinity v Robert Bosch 1 14 cv 499 EDTX Affinity v Nissan 1 14 cv 508 EDTX Affinity v MLB Advanced Media 6 15 cv 33 WDTX Affinity v Directv 6 15 cv 30 WDTX Affinity v NBA Media Ventures 6 15 cv 31 WDTX Affinity v Amazon com 6
33. 87 812 App at Figs 5A 5B Ex 1319 at 406 755 App at Figs 5A 5B Ex 1301 at 18 27 34 Ex 1318 at 633 812 App at 42 1 9 Ex 1319 at 390 755 App at 29 0091 FIG 9 illustrates an automobile console having a mount for an electronic device according to one embodiment of the present invention Console 900 includes a conventional audio system 901 comprised of a receiver 902 and CD player 903 Interface 904 may be coupled to audio system 901 via plug 905 and cable 908 which may be coupled to an auxiliary line into audio system 901 Interface 904 may also include contact 906 for contacting electronic device 907 See also Fig 9 Ex 1318 at 591 812 App at Fig 9 Ex 1319 at 410 7755 App at Fig 9 Ex 1301 at 18 56 59 see also Ex 1318 at 633 34 812 App at 42 32 43 5 Ex 1319 at 391 7755 App at 30 0093 In another embodiment a radio manufacturer may provide interface 904 as a 25 Inter Partes Review United States Patent No 8 532 641 standard interface integrated into the audio system thereby allowing communication between electronic device 907 audio system 901 and or console 900 These portions of the specification merely describe that the portable electronic device can be coupled to an automobile They do not describe communicating information about audio content to a recipient device to generate a graphical menu or sending audio content from a portable device to the recipient device
34. G DATE OF THE 755 APPLICATION The application leading to the 641 patent was filed as a continuation of the 140 patent which is a continuation of the 390 patent which is a continuation of the 595 patent which is a continuation of the 833 patent which is a continuation of the 947 patent The 641 patent claims priority to this chain of patent applications the eatliest of which is U S Pat App No 09 537 812 the 812 application filed on March 28 2000 and issued on March 6 2007 as the 947 patent followed by U S Pat App No 10 947 755 the 755 application filed on September 23 2004 and issued 11 Inter Partes Review United States Patent No 8 532 641 on January 29 2008 as the 833 patent To properly claim the benefit of the March 28 2000 priority date or any other date in the chain of priority however the claims at issue must be directed to subject matter disclosed in the prior application s in the manner provided by 112 1 and must contain a written description of the invention See eg Vas Cath Inc v Mahurkar 935 F 2d 1555 1562 63 Fed Cir 1991 A disclosure in a parent application that merely renders the latter claimed invention obvious is not sufficient to meet the written description requirement the disclosure must describe the claimed invention with all its limitations Tronzo v Biomet Inc 156 F 3d 1154 1158 Fed Cir 1998 Furthermore entitlement to
35. IN THE UNITED STATES PATENT AND TRADEMARK OFFICE United States Patent No 8 532 641 Attorney Docket No Inventors Russell W White 110797 0004 658 Kevin R Imes Customer No 28120 Formerly Application No 13 673 391 Petitioners Issue Date Sept 10 2013 Samsung Electronics Co Ltd Filing Date Nov 9 2012 Samsung Electronics America Inc Priority Date March 28 2000 S Former Group Art Unit 2646 Former Examiner Erika Washington S For SYSTEM AND METHOD FOR MANAGING MEDIA MAIL STOP PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office Post Office Box 1450 Alexandria Virginia 22313 1450 PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO 8 532 641 Inter Partes Review United States Patent No 8 532 641 TABLE OF CONTENTS LIST OF EXHIBITS iss ee ee Es Ge ee ee n t mese ODE SENE aerate vi 1 INTRODUCTION dose ee GR ES ee DE Ed oe ig Ee Es 1 IL MANDATORY NOTICES UNDER 37 C F R 42 8 sesse se se ese se sees kake Se se ee 5 TH PETITIONERS HAVE STANDINEG ee ese de aee ot doeet te es 7 IV SUMMARY OF THE 641 PATENT ti Era Pb Eee 8 As Overview of the 641 Patet adi ada N 8 B 641 Patent Prosecution EISIOL sd ie ll aa 10 V 641 PATENT CLAIMS 1 3 5 7 9 10 and 12 ARE NOT ENTITLED VI TO CLAIM PRIORITY TO THE MARCH 28 2000 FILING DATE OF THE 812 APPLICATION AND THE SEPTEMBER 23 2004 FILING DATE OF EHE 755 APPLICATION cisti
36. Patent No 7 634 228 Ex 1316 Specification of the Bluetooth System v1 0 B Vols 1 2 1999 Telefonaktiebolaget LM Ericsson International Business Machines Corporation Intel Corporation Nokia Corporation Toshiba Corporation Ex 1317 February 12 2013 Decision on Institution of Covered Business Method Review in CBM2012 00003 Inter Partes Review United States Patent No 8 532 641 Exhibit Description Ex 1318 U S Patent No 7 187 947 File History Ex 1319 U S Patent No 7 324 833 File History Ex 1320 U S Patent No 7 778 595 File History Ex 1321 Control No 95 001 263 Reexamination History from December 6 2011 until April 11 2014 Inter Partes Reexamination of U S Patent No 7 486 926 Ex 1322 IBM Dictionary of Computing Edited by George McDaniel McGraw Hill Inc 1994 Ex 1323 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01184 Inter Partes Review of U S Patent No 8 532 641 Ex 1324 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01181 Inter Partes Review of U S Patent No 8 532 641 Ex 1325 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01182 Inter Partes Review of U S Patent No 8 532 641 Ex 1326 Nokia CARK60 Installation Guide dated August 1996 Ex 1327 U S Patent No 6 633 932 Bork Ex 1328 Nokia 90001 and 9000il Product Information ava
37. SITA to include this element in implementing Hu s cell phone to perform the email functions described in Hu Ex 1333 491 With respect to Element 3 B a POSITA would have known that a system that can direct an incoming call to voice mail as disclosed in Hu necessarily and thus inherently includes a voicemail client operable to communicate with a voice mail server Ex 1333 993 To the extent it is argued that further disclosure is required a voicemail client operable to communicate with a voice mail server was well known in the art see eg Ex 1308B at 4 4 13 3 13 9 and it would have been obvious to a POSITA to include this element in implementing Hu s cell phone perform the voice mail functions described in Hu Ex 1333 494 With respect to Element 3 C a POSITA would have known that a cell phone capable of Internet surfing as taught by Hu necessarily and thus inherently requires 51 Inter Partes Review United States Patent No 8 532 641 a browser operable to communicate with an Internet server Ex 1333 495 To the extent it is argued that further disclosure is required Nokia discloses Element 3 C A POSITA would have been motivated and found it obvious and straightforward to use the Internet browser taught by Nokia in implementing Hu s phone See VI C 5 641 Claims U S Pat Pub No US 2006 0262103 Hu 5 The system of claim 2 As discussed above Hu in view of Ahn z the wherein the collection of
38. a 33 Inter Partes Review United States Patent No 8 532 641 Tronzo v Biomet Inc boo Pad T154 Fed CA IO ita A da en os eerte 12 Vas Cath Inc v Mahurkar 935 BAd 1555 Fed Ait 1991 atat dk arit AN 12 STATUTES 35 U S C N TOZ eit tua A M passim VER EO A IE EE ER Neu reece cereus oui d E passim RR ea ER cde EE s QU M ORE dts Sate EI dees 12 RE ER nace tac deat N NE ER HE IE EE GE 1 ME EE BR TT EEEE O 28 O 7 33 OTHER AUTHORITIES 37 C F R UNS A AA E A EE IE 60 A Meo Datel ele oat cba N 1 ADS M NUR MEET 5 6 c ES CER 60 E M P 8 SALTO SAA 29 60 NEO pere 7 8 29 VE E E EE eas a D du AE 60 NE VE A EE 7 AD RE EE ON 5 iv Inter Partes Review United States Patent No 8 532 641 MANUAL OF PATENT EXAMINING PROCEDURE Inter Partes Review United States Patent No 8 532 641 LIST OF EXHIBITS Exhibit Description Ex 1301 U S Patent No 8 532 641 the 641 patent Ex 1302 U S Patent No 8 532 641 File History Ex 1303 U S Patent Publication No 2006 0262103 Hu Ex 1304 U S Patent App No 11 438 016 File History filed by Hu e al Ex 1305 U S Patent Publication No 2004 0214525 Ahn Ex 1306 International Publication No WO 02 096137 filed by Ahn e al Ex 1307 Declaration of Harri Valio Ex 1308 Declaration of Jari Toivanen Ex 1308A Exhibit A to the Dec
39. a streaming audio signal in response to a selection of a selectable menu item presented on a recipient device display Id Specifically the following portions of the 641 specification have been cited by Affinity as support for these limitations during prosecution of the 641 patent and as support for similar claim limitations during various reexaminations of related patents Affinity cites numerous passages in an attempt to scrounge for and stitch together a disclosure which simply does not exist As explained below none of these passages from the 641 patent Ex 1301 which appear in the 812 and 755 applications Exs 1318 and 1319 respectively demonstrate that Affinity was in possession of the claimed limitations at issue at the time the 812 and 755 applications were filed Ex 1301 at 4 14 18 Ex 1318 at 600 812 App at 9 28 31 Ex 1319 at 367 755 App at 6 0021 Therefore upon receiving the selected audio information a user may access and play the received audio information utilizing the electronic device in association with the automobile s audio system 17 Inter Partes Review United States Patent No 8 532 641 This passage describes that the portable electronic device receives audio information meaning the audio content or song itself from a personal computer The user can then play the song using the portable device in association with the automobile audio system It
