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`IPR2016-00418, Paper No. 47
`March 07, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION, HYUNDAI MOTOR
`COMPANY LTD., HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA, LLC,
`KIA MOTORS CORPORATION, KIA MOTORS AMERICA,
`INC., KIA MOTORS MANUFACTURING GEORGIA, INC.,
`NISSAN NORTH AMERICA, INC., NISSAN MOTOR CO.,
`LTD., and AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00418
`Patent 8,155,342 B2
`____________
`
`Held: February 2, 2017
`____________
`
`trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`BEFORE: JAMESON LEE, MIRIAM L. QUINN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`February 2, 2017, commencing at 10:30 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
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`AMERICAN HONDA MOTOR CO., INC.
`JOSEPH MELNIK, ESQUIRE
`Jones Day
`1755 Embarcadero Road
`Palo Alto, California 94303
`
`VINCENT J. RUBINO, III, ESQUIRE
`JOHN RUBINO, ESQUIRE
`Brown Rudnick, LLP
`Seven Times Square
`New York, New York 10036
`
`
`
`
`
` 2
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`NISSAN NORTH AMERICA, INC.
`DAVID TARNOFF, ESQUIRE
`Global IP Counselors
`1233 Twentieth Street, NW
`Suite 600
`Washington, DC 20036
`
`TOYOTA MOTOR CORPORATION
`FADI KIBLAWI, ESQUIRE
`BRIAN SHELTON, ESQUIRE
`Sughrue Mion, PLLC
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`
`ON BEHALF OF PATENT OWNER:
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE LEE: Thank you and please be seated. Judge
`Quinn from Dallas will be presiding in today's oral argument.
`JUDGE QUINN: Can you hear me?
`MR. MELNIK: Yes.
`JUDGE LEE: Yes.
`JUDGE QUINN: Thank you for responding. We are
`gathered here to hear the oral argument in an inter partes review
`proceeding docketed as IPR2016-418, which was filed by Toyota
`Motor Corporation regarding patent number 8,155,342, whose
`patent owner of record is Blitzsafe Texas, LLC.
`We are hearing a lot of feedback from the hearing room,
`I think. Is it over there?
`Okay. My name is Judge Miriam Quinn. I'm presiding
`over this proceeding being videocast to the hearing room in the
`Madison building where Judge Jameson Lee is present.
`Appearing also remotely is Judge Kerry Begley, who you see in
`the video screens as well.
`Turning now to the parties, in this proceeding, we have
`joined as petitioner in addition to Toyota Motor Corporation,
`various entities, including Hyundai Motor Company, Kia Motors
`Corporation, Nissan North America and American Honda Motor,
`among others. Those parties filed IPRs which now have been
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`terminated in favor of joinder with this proceeding, and those
`IPRs were IPR2016-1533, IPR2016-1557 and IPR2016-1560.
`Given the announcement of various agreements for
`settlement, we modified our oral argument order to allow counsel
`for American Honda to present the oral argument today on behalf
`of the petitioners. At this point, we would like counsel for
`petitioner to step to the podium and state its appearance for the
`record, of course American Honda's counsel.
`MR. MELNIK: Thank you, Your Honor. Joseph
`Melnik for American Honda Motor Company on behalf of the
`petitioners.
`JUDGE QUINN: Is anybody else with you on behalf of
`American Honda?
`MR. MELNIK: No, Your Honor.
`JUDGE QUINN: Okay. Are any other counsel for
`other entities that we mentioned present in the courtroom as well?
`MR. KIBLAWI: Yes, Your Honor. Fadi Kiblawi for
`the Toyota petitioner. I'm joined with Brian Shelton as well for
`the Toyota petitioner. We are backup counsel for the Toyota
`petitioner.
`JUDGE QUINN: Thank you.
`MR. TARNOFF: Your Honor, I am David Tarnoff and
`I represent Nissan North America, petitioner.
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`JUDGE QUINN: Thank you, Mr. Tarnoff. Anybody
`else? Okay. Let's see, Mr. Melnik, before I turn to patent owner,
`have your demonstratives been provided to the court reporter?
`MR. MELNIK: Yes, Your Honor, they have.