40. at 1 65 2 4 Ex 1333 48 58 59 Thus a POSITA would have been motivated to look to Nokia s teachings in implementing the phone taught by Hu to advantageously eliminate the need to replace batteries of Hu s phone which would be convenient for the user by using rechargeable batteries and to recharge the batteries via a physical interface as taught by Nokia Ex 1333 91 48 58 59 Hu also discloses that its phone has a wired connection and can be used with a docking station to transfer data E g Ex 1303 at 0028 0041 0046 0049 0060 Ex 1333 1150 51 58 Thus a POSITA would understand that Hu s cell phone necessarily and thus inherently includes a physical interface for communicating data Ex 1333 1151 58 Employing Nokia s teachings in implementing Hu s phone would be advantageous because among other things it would eliminate the need to have two separate physical interfaces on the phone one for data communication and one 29 Inter Partes Review United States Patent No 8 532 641 for recharging which is simpler from a design standpoint and permits a smaller cell phone housing Id 59 Also having a single universal interface that can accommodate connections for both data communication and recharging permits easy connection to a docking station Id Further implementing Hu s cell phone with Nokia s teachings of a physical interface would allow a user to advantageously communicate data and recharge the battery of
41. ation No WO 02 096137 filed by Ahn ef al Ex 1307 Declaration of Harri Valio Ex 1308 Declaration of Jari Toivanen Ex 1308A Exhibit A to the Declaration of Jari Toivanen User s Manual for the Nokia 9000 Communicator dated 1995 published by Nokia Mobile Phones Ex 1308B Exhibit B to the Declaration of Jari Toivanen Owner s Manual for the Nokia 90001 Communicator Nokia dated 1995 1997 published by Nokia Mobile Phones Ltd Ex 1309 U S Patent No 6 845 398 Galensky Ex 1310 Declaration of Paul E Berg Ex 1310A Exhibit A to the Declaration of Paul E Berg Universal Serial Bus Specification Revision 1 1 September 23 1998 Compaq Computer Corporation Intel Corporation Microsoft Corporation and NEC Corporation Ex 1311 U S Patent No 7 953 390 File History Ex 1312 May 20 2014 Decision on Institution of Inter Partes Review in IPR2014 00209 Inter Partes Review of U S Patent No 7 953 390 Ex 1313 May 20 2014 Decision on Institution of Inter Partes Review in IPR2014 00212 Inter Partes Review of U S Patent No 7 953 390 Ex 1314 June 12 2014 Action Closing Prosecution in Reexamination Control Nos 95 001 262 and 90 011 254 Inter Partes and Ex Parte Reexaminations of U S Patent No 7 187 947 Ex 1315 June 30 2014 Patent Trial and Appeal Board Decision Appeal No 2014 002024 and August 18 2011 Action Closing Prosecution in Reexamination Control No 95 001 281 Inter Partes Reexamination of U S
42. channel in Hu s system See VLC 5 A POSITA would have understood that streaming a signal to the recipient device using an asynchronous witeless channel of a local network necessarily and thus inherently requires execution of a collection of instructions stored in memory Ex 1333 9 79 With respect to Element 1 1 Hu discloses a cell phone that can alter an outputting of the signal in connection with the cell phone status A POSITA would gt have known that monitoring cell phone status as disclosed in Hu could include recognizing receipt of an incoming phone call Ex 1333 482 Thus it would have been obvious to a POSITA to provide Hu s phone with the ability to mute the audio when recognizing receipt of an incoming call Id To the extent it is argued that further disclosure is required Ahn discloses Element 1 1 A POSITA would have found it obvious and straightforward to implement Ahn s teaching of temporarily stopping music reproduction when recognizing receipt of a call in Hu s system See VLC 5 A 49 Inter Partes Review United States Patent No 8 532 641 POSITA would have understood that recognizing receipt of a call and altering an output of a signal upon recognizing receipt of the call necessarily and thus inherently requires execution of a collection of instructions stored in memory Ex 1333 985 641 Claims U S Pat Pub No US 2006 0262103 Hu 2 The system of As discuss
43. d at 0023 0055 0058 0059 Figs 1 5 7 9 Ex 1333 1163 71 1 H to utilize the wireless communicat ion module to stream a signal representing atleasta portion of a song to the recipient device using a given asynchrono us wireless channel of a localized communicat ions signaling network Hu in view of Ahn discloses this element Hu discloses a wireless communication module 25 is coupled to the control module 21 and provides wireless communication with cellular phone Bluetooth communication is employed Ex 1303 at 0028 The wireless communication module can also support data transmission for audio video playback of media content stored in the cellular telephone Id at 0030 E mbodiments can include ultimately receiving selected media content from the player for delivery to the user over a multimedia system of the vehicle Id at 0041 T he system can be used to allow users to browse content available for streaming over a communications channel The operations described above for interacting with a media player can be extended to interaction with a cellular telephone by wired or wireless connection such as by Bluetooth Id at 0045 0046 see also zd at 0060 Fig 3 Ahn discloses The Bluetooth call path includes an asynchronous call path for transmitting data Ex 1305 at 0034 The music data providing server 10 may transmit streaming music data
44. d and Device for Cellular Telephone Operation in Automotive Infotainment Systems was filed on May 19 2006 and published on Nov 23 2006 as U S Pat Pub No 2006 0262103 making it prior art under at least 102 a b and e Hu generally discloses a system for utilizing a user interface to play music stored in a cell phone in an audio system of a vehicle Ex 1303 at 0008 0009 0030 Hu discloses that the cell The Target panel also concluded that Congress has made it clear that 315 c contemplates the joinder of issues as well as parties IPR2014 00508 Pap 28 at 10 33 Inter Partes Review United States Patent No 8 532 641 phone is able to send information about available music to a recipient device to generate a selectable menu on a display Id at 0009 0039 0046 The phone is able to receive commands e g indicating selection of a menu item from the user interface and transmit playback of media stored in the phone over a wired or wireless connection such as Bluetooth to the vehicle s audio system Id at 0030 0041 0045 0046 The phone also has the capability to download music and send receive emails over the Internet surf the Internet and communicate with a voice mail server Id at 0047 0049 Cl 22 25 Hu also discloses that the audio system can be muted ot unmuted depending on the cell phone status and that the phone can operate in a hands free mode while wirelessly connected
45. d to play the media content and may also be connected with another electronic device such as a portable radio or vehicle audio system so that the audio information may be communicated to the other electronic device Petitioners previously filed a petition IPR2014 01184 seeking 2nter partes review and judgment against claims 1 3 and 5 14 of the 641 patent based on combinations of Ohmura Ahn Nokia and or Galensky On January 30 2015 the Board granted the petition with respect to claims 8 11 13 and 14 finding that there was a reasonable likelihood that claims 8 and 11 are obvious over Ohmuta in view of All sections cited in this Petition are from either 35 U S C or 37 C F R unless stated otherwise All emphasis is added by Petitioners unless otherwise noted Inter Partes Review United States Patent No 8 532 641 Ahn and claims 13 and 14 are obvious over Ohmura in view of Ahn and Nokia Ex 1323 at 15 The Board further concluded that at this stage Patent Owner failed to demonstrate that claims 8 11 13 and 14 are entitled to a priority date earlier than the November 9 2012 filing date of App No 13 673 391 the application leading to the 641 patent Id at 8 The Board did not institute review as to 641 patent claims 1 3 5 7 9 10 and 12 however concluding that the petition did not sufficiently identify support for obviousness in the combinations of Ohmura Ahn Nokia and or Galensky Id at 13 Specifically the Boa
46. date earlier than at least January 16 2008 because the alleged inventions of the 641 patent claims were not disclosed in at least two of the applications preceding the application filed on that date in the claimed priority chain the 812 and 755 applications Indeed the Board previously determined that the claims of the related 228 patent which contain similar limitations are likewise not entitled to the March 28 2000 priority date because of a lack of disclosure in the 812 application to which it also claimed priority Ex 1315 As set forth herein the supposed invention in each of the Challenged Claims was well known and obvious prior to January 16 2008 The Hu and Ahn references relied on in this Petition disclose all of the limitations of independent claims 1 and 8 including the ability for a wireless phone to communicate information to a second device that is used to generate a selectable graphical menu item associated with media content on the phone and stream music to the second device using an asynchronous wireless channel of a localized communications signaling network The following conventional features of a wireless telephone were among others also quite well known in the art prior to January 16 2008 a display a housing an enclosure a rechargeable battery a memory a physical interface for communicating data and receiving a recharging power and the ability to alter an output of an audio signal when
47. dge of a POSITA a housing component at least partially or alternatively Hu in view of Nokia defining a back surface of the device 3 discloses this element See supra an enclosure located between the front discussion of claim 1 B in this 57 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu sutface and the back surface Section Ex 1333 4132 and 9 C 4 a rechargeable power supply located within the enclosure As discussed above Hu in view of the knowledge of a POSITA or alternatively Nokia discloses this element See supra discussion of claim 1 D in this Section Ex 1333 4133 9 D 5 a non circular physical interface having a first and a second conductive path the non circular 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 4452 55 134 As discussed above Hu in view of the knowledge of a POSITA or alternatively Hu in view of Nokia discloses this element See supra discussion of claim 1 E in this Section Ex 1333 With respect to Element 9 D both USB and Nokia teach a physical interface that is non circular See eg Ex 1308B at 2 4 Ex 13010A Ex 1333 452 55 134 641 Claims 10 The system of claim 9 wherein the portable electronic device c
48. dia second transmission rate after the minimum threshold level of data is content at a wireless stored in the buffer the first transmission rate being higher than the communication rate second transmission rate when at least the minimum threshold level of and a different data 1s stored in the buffer A microprocessor in the wireless device component part of the monitors the size of the buffer to ensure that the data contained in the media content at a buffer does not fall below the minimum threshold level prior to different wireless receiving all of the blocks of data associated with the streamed 54 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu communication rate multimedia file If the size of the buffer falls beneath the minimum wherein the wireless threshold level the microprocessor signals the wireless telephone device is telecommunications network to increase the rate that data is operable to cause a transmitted to the device over the wireless telecommunications network change in until the data contained in the buffer reaches or exceeds the minimum communication rates at threshold level Ex 1309 at 2 21 47 The wireless network is which a given preferably a high bandwidth network such as a wideband component part is CDMA platform Other known wireless platforms such as the received based at least UMTS LMDS GSM and even satel
49. ed above Hu in view of Ahn amp the knowledge of claim 1 wherein POSITA Hu in view of Ahn amp Nokia or alternatively Hu the wireless in view of Ahn Nokia amp the knowledge of a POSITA communication discloses claim 1 Hu discloses this element The operations module is described above for interacting with a media player can be extended to compliant with a znteraction with a cellular telephone by wired or wireless connection such as Bluetooth by Bluetooth Ex 1303 at 0046 See also Ex 1303 at 0005 standard 0028 0030 0049 0060 Ex 1333 9186 87 With respect to Claim 2 to the extent it is argued that further disclosure is required a POSITA would have understood that the Bluetooth connection referenced in Hu necessarily and thus inherently requires a wireless communication module that is compliant with a Bluetooth standard Ex 1333 187 641 Claims U S Pat Pub No US 2006 0262103 Hu 3 The system of As discussed above Hu in view of Ahn amp the knowledge claim 2 further of POSITA Hu in view of Ahn amp Nokia or alternatively comprising Hu in view of Ahn Nokia amp the knowledge of a POSITA discloses claim 2 3 A an email Hu or alternatively Hu in view of the knowledge of a client operable to POSITA discloses this element Internet connection operations communicate with can include a view incoming email b compose and send email by an email server
50. ement The z7ge display make s using the display applications easy Ex 1308B at 1 2 makes up mote than half of the 52 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu front surface and Id at Fig 1 2 See also id at 1 1 1 2 Ex 1333 101 102 6 B the wireless telephone device is operable to receive a collection of data representing a media at a hybrid of wireless communication rates that includes at least one faster rate and one slower rate discloses The mobile station comprises a wireless transmitting and Hu in view of Galensky or alternatively Hu in view of Ahn amp Galensky discloses this element Hu discloses C e phone operations can include Internet connection operations Internet connection operations can include download music Ex 1303 at 0049 see also id at 0060 Cl 22 25 Ex 1304 at 67 68 Ahn receiving unit for receiving the music data from the music data providing server through radio links to the mobile communication system Ex 1305 at 0014 see also zd at 0054 0056 0058 Figs 1 3A Galensky discloses One way of accomplishing this is lo preferably transmit data at the highest data rate possible over the wireless network 40 Once an acceptable buffer is created the microprocessor 82 will instruct the transceiver 94 to signa
51. ence relied on in this Petition specifically addresses the Board s concerns with Ohmura that were expressed in IPR2014 01184 Like Ohmura Hu discloses a system for playing music stored in a portable device through a user interface and an audio system within a vehicle In contrast to Ohmura however the portable device in Hu is a cell phone which includes the ability to download music and receive and send emails over the Internet and communicate with a voice mail server Accordingly Hu addresses the Board s concern that Petitioners had failed to demonstrate in IPR2014 01184 why it would have been beneficial or advantageous to modify Ohmura s portable audio apparatus to include Internet connectivity over a cellular connection no such modification is necessaty with Hu because the portable device in Hu is already a cell phone with the capabilities claimed in the 641 patent Consistent with the Board s findings in IPR2014 01184 the present Petition demonstrates that the Challenged Claims ate in fact not entitled to the claimed March 28 2000 priority date of the 812 application in addition to the claimed September 23 2004 priority date of U S Pat App No 10 947 755 the 755 application issued as U S Pat No 7 324 833 and are unpatentable in view of references published after March 28 2000 Specifically Petitioners submit that Inter Partes Review United States Patent No 8 532 641 Affinity is not entitled to claim a priority
52. ensky s teachings of receiving media at two communication rates through a wireless telecommunications network where the change in rates is based in part on an amount of data in the buffer in implementing Hu s phone and it would have been clear to a POSITA that such a substitution would work and provide the expected functionality Ex 1333 44 108 111 117 6 Claims 1 3 5 7 9 10 amp 12 Are Obvious Over Grounds 1 7 42 Inter Partes Review United States Patent No 8 532 641 For certain claims Petitioners have provided additional explanations and argument after the corresponding claim chart 641 Claims U S Pat Pub No US 2006 0262103 Hu 1 A music enabled Hu discloses this element The wireless communication module communication can also support data transmission for audio video playback of system media content stored in the cellular telephone Id at 0030 See also id comprising at 0028 0045 0049 Ex 1333 437 1 A a wireless device having telephone device the Hu discloses this element A system for controlling cellular telephone from within a vehicle Ex 1303 at 0008 See also id at 0031 Ex 1333 428 defining a front 1 B 1 a display at least partially device 2 a housing component at least partially defining a back surface of the device 3 an enclosure located between the front surface and the back surface Hu alone Hu in
53. ernet etc At most this disclosure describes that electronic device 300 can connect to other devices to receive audio content and further that electronic device 300 can communicate audio content to an automobile audio system It does not however disclose that the automobile audio system receives information about the audio content to generate a graphical menu or that audio content is sent from the portable electronic device to the automobile audio system in response to the selection of a menu item on the automobile audio system Ex 1301 at 10 66 11 3 Ex 1318 at 616 812 App at 25 9 14 Ex 1319 at 378 7755 App at 17 0056 FIG 4 illustrates a graphical user interface GUT for displaying selectable audio information accotding to one aspect of the present invention The GUI may be operable with a computer system cellular device PDA or other electronic devices or systems operable to display the GUI of FIG 4 ee a so Fig 4 This portion of the specification describes that a graphical user interface GUI can be used on a portable device to display selectable audio information It does not however disclose that a recipient device receives information from a portable device to generate a graphical menu on the recipient device or that audio 22 Inter Partes Review United States Patent No 8 532 641 content is sent from the portable device to the recipient device in response to the select
54. ervice and in accordance with 1 33 c 42 105 and 42 100 a copy of the present Request in its entirety is being served on Patent Owner at the correspondence address of record for the subject patent as reflected in the PTO s publicly available records as designated in the PAIR system Please charge our credit card covering any fee set in 42 15 a for this Petition The Director is hereby authorized to charge any deficiency in the fees filed asserted to be filed or which should have been filed herewith or with any paper hereafter filed in this proceeding by this firm to our Deposit Account 06 1075 under Order No 110797 0004 658 Please direct all correspondence in this matter to the undersigned Respectfully submitted February 27 2015 By Steven Baughman J Steven Baughman Lead Counsel Gabrielle E Higgins Backup Counsel Reg No 47 414 Reg No 38 916 ROPES amp GRAY LLP ROPES amp GRAY LLP One Metro Center 700 12 St Ste 900 1900 University Avenue Suite 600 Washington DC 20005 3948 East Palo Alto CA 94303 P 202 508 4606 F 202 383 8371 P 650 617 4000 F 650 617 4090 steven baughman a ropesgray com gabrielle higgins ropesgray com Mailing address for all PTAB correspondence ROPES amp GRAY LLP IPRM Floor 43 Prudential Tower 800 Boylston Street Boston MA 02199 3600 Attorneys for Petitioners Samsung Electronics Co Ltd and Samsung Electronics America Inc 60 Inter Partes Review