`JUDGE QUINN: Okay. Also, you will have
`40 minutes total for your argument time. Before we start with
`your argument time, how much time would you like to reserve for
`rebuttal?
`MR. MELNIK: Ten minutes, Your Honor.
`JUDGE QUINN: Great. Thank you.
`Let's turn to patent owner. Could patent owner's
`counsel please state its appearance for the record?
`MR. RUBINO: Good morning, Your Honor. Vincent
`Rubino from the law firm of Brown Rudnick on behalf of patent
`owner, Blitzsafe Texas, LLC. And also with me from Brown
`Rudnick to help me with the slides is another associate from our
`office, John Rubino.
`JUDGE QUINN: Thank you. Have your slides been
`provided to the court reporter?
`MR. RUBINO: We apologize, Your Honor, we
`actually left our slides in Texas last night.
`JUDGE QUINN: Okay. So there are no copies for the
`court reporter right now?
`MR. RUBINO: Not at the present moment, no.
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`JUDGE QUINN: Will you be providing them at the
`end of the proceeding?
`MR. RUBINO: We are going to attempt to get them at
`the end of the proceeding, yes.
`JUDGE QUINN: Okay. I will leave up to you
`following up with the court reporter. It's very important that she
`gets copies.
`MR. RUBINO: Understood.
`JUDGE QUINN: And we understand that although
`petitioner has the ultimate burden in this case, we see that the
`response raised some issues on the priority of invention. And on
`those issues patent owner has the burden of production. So on
`that issue alone, we'll give you the option to reserve some time
`for rebuttal. You don't have to tell us right now. We will decide
`that when it's your turn and you address the issue then.
`MR. RUBINO: Understood. Thank you, Your Honor.
`JUDGE QUINN: Okay. All right. Let's start with
`petitioner. Now, Mr. Melnik, I'm going to be keeping track here
`with the timer on my phone. I will let you know when we are
`close or you have run out of time.
`MR. MELNIK: Thank you, Your Honor.
`JUDGE QUINN: Also, please let me remind you that
`because we are remote, we don't see what's on the screen at the
`courtroom. So it's very important if you can tell us which slide
`are you on. We have them electronically, but in order to follow
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`along, we just need to know what slide number you are moving
`to.
`
`MR. MELNIK: Understood. Thank you.
`JUDGE QUINN: You are welcome. You may proceed
`whenever you are ready.
`MR. MELNIK: Thank you, Your Honor. So the patent
`we are here to discuss today is the U.S. patent number 8,155,342.
`It purports to be directed to a multimedia device integration
`system that provides wireless integration between a car
`audio/video system and a portable media device to enable audio
`played on the portable media device to be delivered over a
`wireless interface to the car stereo and ultimately heard on the car
`speakers. The claimed inventions also purport to cover controls
`of the portable media device using the car stereo controls.
`Now, each of the disclosed and claimed embodiments
`are a combination of well-known components that are combined
`in accordance with known methods to provide predictable results.
`Moving to the second slide, the petition was filed in
`light of the well-known use of components and predictable
`results. The petition was filed to invoke this Board's authority to
`conduct an IPR proceeding on 39 claims of the '342 patent on
`three separate grounds.
`Now, each of these grounds are substantially based
`upon the Clayton reference, which is Exhibit 1002 in the
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`Patent 8,155,342 B2
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`materials submitted to the Board and is a 2006 patent publication
`with a 102(e) provisional filing date of February 11, 2005.
`Now, the Clayton reference discloses -- prior to the
`earliest filing date of the subject matter in the '342 patent claims,
`discloses an audio/video integration system, provides for wireless
`integration, portable media device with car stereo. As shown in
`the petition, in the reply and in the supporting declarations
`provided by our expert, Dr. Thomas Matheson, the relevant
`claims are rendered obvious by these three grounds. Also as
`shown by Dr. Matheson, a person having ordinary skill in the art
`would find it obvious to modify the teachings of Clayton to
`further incorporate the teachings of the Berry reference which is
`Exhibit 1004, the Marlowe reference which is Exhibit 1005, and
`the Gioscia reference which is Exhibit 1006. In fact,
`Dr. Matheson's evidence in this regard is uncontroverted.