55. est that the Board find that each of the Challenged Claims is not entitled to claim a priority date earlier than January 16 2008 and that each of the Challenged Claims is invalid under 103 II MANDATORY NOTICES UNDER 37 C F R 42 8 Notices Under 42 8 b 1 b 3 b 4 The Petitioners and real parties in interest are Samsung Electronics Co Ltd and Samsung Electronics America Inc collectively Samsung or Petitioners Lead counsel backup counsel Inter Partes Review United States Patent No 8 532 641 and service information for Petitioners are designated in the signature block below Related Matters Under 42 8 b 2 and Joinder Motion Affinity is asserting 641 patent claims 1 3 and 5 14 against Petitioners in Affinity v Samsung 3 14 cv 3030 NDCA and in Affinity v Blackberry 5 14 cv 3031 NDCA There are three inter partes review proceedings involving the 641 patent that were previously filed by Petitioners In IPR2014 01181 the Board instituted review of claims 8 and 11 14 based on the primary reference Ito Ex 1324 In IPR2014 01182 the Board instituted review of claims 1 3 and 5 14 based on the primary reference Abecassis Ex 1325 And in IPR2014 01184 the Board instituted review of claims 8 11 13 and 14 based on the primary reference Ohmura Ex 1323 Petitioners have also concurrently filed an additional IPR petition challenging claims 1 3 5 7 and 9 10 of the 6
56. fer as a flow of data and streaming audio signal should be construed to mean audio signal transferred as a flow of data See ag Ex 1301 at 8 31 35 the method of FIG 2 may be deployed in association with an Internet website operable to display selectable links for downloading information The information may include audio information such as MP3s streaming audio streaming see also Ex 1312 at 7 Ex 1318 at 394 4 30 2003 Final Rej at 3 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 29 Inter Partes Review United States Patent No 8 532 641 between streaming audio and the transferring of an audio file Ex 1322 at 4 IBM Dict of Comp at 654 stream 1 To send data from one device to another In its decisions instituting IPR in IPR2014 01181 01182 and 01184 the Board construed streaming audio signal to mean an audio signal that is transferred in a continuous stream See eg Ex 1323 at 7 Petitioners agree that the Board s construction is consistent with the meaning of this phrase as it is used in the 641 patent wireless communication rate Claims 6 7 12 For review purposes this term is construed to mean speed at which data is wirelessly transmitted See eg Ex 1301 a
57. further disclosure is required including a wireless communication module in an enclosure of a cell phone was well known in the art see 46 Inter Partes Review United States Patent No 8 532 641 eg Ex 1330 at 1 2 11 25 and it would have been obvious to a POSITA to do so in implementing Hu s cell phone Ex 1333 945 With respect to Element 1 D it was well known prior to January 16 2008 to a POSITA to use a rechargeable battery in a cell phone E g Ex 1307 Ex 1308 Ex 1308B at 2 5 Ex 1330 at 13 14 Ex 1331 Ex 1333 946 Thus it would have been obvious to a POSITA to use a rechargeable battery in Hu s phone to advantageously eliminate the need to periodically replace ordinary i e non rechargeable batteries and it would have been clear to a POSITA that such a combination would work and provide the expected functionality Ex 1333 46 To the extent it is argued that further disclosure is required Nokia discloses Element 1 D A POSITA would have been motivated and found it obvious and straightforward to use the rechargeable battery taught by Nokia in implementing Hu s phone See VI C 5 With respect to Element 1 E a POSITA would have understood that a cell phone that uses a docking station to transfer data necessarily and thus inherently includes a physical interface Ex 1333 951 Moreover it was well known to a POSITA for a cell phone such as that disclosed in Hu to include a physical interface to co
58. he recipient device and streaming an audio signal from the telephone to the recipient device using an asynchronous wireless channel of a local network in response to a selection of a menu item on the recipient device The Challenged Claims further claim a Bluetooth communication module in the telephone and that media content is delivered to a witeless telephone at a hybrid of communication rates The elements of the Challenged Claims are an amalgam of features described in various embodiments in the 641 patent For example in one portion of the specification the 641 patent discloses that Electronic devices are described in more detail below and may include a network radio a modular device an audio system a personal digital assistant PDA a cellular phone Ex 1301 at 5 36 39 Many of the other features of claim 1 however such as a rechargeable battery display housing and physical interface are never specifically described in the specification with respect to a cellular phone Similarly although the 641 patent describes the ability to communicate audio information from a portable device to a second device over a localized wireless connection id at 9 31 43 such disclosure is not connected to the 641 patent s only description of an asynchronous wireless channel see zd at 6 31 47 As set forth in this Petition all of the elements of the Challenged Claims were well known in the art long before January 16 2008 Indeed the
59. hle v Shell Oil Co 112 F 3d 1561 1564 Fed Cir 1997 27 Inter Partes Review United States Patent No 8 532 641 device The disclosures cited by Affinity do not disclose at all transmitting information about the audio content such as the name of a song from a portable device to a recipient device so that the recipient device can generate a graphical menu with a selectable menu item on a display Nor do these citations disclose that a user could select a selectable menu item on the recipient device display to initiate the transmission of the audio content from the portable device to the recipient device Accordingly claims 1 3 5 7 9 10 and 12 of the 614 patent are not entitled to at least the March 28 2000 filing date of the 812 application and the September 23 2004 filing date of the 755 application Petitioners respectfully submit that the Challenged Claims are thus not entitled to a priority date earlier than January 16 2008 and the Challenged Claims are rendered obvious under 103 by the Hu Ahn Nokia and Galensky references cited herein VI THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE 641 PATENT Petitioners submit there is at least a reasonable likelihood that the petitioners would prevail with respect to at least 1 of the claims challenged in the petition 314 a Indeed all of the Challenged Claims of the 641 patent are unpatentable as
60. ilable at http tech insider org mobile research 1997 0910 b html dated 1998 Ex 1329 U S Patent No 6 211 649 Matsuda Ex 1330 Motomanual RAZR V3i GSM Motorola Inc 2006 Ex 1331 Archived web page of http www gsmarena com motorola_razt_v3i 1352 php accessed on February 24 2015 through the December 20 2005 archive of http web archive org specifically https web archive org web 20051220091300 http www gsma rena com motorola_razr_v3i 1352 php Ex 1332 U S Patent No 7 123 936 Rydbeck Ex 1333 Declaration of Dr Schuyler Quackenbush Ex 1334 Declaration of Hayan Yoon in Support of Petition for Inter Partes Review of U S Patent No 8 532 641 The copy has been served on February 27 2015 by causing the aforementioned Inter Partes Review United States Patent No 8 532 641 document to be deposited in the United States Postal Service as Express Mail postage EF 070 058 206 US pre paid in an envelope addressed to TROP PRUNER amp HU P C Samuel Epstein John Garza Dan Hu Fred Pruner Edwin Richards Mark Rozman Timothy Trop 1616 S VOSS ROAD SUITE 750 HOUSTON TX 77057 2631 By s Kathryn N Hong Kathryn N Hong ROPES amp GRAY LLP Mailing address for all PTAB correspondence ROPES amp GRAY LLP IPRM Floor 43 Prudential Tower 800 Boylston Street Boston MA 02199 3600 Attorneys for Petitioners Samsung Electronics Co Ltd Samsung Electronics America I
61. ing information about audio content available from the portable device to a recipient device or sending audio content from the portable device to a recipient device in response to the selection of a menu item on the recipient device Ex 1301 at 13 15 32 Ex 1318 at 621 22 812 App at 30 16 31 2 Ex 1319 at 382 755 App at 21 0066 FIG 5B illustrates automobile console having a mount for coupling an electronic device according to one aspect of the present invention Console 510 includes mount 511 24 Inter Partes Review United States Patent No 8 532 641 operable to receive electronic device 512 Mount 511 may be located in many different locations within an automobile such as coupled to a sun visor center console dashboard floorboard etc Mount 511 allows the user to couple electronic device 512 to the automobile and provide an interface for communication between electronic device 512 and the automobile audio system Mount 511 may also include a power connection that allows electronic device 512 to use the automobiles power during use The power connection may also be used in association with a recharging circuit operable to recharge a power supply within the electronic device During operation electronic device 512 coupled to mount 511 may receive selected audio information via wireless communication and communicate the selective information to the automobile audio system See also Figs SA 5B Ex 1318 at 5