`Moving to slide 3, very quickly, we see the claims that
`are at issue here are all represented by claim 49. This is a
`representative claim. The Board recognized it is a representative
`claim in its institution decision. And it highlights the key issue
`that we are going to discuss today, which is namely the presence
`of an integration subsystem that -- and we see highlighted here in
`red at the end that receives audio generated by the portable device
`over the wireless communication link for playing on the
`audio/video system.
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`Other independent claims at issue here are claim 73,
`claim 97 and claim 120. But again, the material issue is reflected
`in this highlighted language.
`Moving to slide 4, there are two key issues that we are
`going to discuss today. First is whether the Clayton reference, in
`fact, teaches an integration subsystem that receives audio
`generated by a portable device, that limitation that we saw at the
`end of claim 49. The second issue is whether, as Your Honor
`highlighted earlier, whether the patent owner can swear behind
`the Clayton reference and rely upon drafts of an earlier filed
`application to disqualify Clayton as prior art.
`The materials presented --
`JUDGE QUINN: Counsel, there is one issue also here
`that is, I guess, subsumed within this priority battle, and that is
`whether you can claim, with Clayton, priority back with this
`application to the provisional application. So there's some
`question about that. And my question to you is, are you aware of
`the Dynamic Drinkware case?
`MR. MELNIK: I am, Your Honor.
`JUDGE QUINN: And can you explain to us why
`Dynamic Drinkware applies or doesn't apply to the Clayton
`situation?
`MR. MELNIK: Yes, Your Honor. In fact, our expert,
`Dr. Matheson, addressed the issue specifically. As Your Honor,
`I'm sure, is aware, Dynamic Drinkware requires that at least one
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`of the claims in the Clayton patent application, the publication, is
`supported by the disclosure of the provisional application. And in
`fact, it really is just one claim. And there's been some
`proceedings of the Board since the Dynamic Drinkware matter
`that made it clear that one claim, finding support of one claim is
`enough, and it makes sense given the state of the law.
`Dr. Matheson made clear paragraph 8 of his declaration
`in the reply, submitted as part of the reply that his analysis as a
`person of ordinary skill in the art demonstrates that Figure 5, as
`shown in the provisional application, provides support for at least
`claim 15 in the 2006 publication. And in fact, the discussion of
`the Clayton provisional -- in the Clayton provisional of Figure 15
`makes clear that -- I'm sorry, makes clear that that support exists,
`including the presence of unencoded audio being sent from the
`portable media device to the interface associated with the car
`stereo.
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`So as a person of ordinary skill in the art, Dr. Matheson
`has addressed this issue and has identified support for at least that
`claim. In fact, there's support for other claims, but at least that
`claim, which satisfies the Dynamic Drinkware requirement.
`JUDGE LEE: Mr. Melnik, you said this is in the reply
`declaration?
`MR. MELNIK: Yes, sir.
`JUDGE LEE: So replies are supposed to be responding
`to points made in the patent owner response. So to what point
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`was your expert responding to when he's discussing the Dynamic
`Drinkware issue? Did the patent owner say, hey, you didn't
`account for Dynamic Drinkware or were they silent?
`MR. MELNIK: In the response, the patent owner raised
`the issue of swearing behind the Clayton reference. Prior to these
`IPR proceedings, the patent owner had taken the position that the
`priority date for the '342 claims was the date of the '847
`application, which is the 2006 date. They had taken that position
`expressly in the District Court proceedings and did not take any
`contrary positions in these proceedings. In the response they took
`the position that they were entitled to an earlier date.
`JUDGE LEE: So you didn't need the earlier date of the
`reference until they said they wanted to get earlier than that date?
`MR. MELNIK: That's correct, Your Honor.
`JUDGE LEE: Thank you.
`JUDGE BEGLEY: But you had made the argument
`that Clayton was entitled to priority back to the provisional in
`your petition. You just didn't make the specific point about
`support for a particular claim, right?
`MR. MELNIK: We had made the argument that the
`disclosure in the provisional included subject matter that was
`relevant to the claims in the '342 patent, but we did not need to
`establish priority back to the provisional filing date.