62. ion of a menu item on the recipient device Ex 1301 at 11 57 62 Ex 1318 at 618 812 App at 27 8 13 Ex 1319 at 380 755 App at 19 0059 A user may also use a select a device feature that allows a user to select a destination device for communicating selected audio information For example a user may want to communicate a playlist to several different devices such as a PDA a home computer system a work computer system etc This portion discusses that the user may choose a destination device for the portable device to communicate audio content to It does not disclose that information about audio content is sent to the destination device to generate a graphical menu or that audio content is sent in response to the selection of a menu item on the destination device Ex 1301 at 12 14 40 Ex 1318 at 619 812 App at 28 2 32 Ex 1319 at 380 81 7755 App at 19 20 0061 0062 However radio dial 412 surpasses the limitations of conventional systems through providing a programmable radio dial of user customized audio information Radio dial 412 includes several stations that may be programmed using program interface 413 The preset stations may include several different types of user customized preset information such as user selected playlists Internet broadcast stations top lists group playlists artist selected lists on line radio station conventional radio stations Internet phone cellular phone e
63. ive a collection of data representing a media at a hybrid of wireless communication rates that includes at least a first rate and a second rate and 5 a buffer memory wherein a change in communication rates is at least partially based upon an amount of data located in the buffer memoty As discussed above Hu in view of Galensky ot alternatively Hu in view of Ahn amp Galensky discloses this element See supra discussion of claim 7 A and 7 B in this Section Ex 1333 141 142 With respect to Claim Element 12 C the wireless networks taught by Galensky eg CDMA UTMS GSM satellite see eg Ex 1309 at 3 38 51 and Ahn amp g Ex 1305 at 0014 0054 Figs 1 3A are wide area networks A POSITA would have understood that a cell phone using those networks necessarily and thus inherently includes a wide area wireless communication module Ex 1333 4142 VII CONCLUSION 59 Inter Partes Review United States Patent No 8 532 641 Petitioners respectfully submit that for the reasons set forth above there is at minimum a reasonable likelihood that Petitioners will prevail on at least one claim of the Challenged Claims Petitioners respectfully request that this Petition be granted and 641 claims 1 3 5 7 9 10 and 12 be found unpatentable and canceled If there are any questions counsel for Petitioners may be contacted at the phone numbers listed below As identified in the Certificate of S
64. ived information accordingly In another embodiment electronic device 300 may be operable to scan several frequencies to obtain the desirable information For example a user may select several Internet broadcasts comprised of streaming audio information Therefore the information may be transmitted across several wireless frequencies receivable by electronic device 300 19 Inter Partes Review United States Patent No 8 532 641 Electronic device 300 may then be operable to allow a user to scan witelessly communicated Internet broadcast signals thereby providing a user selected virtual broadcast radio network In another embodiment electronic device 300 may include a user interface operable to communicate with an Internet website operable to display selectable audio information The Internet website may be configured as a user preferred environment displaying a users selected audio information Internet broadcast selections streaming audio selections etc This disclosure describes that audio content can be sent from electronic device 300 to an audio system using various methods of transmission and that electronic device 300 may include a user interface to communicate with an Internet website It does not describe sending information about audio content from the electronic device to an audio system to generate a graphical menu or communicating audio content from the electronic device to an audio system in res
65. l the wireless network 40 to decrease the data transmission rate to the minimum rate necessary for adequate transmission Ex 1309 at 6 2 18 See also id at Abstract 2 29 47 3 38 51 5 66 6 2 6 18 27 Ex 1333 11103 108 With respect to Element 6 A a POSITA would have been motivated and found it obvious and straightforward to include a display that makes up more than half of the front surface as taught by Nokia in implementing Hu s phone See VI C 5 With respect to Element 6 B a POSITA would have understood that the Internet connection operation of downloading music necessarily and thus inherently uses the cellular modem of the cell phone Ex 1333 103 A POSITA would have understood that because Bluetooth communicates over a local area network the only means to access the Internet to receive media in the embodiment disclosed in Hu is over the wide area network cellular modem of the cell phone IZ To the extent it is 53 Inter Partes Review United States Patent No 8 532 641 argued that further disclosure is required a POSITA would have been motivated and found it obvious and straightforward to use Ahn s teaching of wirelessly receiving media content through a mobile communication network in implementing Hu s cell phone See VI C 5 In addition a POSITA would have been motivated and found it obvious and straightforward to use Galensky s teaching of receiving data through a wireless telecommunicatio
66. laration of Jari Toivanen User s Manual for the Nokia 9000 Communicator dated 1995 published by Nokia Mobile Phones Ex 1308B Exhibit B to the Declaration of Jari Toivanen Owner s Manual for the Nokia 90001 Communicator Nokia dated 1995 1997 published by Nokia Mobile Phones Ltd Ex 1309 U S Patent No 6 845 398 Galensky Ex 1310 Declaration of Paul E Berg Ex 1310A Exhibit A to the Declaration of Paul E Berg Universal Serial Bus Specification Revision 1 1 September 23 1998 Compaq Computer Corporation Intel Corporation Microsoft Corporation and NEC Corporation Ex 1311 U S Patent No 7 953 390 File History Ex 1312 May 20 2014 Decision on Institution of Inter Partes Review in IPR2014 00209 Inter Partes Review of U S Patent No 7 953 390 Ex 1313 May 20 2014 Decision on Institution of Inter Partes Review in IPR2014 00212 Inter Partes Review of U S Patent No 7 953 390 Ex 1314 June 12 2014 Action Closing Prosecution in Reexamination Control Nos 95 001 262 and 90 011 254 Inter Partes and Ex Parte Reexaminations of U S Patent No 7 187 947 Ex 1315 June 30 2014 Patent Trial and Appeal Board Decision Appeal No 2014 002024 and August 18 2011 Action Closing Prosecution in Reexamination Control No 95 001 281 Inter vi Inter Partes Review United States Patent No 8 532 641 Exhibit Description Partes Reexamination of U S Pa
67. lite based partially upon an systems g the Teledesic network may be utilized Id at amount of data located 3 38 51 See also id at Abstract 5 66 6 27 Ex 1333 11112 in the buffer memory 117 With respect to Element 7 A a POSITA would have been motivated and found it obvious and straightforward to include a buffer memory as taught in Galensky in implementing Hu s cell phone See VI C 5 With respect to Element 7 B to the extent it is argued that further disclosure is required a POSITA would have been motivated and found it obvious and straightforward to use Ahn s teaching of wirelessly receiving media through a mobile communication network in implementing Hu s phone See VI C 5 In addition a POSITA would have been motivated and found it obvious and straightforward to use Galensky s teaching of receiving media content at different communication rates as a series of component parts through a wireless telecommunications network where a change in communication rates is based on an amount of data located in the buffer memory in implementing Hu s cell phone See VI C 5 641 Claims U S Pat Pub No US 2006 0262103 Hu 8 A system for Hu discloses this element The wireless communication 55 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu wirelessly communicating musical content comp
68. mmunicate data and receive a recharging power e g cell phones available on the market such as the Nokia 9000 available at least as of 1997 and the Moto RAZR v31 available at least as of 2005 included a physical interface for communicating data and recharging E g Ex 1307 Ex 1308 Ex 1308B at 2 4 Figs 2 6 2 8 Ex 1330 at 13 34 35 Ex 1331 see also Ex 1327 at 6 66 7 12 Fig 18 Ex 1329 at 1 65 2 4 Ex 1333 47 Inter Partes Review United States Patent No 8 532 641 452 In addition USB was well known prior to January 16 2008 and provided an interface to communicate data via a first conductive path and receive a recharging power via a second conductive path E g Ex 1310 Ex 1310A Ex 1315 at 13 14 19 20 Ex 1327 at 6 66 7 12 Fig 18 Ex 1329 at 1 65 2 4 Ex 1330 at 13 34 35 Ex 1331 Ex 1333 952 Further as taught by Bork Ex 1327 implementing a USB port on a cell phone to provide data communication with a PC and recharging capability from a PC is advantageous in that it provides savings in the cost of acquiring an additional power cable and travel space by eliminating the need for an additional cable eliminates the need for two dedicated power sources and provides the ability to recharge a portable device from a second device when no other power source is available Ex 1327 at 2 54 63 Ex 1333 952 Further the use of a single cable is more convenient than using multiple separate cables and
69. n motivated to look to Nokia s explicit teachings of housing an enclosute a rechargeable power supply a physical interface an Internet browser a display that makes up more than half of the front surface and wirelessly upgrading software in implementing Hu s cell phone Ex 1333 443 48 58 59 98 102 138 Further Nokia expressly discloses the well known features of a cell phone including a front surface housing defining a back surface and an enclosure located between the front and back surfaces E g Ex 1307 Ex 1308 Ex 1308B at Fig 1 2 Ex 1330 at 1 2 11 12 Ex 1331 Ex 1333 943 Also Figure 3 of Hu Ex 1303 38 Inter Partes Review United States Patent No 8 532 641 depicts a portion of housing for a cell phone Ex 1333 143 Thus a POSITA would have been motivated to look to Nokia s express teachings to advantageously provide a front surface housing defining a back surface and an enclosure in implementing Hu s cell phone to protect the inner components of the device Id As noted above both Hu and Nokia are in the same field of art and disclose cell phones E g Ex 1303 at Fig 3 0008 Ex 1333 443 48 58 59 Nokia also expressly discloses the well known features of a cell phone including rechargeable batteries and a physical interface to recharge the batteries E g Ex 1307 Ex 1308 Ex 1308B at 2 4 2 5 Figs 2 6 2 8 see also Ex 1330 at 13 14 34 35 Ex 1331 Ex 1327 at 6 66 7 12 Fig 18 Ex 1329
70. nc
71. nd independent claim 8 s recitation of communicating a streaming audio signal in response to a selection of a selectable menu item presented on a recipient device display the very limitations the applicants added to secure allowance of the 641 patent Exs 1302 1318 1319 The earliest application that even arguably disclosed these limitations was the application that led to the 595 patent filed on January 16 2008 See Ex 1320 Further because claims 2 3 and 5 7 depend upon independent claim 1 and claims 9 10 and 12 depend upon independent claim 8 Affinity likewise cannot claim priority for these claims to the 812 and 755 applications In the January 30 2015 Order in IPR2014 01184 the Board correctly determined that with respect to claim 8 Patent Owner failed to demonstrate that the identified claim limitation was adequately supported in the 812 application or that adequate disclosure may be found in each application in the priority chain leading to the 812 application and thus claims 8 11 13 and 14 of the 641 patent are not entitled to a priority date earlier than the November 9 2012 filing date of App No 13 Inter Partes Review United States Patent No 8 532 641 13 673 391 Ex 1323 at 8 10 In so deciding the Board rejected Patent Owner s argument that the following passage in the 641 patent discloses the limitations Ex 1301 at 12 25 40 Ex 1318 at 619 812 App at 28 Ex 1319 at 381
72. ns network at a hybrid of wireless communication rates in implementing Hu s cell phone See VI C 5 641 Claims U S Pat Pub No US 2006 0262103 Hu 7 The system of claim As discussed above Hu in view of Ahn amp the 1 knowledge of POSITA Hu in view of Ahn amp Nokia or alternatively Hu in view of Ahn Nokia amp the knowledge of a POSITA discloses claim 1 7 A further Galensky discloses this element data is stored in the comprising a buffer buffer Ex 1309 at 2 29 37 See also id at Abstract 2 29 memory located within 47 5 66 6 27 Ex 1303 at 0049 0060 Ex 1333 11109 the enclosure 111 7 B wherein the Hu in view of Galensky or alternatively Hu in view of wireless telephone Ahn amp Galensky discloses this element As discussed device is operable to above with respect to Element 6 B Hu or receive media content alternatively Hu in view of Ahn discloses a wireless as a series of telephone device operable to receive media content component parts Galensky discloses Successive blocks of data from the desired further wherein the multimedia file are streamed over the wireless telecommunications wireless telephone network the wireless device receives the blocks of data over the device is operable to wireless telecommunications network at a first transmission rate until receive a component a minimum threshold level of data is stored in the buffer and at a part of the me
73. omprises a softwate application further wherein the portable electronic device is configured to accept an upgrade for the softwate application that is communicated to the portable electronic device via a softwate upgrading wireless communication U S Pat Pub No US 2006 0262103 Hu As discussed above Hu in view of Ahn amp the knowledge of a POSITA Hu in view of Ahn amp Nokia or alternatively Hu in view of Ahn Nokia amp the knowledge of a POSITA discloses claim 9 Hu in view of Nokia discloses this element Hu discloses Internet connection operations include d composing a document using document composing software on the cellular telephone e surfing the Internet reading news downloading music receiving dynamic topically focused messages and viewing the messages or f playing online games Ex 1303 at CL 25 see also 2d at 0049 Ex 1304 at 68 Nokia discloses The Nokia 90007 Communicator employs the digital data transmission capabilities of the GSM network to establish connections with remote computers Wireless data connections can be made from most locations where your mobile phone operates Ex 1308B at 16 3 Downloading add on software The WWW application can be used to install software applications on your communicator Go to the WWW site where the add on software package exists Select the hypertext link that points to the add on software package Press Retrieve
74. ponse to selection of a menu item on the audio system Ex 1301 at 10 21 31 Ex 1318 at 614 15 812 App at 23 24 24 4 Ex 1319 at 377 755 App at 16 0053 With a display device for displaying a Website having selectable information electronic device 300 may allow a user to select audio information via a user interface and recetve the selected information via wireless communication thereby providing a customizable WebRadio device for the user In another embodiment electronic device 300 may be a modular device configured to be coupled to for example a portion of a cars interior For example electronic device 300 may be mounted to a portion of a cat s console thereby providing a removably coupled electronic device operable to 20 Inter Partes Review United States Patent No 8 532 641 wirelessly receive selected audio information This disclosure does not describe sending information about audio content from a wireless telephone to a recipient device or communicating audio content from a wireless telephone to a recipient device in response to selection of a menu item on the recipient device display At best this disclosure describes wirelessly receiving audio from a website at a portable electronic device Ex 1301 at 10 31 57 Ex 1318 at 615 812 App at 24 4 32 Ex 1319 at 377 378 755 App at 16 0053 0055 As a removable device electronic device 300 may also be coupled to a home audio sy
75. r iPod Id at 0039 When the media player is first plugged in an initializing routine executes to cause the song database 62 to be populated with data reflecting the contents of the media player Next the controller logic module can send a control command to the media player requesting a data dump of the player s playlist information including artist album song genre and other metadata used for content selection If available the data that is pumped can include the media player s internal content reference identifiers Jor accessing the content described by the metadata The controller logic module 58 routes this information to the selection server 60 which loads it graphical menu 2nto the song database 62 Id at 0040 I t zs presently preferred to 44 Inter Partes Review United States Patent No 8 532 641 641 Claims U S Pat Pub No US 2006 0262103 Hu comprising a selectable menu item associated with the available media content initiate a data dump to obtain a mirror of the metadata on the portable media player Id at 0041 The operations described above for interacting nith a media player can be extended to interaction with a cellular telephone Id at 0046 T be cell phone can have a media player function and can even store video media that can be selected and played using a console display or heads up display of the vehicle Id at 0060 See also d
76. rd stated that gliven that the Ohmura system already includes a separate cellular telephone Petitioner has not explained sufficiently why one of ordinary skill in the art would have found it beneficial or advantageous to modify Ohmura s portable audio apparatus to include Internet connectivity over a cellular connection Id While respectfully disagreeing with the Board s decision not to institute a review of claims 1 3 5 7 9 10 and 12 in IPR2014 01184 Petitioners rather than requesting reconsideration now file this separate Petition requesting IPR of claims 1 3 5 7 9 10 and 12 as obvious based on an alternative prior art reference Hu in view of Ahn Nokia and or Galensky These grounds presenting new art Hu not known to Petitioners before the filing of their original petition and located instead after the Board s institution decision in IPR2014 01184 raise new questions and address the concerns perceived by the Board in the earlier petition with the benefit of the fuller explanation and consideration that a separate petition affords Petitioners Inter Partes Review United States Patent No 8 532 641 note that the Director pursuant to Rule 325 c may determine at the proper time that merger of the foregoing proceedings in particular IPR2014 01184 with this Petition may be appropriate and as noted below Petitioners are concurrently filing a motion for joinder of these proceedings The Hu refer