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`JUDGE QUINN: So where in the record, as it stands
`today, could we find a claim comparison from Clayton to the
`specification of the provisional application?
`MR. MELNIK: What is in the record is Dr. Matheson's
`declaration where at paragraph 8 of his declaration he identifies
`Figure 5 and identifies that as disclosing all of the subject matter,
`according to a person of ordinary skill in the art, that would
`support the limitations of claim 15 of the published application of
`the 2006 Clayton publication. Now, that claim of the Clayton
`application is a fairly broad claim requiring two physical
`components, which are clearly identified on that figure that was
`identified by Dr. Matheson in his declaration.
`JUDGE QUINN: So have you described this
`comparison in your brief in any detail? Because I read your reply
`and I didn't see any charts comparing the Clayton claim to the
`provisional subject matter.
`MR. MELNIK: Given the breadth of the claim, we did
`not believe that providing detailed charts were necessary because
`again, as Dr. Matheson made clear, that subject matter was
`plainly there as shown in the relevant figures of the provisional
`given the breadth of the claim 15 of the 2006 publication. So
`charts were not prepared, but Dr. Matheson provided his view as
`a person of ordinary skill in the art and there hasn't been any
`contrary evidence provided by the patent owner to that
`declaration.
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`JUDGE QUINN: All I see in Exhibit 1027, right, that's
`the reply declaration, all I see in that reply declaration is one
`paragraph that has three sentences, one of which says Figure 5 of
`the Clayton provisional application provides support for at least
`claim 15 and then cites to Clayton Figure 5. That's all we have.
`MR. MELNIK: Which is what Dynamic Drinkware
`requires that a person of ordinary skill would find support. And
`Dr. Matheson found that support.
`JUDGE QUINN: But there is no analysis supporting
`that conclusion. This is just a conclusion as far as I'm concerned
`when I read that. Is there a chart anywhere?
`MR. MELNIK: There is not a chart per se. There is
`simply that analysis that Dr. Matheson provided at paragraph 8,
`identifying the support there.
`JUDGE QUINN: Okay. So I got your contention.
`That's all we have. It's not like we can go look for it somewhere
`else.
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`MR. MELNIK: It's not somewhere else. That's where
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`it is.
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`JUDGE QUINN: Thank you.
`JUDGE LEE: Apart from that, though, you keep saying
`it's Dr. Matheson's declaration. How would we know to look
`there? It seems to me the reply has to say this is the issue and on
`that issue, please see our expert testimony. We are reading your
`reply and there's not any inkling that you are raising the issue of
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`Dynamic Drinkware and pointing us to where in the record is the
`evidence in support of that.
`MR. MELNIK: The issue -- understood, Your Honor.
`The issue addressed in the reply is the fact that the '667
`application and the drafts of the '667 application do not provide
`the written description support that's required. And therefore, we
`really don't even need to get back to the provisional date because
`they can't get back to the '667 application.
`JUDGE LEE: But you might lose on that point. So
`where is the text that says to the extent that we need the earlier
`date for the reference, the Dynamic Drinkware issue is there and
`we account for that as follows, and we may not explain it here,
`but look at our testimony there?
`MR. MELNIK: So we don't come right out and provide
`a detailed analysis of Dynamic Drinkware in the reply.
`JUDGE LEE: Not just any detail. Any analysis or any
`reference to it—I don't see anything here. I don't even know that
`it's an issue.
`MR. MELNIK: We were responding to the issues
`addressed in the response, which was that there was support
`there. Again, we didn't believe we needed to even get back past
`the provisional filing or to the provisional filing date. So we
`simply tried to keep the reply focused on the issues raised in the
`response.
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`JUDGE LEE: Not just focused. It's exclusively
`directed to -- I'm saying I don't see anything here and you are
`confirming that you didn't raise the Dynamic Drinkware issue in
`your reply and you didn't point us to anything.
`MR. MELNIK: We provided the evidence to support
`the position that we took.
`JUDGE LEE: It's in the declaration. But what is in
`your reply that alerts us to the fact that you have support for it?
`MR. MELNIK: What is in the reply are the arguments
`that make clear that if, in fact, they were entitled to the '667 date,
`the provisional filing still predates that '667 date.