77. recipient device via a localized communications signaling network in response to a selection of a selectable menu item presented on a recipient device As discussed above Hu discloses this element See supra discussion of Elements 1 C 1 G amp 1 H in this Section Ex 1333 128 8 D wherein the wireless communication module is compliant with a Bluetooth standatd As discussed above Hu discloses this element See supra discussion of claim 2 in this Section Ex 1333 129 8 E 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 As discussed above Hu in view of Ahn discloses this element See supra discussion of claim 1 H in this Section Ex 1333 4130 To the extent that the preamble is considered a limitation of Claim 8 Hu discloses this element as shown in the chart above With respect to Element 8 A a POSITA would understand that a cell phone with a media player function and an mp3 player on the cell phone necessarily 56 Inter Partes Review United States Patent No 8 532 641 and thus inherently discloses a processor operable to play an audio file that represents a song Ex 1333 122 To the extent it is argued that further disclosure is required a processor operable to play an audio file that represents a song was well kno
78. recognizing receipt of a phone call The references cited herein including Hu Ahn and Nokia expressly confirm that these conventional features of a wireless phone were well known In fact these features were all found to be nberent in a Inter Partes Review United States Patent No 8 532 641 witeless phone during prosecution of the 641 patent The dependent claims of the 641 patent add limitations that were similarly well known in the art such as email voice mail an Internet browser a hands free mode Bluetooth compatibility wireless receipt of a software application upgrade and the ability to receive data at two communication rates based at least partially upon an amount of data located in buffer memory See eg Ex 1302 at 413 18 Ex 1311 at 500 Ex 1312 Ex 1313 Ex 1314 Ex 1316 These limitations are likewise expressly disclosed in the Hu Ahn Nokia and Galensky references cited herein Each and every element of the Challenged Claims has been disclosed in the prior art and the Challenged Claims are nothing more than a routine and predictable combination of these well known elements Furthermore the Challenged Claims are not entitled to z er alia claim priority to the March 28 2000 filing date of the 812 application or the September 23 2004 filing date of the 755 application because there is no disclosure of the alleged invention in either of these applications Thus Petitioners respectfully requ
79. rising module can support audio video playback of media content stored in the cellular telephone 1d at 0030 See also Ex 1303 at 0028 0045 0049 Ex 1333 11118 119 S A a portable electronic device having a processor operable to play an audio file that represents a song Hu or alternatively Hu in view of the knowledge of a POSITA discloses this element play table 64 provides a st of media selections or songs to play Ex 1303 at 0039 M ultimedia operations can include a control mp3 player on cell phone Id at 0049 T he cel phone can have a media player function Id at 0060 See also id at 0030 0031 0040 Ex 1333 44120 1223 8 B a memory communicatively coupled to the processor and configured to store a plurality of audio files and Hu or alternatively Hu in view of the knowledge of a POSITA discloses this element The wireless communication module can support audio video playback of media content stored in the cellular telephone Ex 1303 at 0030 T he cellular telephone and the media play can store media content that may be played back using the vehicle audio system Id at 0031 see also id at 0049 0060 Ex 1333 91124 127 display 8 C 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
80. rnal phonebook 27 containing phone numbers stored by the user in the cellular telephone memory Ex 1303 at 0029 See also id at 0009 0030 0031 0037 Ex 1333 9961 62 1 G a collection of instructions stored in the memoty 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 Hu discloses this element The visual display may be used to present menu navigation choices to the user where navigation is performed using the touchpad T he visual display can also function as a media viewer to display media content stored in the cellular telephone Ex 1303 at 0009 T he operation functionality of the touchpad can be user configurable P eople who are generally familiar with an interface of a particular media player can select to cause the touchpad to mimic the interface of that media player Id at 0024 The selection table 66 is used to provide a list of items that the user can select from during the entertainment selection process The play table 64 provides a list of media selections or songs to play The play table provides instructions that are ultimately used to control which media content items e g songs are requested for playback by the media playe
81. ssued an Office Action rejecting prosecution claims 8 11 and 13 20 under 102 prosecution claims 1 7 and 12 under 103 and prosecution claims 1 20 for double patenting Ex 1302 at 411 421 The Examiner also noted that many of the claim elements were inherent in the art eg a display housing enclosure wireless communication module rechargeable power 10 Inter Partes Review United States Patent No 8 532 641 supply physical interface memory receiving a wireless upgrade for a software application email voice mail Internet browser ld at 413 18 On May 1 2013 Applicants amended the specification and claims prosecution claim 1 issued as claim 1 was amended to add 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 and prosecution claim 8 issued as claim 8 was amended to add in response to a selection of a selectable menu item presented on a recipient device display Id at 245 258 The Examiner then issued a Notice of Allowance on June 3 2013 and the 641 patent issued on September 10 2013 V 641 PATENT CLAIMS 1 3 5 7 9 10 AND 12 ARE NOT ENTITLED TO CLAIM PRIORITY TO THE MARCH 28 2000 FILING DATE OF THE 812 APPLICATION AND THE SEPTEMBER 23 2004 FILIN
82. stem a portable radio system or other systems thereby providing a versatile electronic device operable to receive wirelessly communicated selected audio information In another embodiment electronic device 300 may be operable as a PDA and or a cellular phone that may be mounted to an automobile s console Electronic device 300 may then integrate with a user s automobile to provide an all encompassing communications device For example electronic device 300 configured as a PDA and cellular phone may allow for communication with a user s email account voice mail account the Internet as well as allowing for the receipt of selected audio information via wireless communication Electronic device 300 may be operable in a hands free mode allowing a user to maintain safe driving fundamentals During use electronic device 300 may be processing selective audio information for communicating with an automobile audio system and may further be operating to receive incoming cellular calls 21 Inter Partes Review United States Patent No 8 532 641 Electronic device 300 may be set up by the user to pause the music being played and allow the received cellular call to be communicated either via an independent speaker or utilizing the automobiles audio system Additionally electronic device 300 may be operable to adjust the listening level of an automobile s audio system it may play received voice mail messages allow a user to view the Int
83. t 6 25 7 18 B Level of Ordinary Skill in the Art amp State of the Art A POSITA is a person of ordinary creativity not an automaton KSR Int Co v Teleflex Inc 550 U S 398 421 2007 I n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle Id at 420 More specifically the level of ordinary skill in the art relating to the technology of the 641 patent as of January 16 2008 would have been a person with a Bachelor s degree in Electrical Engineering or Computer Science or an equivalent field and approximately 1 2 years of expetience in working with client server architectures Internet transmission protocols wireless transmission protocols Internet browser programming and streaming media transmission Ex 1333 121 C Ground 1 Obvious over Hu in view of Ahn amp the knowledge of a POSITA Claims 1 3 5 9 Ground 2 Obvious over Hu in view of Ahn amp Nokia Claims 1 3 5 9 10 Ground 3 Obvious over Hu in 30 Inter Partes Review United States Patent No 8 532 641 view of Ahn Nokia amp the knowledge of a POSITA Claims 1 3 5 9 10 Ground 4 Obvious over Hu in view of Ahn Galensky amp the knowledge of a POSITA Claims 7 12 Ground 5 Obvious over Hu in view of Ahn Galensky amp Nokia Claims 6 7 12 Ground 6 Obvious over Hu in view of Ahn Galensky Nokia amp the knowledge of a POSITA Claims 6 7 12 Ground 7
84. t as shown in the chart above With respect to Element 1 B a POSITA would have understood that the cell phone in Hu necessarily and thus inherently includes housing and an enclosure Ex 1333 440 Cell phones necessarily include housing that encases the inner components of the device in an enclosure to allow for practical use of the device and to protect the inner components from damage Id To the extent it is argued that further disclosure is required these elements were well known in the art prior to January 16 2008 see eg Ex 1307 Ex 1308 Ex 1308B at Fig 1 2 Ex 1330 at 1 2 11 12 Ex 1331 and it would have been obvious based on the knowledge of a POSITA to include these elements in Hu s phone to advantageously protect the inner components of the device Ex 1333 941 Further it would have been clear to a POSITA that such a combination would work and provide the expected functionality Id To the extent it is argued that further disclosure is required Nokia discloses Element 1 B A POSITA would have been motivated and found it obvious and straightforward to use a housing and enclosure as disclosed in Nokia in implementing Hu s cell phone See VI C 5 With respect to Element 1 C a POSITA would have known that a cell phone with wireless communication capability as disclosed in Hu necessarily and thus inherently includes the wireless communication module with the enclosure Ex 1333 4 45 To the extent it is argued that
85. tc and other functions features or information associated with audio information Radio dial 412 may also be displayed as a separate user interface and in some embodiments does not require a 23 Inter Partes Review United States Patent No 8 532 641 browsing environment to view radio dial 412 For example an electronic device such as a PDA having a display may graphically present radio dial 412 to a user One example may be using electronic device in association with an automobile audio system Electronic device may display radio dial 412 and may allow a user to navigate modify select adjust volume access daytimer access phone lists etc or perform other functions while the electronic device is used in association with an automobile sound system Therefore radio dial 412 may be operable as an application for use with several different types of electronic devices Le computer systems portable computing devices cellular phones etc operable to display radio dial 412 and in come sic embodiments may be wirelessly communicated to an electronic device As discussed above the Board has already correctly determined in IPR2014 01184 that this portion of the specification describes the ability to select audio eec information using a graphical menu presented on the portable electronic device not on the automobile audio system or recipient device Ex 1323 at 10 Further this passage does not describe send
86. ted display of the different electronic device Id at 10 The Board found unpersuasive Affinity s argument that this feature was disclosed in 228 patent Fig 4 and 9 52 56 641 patent Fig 4 10 66 11 3 Id at 10 11 The Board agreed with the Examiner that there was no disclosure to support this claimed element citing the Examiner s findings that t he user interface of figure 4 is by all accounts embodied only in the portable audio that is connected to the automobile sound system rather than both the 15 Inter Partes Review United States Patent No 8 532 641 portable player and the automobile sound system and t here is no teaching either explicitly or implicitly that the automobile sound system or any other different electronic device with which the portable audio player communicates is capable of receiving audio information from the portable device and then displaying soft buttons comprising a name on an associated display as claimed Id During prosecution of the 641 patent on May 1 2013 Applicants filed a Reply to Office Action to amend the prosecution claims to include the recited claim limitations that Petitioners submit are not disclosed in the 812 and 755 applications Ex 1302 at 250 252 In their May 1 2013 Reply Applicants asserted that the 641 patent claims were entitled to the March 28 2000 priority date and cited 641 patent 6 37 39 10 21 31 10 41 57 12 14 40 Figs
87. tent No 7 634 228 Ex 1316 Specification of the Bluetooth System v1 0 B Vols 1 amp 2 1999 Telefonaktiebolaget LM Ericsson International Business Machines Corporation Intel Corporation Nokia Corporation Toshiba Corporation Ex 1317 February 12 2013 Decision on Institution of Covered Business Method Review in CBM2012 00003 Ex 1318 U S Patent No 7 187 947 File History Ex 1319 USS Patent No 7 324 833 File History Ex 1320 U S Patent No 7 778 595 File History Ex 1321 Control No 95 001 263 Reexamination History from December 6 2011 until April 11 2014 Inter Partes Reexamination of U S Patent No 7 486 926 Ex 1322 IBM Dictionary of Computing Edited by George McDaniel McGraw Hill Inc 1994 Ex 1325 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01184 Inter Partes Review of U S Patent No 8 532 641 Ex 1324 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01181 Inter Partes Review of U S Patent No 8 532 641 Ex 1325 January 30 2015 Decision on Institution of Inter Partes Review in IPR2014 01182 Inter Partes Review of U S Patent No 8 532 641 Ex 1326 Nokia CARK60 Installation Guide dated August 1996 Ex 1327 U S Patent No 6 633 932 Bork Ex 1328 Nokia 90001 and 9000il Product Information available at http tech insider org mobile research 1997 0910 b html dated 1998 Ex 1529 U S Patent No 6 211 649 Matsuda Ex 1330 Motomanual
88. the phone while in a vehicle eg Exs 1326 at 6 1328 Ex 1333 959 Thus a user could conveniently recharge the batteries of the phone while driving which also provides the ability to recharge when no other power source is available Id Implementing Hu s cell phone with Nokia s teachings of a physical interface would also allow a user to advantageously communicate data with a PC and recharge the battery of the phone via a single interface on the phone Id In view of the foregoing a POSITA would have been motivated to look to Nokia s teachings to add a rechargeable battery to Hu s cell phone and to add the capability of recharging the battery via the physical interface on Hu s phone Id Moreover both Hu and Nokia disclose a cell phone that allows a user to surf the Internet E g Ex 1303 at 0049 Ex 1308B at 7 13 Ex 1333 998 Thus a POSITA would have been motivated to look to Nokia s teachings to provide Hu s cell phone with a web browset which was well known in the art and desirable to provide a user friendly platform to easily and efficiently surf the Internet Ex 1333 498 A POSITA would have also looked to Nokia s express teachings to provide Hu s cell phone with a display that makes up more than half of the front surface which was 40 Inter Partes Review United States Patent No 8 532 641 also well known in the art and desirable to provide a larger screen for viewing menus and selecting audio files as taught by Hu and
89. tis 11 THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE 541 PATENTE RE ee utes doti eint eiat 28 A Claim Construction Under 42 104b 3 ridad 29 B Level of Ordinary Skill in the Art amp State of the rt ente 30 C Ground 1 Obvious over Hu in view of Ahn amp the knowledge of a POSITA Claims 1 3 5 9 Ground 2 Obvious over Hu in view of Ahn amp Nokia Claims 1 3 5 9 10 Ground 3 Obvious over Hu in view of Ahn Nokia amp the knowledge of a POSITA Claims 1 3 5 9 10 Ground 4 Obvious over Hu in view of Ahn Galensky amp the knowledge of a POSITA Claims 7 12 Ground 5 Obvious over Hu in view of Ahn Galensky amp Nokia Claims 6 7 12 Ground 6 Obvious over Hu in view of Ahn Galensky Nokia amp the knowledge of a POSITA Claims 6 7 12 Ground 7 Obvious over Hu in view of Ahn amp Galensky Claim 12 30 Overview of U S Patent Pub No 2006 0262103 Hu 33 Overview of U S Patent Pub No 2004 0214525 Ahn 34 Overview of Nokia 9000 9000i Owners Manual Nokia 35 Overview of U S Pat No 6 845 398 Galensky 95 Motivation to Combine Hu with Ahn Nokia amp Galensky 36 Claims 1 3 5 7 9 10 amp 12 Are Obvious Over Grounds 1 7 42 SE IE camo M ob des Inter Partes Review United States Patent No 8 532 641 VIE CONCESIONES
90. which depend upon claim 1 of the 641 patent which require communicatling a collection of 14 Inter Partes Review United States Patent No 8 532 641 information about media content available from the wireless telephone device o 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 As the Board correctly found zd at 9 10 there is no disclosure in the passage identified by Patent Owner that the electronic device can send a collection of information to a recipient device so that the recipient device can use the collection of information to generate a graphical menu comprising a selectable menu item associated with available media content Petitioners further submit as explained in detail below that there is no disclosure of this limitation at all in at least the 812 and 755 applications Moreover during reexamination of the related 228 patent the Board found that a similar claim limitation was not supported by the 812 application Ex 1315 at 10 11 The Board specifically stated that we are unpersuaded by Patent Owner that the original 812 application Specification supports communicating at least some of the collection from the portable hand held device to a different electronic device in order to allow a user to view a soft button comprising the name on an associa
91. wn in the art see eg Ex 1332 at 1 67 2 14 4 7 12 and it would have been obvious to a POSITA to include this element in implementing Hu s cell phone to perform the media player functions described in Hu Ex 1333 9123 With respect to Element 8 B a POSITA would understand that a cell phone with a media player function for playing media content stored on the phone necessarily and thus inherently discloses a memory communicatively coupled to the processor and configured to store a plurality of audio files Ex 1333 4126 To the extent it is argued that further disclosure is required this element was well known in the art E g Ex 1332 at 1 67 2 14 3 41 48 4 7 12 4 25 28 and it would have been obvious to a POSITA to include this element in implementing Hu s cell phone to perform the media storing and playing functions described in Hu Ex 1333 4127 641 Claims U S Pat Pub No US 2006 0262103 Hu 9 Preamble The system of claim As discussed above Hu in view of Ahn or 8 wherein alternatively Hu in view of Ahn amp the knowledge of a POSITA discloses claim 8 9 A the portable electronic As discussed above Hu discloses this device is operable as a wireless element See supra discussion of claim 1 A telephone device and has in this Section Ex 1333 131 9 B 1 a display at least partially As discussed above Hu alone Hu in defining a front surface of the device 2 view of the knowle

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