`JUDGE LEE: And that's it, right? There's no direct
`reference to the paragraphs in the reply declaration.
`MR. MELNIK: Then the evidentiary support was
`provided in the declaration.
`JUDGE LEE: You are not answering my question. Is
`there a reference to the specific paragraph and is there
`identification of the issue raised by Dynamic Drinkware?
`MR. MELNIK: I cannot point you standing here right
`now to the specific paragraph in the reply. And there was not an
`analysis done of Dynamic Drinkware in the reply.
`JUDGE LEE: Not just an analysis. Any reference or
`inkling or any notice to anybody that that's even an issue that you
`thought about?
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`MR. MELNIK: Yes. I think the statements in the reply
`that even if the '667 date were awarded to the patent owner, they
`still do not get behind the provisional filing date is the inkling, is
`the indication that, in fact, we are entitled to that date under the
`current state of the law, which is the Dynamic Drinkware line of
`cases.
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`JUDGE LEE: This is what you are saying now. Your
`reply is not raising the Dynamic Drinkware issue and accounting
`for it.
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`MR. MELNIK: It does implicitly, Your Honor, by
`advocating in favor of the provisional filing date.
`JUDGE LEE: Thank you.
`MR. MELNIK: Are there other questions on this issue
`or shall I move on?
`JUDGE QUINN: You can move on.
`MR. MELNIK: Alright. The two issues, again,
`whether or not Clayton teaches the existence of the limitation of
`audio generated by a portable device and whether, of course,
`Clayton is prior art, which is an issue we've now discussed.
`Turning to slide 5, this limitation, this limitation of
`audio generated by a portable device, this is not the only time the
`Board has considered this limitation in the '342 patent claims. In
`fact, the Board has recognized the importance of this limitation in
`related proceedings. And in fact, the patent owner has argued
`strenuously that this limitation means that there has to be data,
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`unencoded data sent from the portable device across the wireless
`link to the interface.
`I'll quickly move on to the next slide, on slide 6 this is
`what Clayton discloses. Clayton, in fact, in describing how a
`cellular phone would wirelessly send content to the interface
`provides a clear disclosure that the wirelessly transmitted content
`may be unencoded content.
`JUDGE BEGLEY: Counsel, you've stated that patent
`owner has argued that the audio needs to be unencoded, but what
`is your position on that?
`MR. MELNIK: On whether that's required by the
`
`claims?
`
`JUDGE BEGLEY: Yes.
`MR. MELNIK: For purposes of this IPR, we are
`applying that understanding of the audio generated by limitation.
`JUDGE BEGLEY: So you are accepting patent owner's
`position?
`MR. MELNIK: We are accepting that position. In fact,
`I believe that was the position articulated in the institution
`decision as well. And that has informed these proceedings and
`we have accepted and moved forward with that understanding
`since the institution decision.
`JUDGE BEGLEY: There was no construction of the
`term in this DI, correct?
`MR. MELNIK: I'm sorry?
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`JUDGE BEGLEY: The DI for -- sorry, the institution
`decision for this case, there was no explicit construction of the
`audio generated by the portable device limitation. So could you
`explain where you are getting the -- any construction by the
`Board of this term?
`MR. MELNIK: So this construction is the -- it was not
`explicitly construed, but when this limitation was applied in the
`institution decision, it was applied similarly to the way the Board
`had applied it in other proceedings, namely the 2016-00419
`proceeding where the Board denied institution based upon this
`limitation not being found in the Ohmura reference. And it
`applied similarly in other proceedings. So we had multiple
`applications of it, if not an explicit construction of it. So we
`applied that understanding going forward through the remainder
`of the proceedings.
`So again, paragraph 55, which we see here on slide 6,
`provides unmistakable disclosures from Clayton that --
`JUDGE QUINN: Sorry. Something just popped in my
`head here. So let's go back to that issue. Since we have not
`construed the phrase here, and there are assumptions perhaps by
`you or both sides that that is a correct interpretation of that
`phrase, okay, if we were to adopt that same interpretation in this
`case, there are no objections on your side for petitioner that that is
`an appropriate interpretation of that limitation of audio generated
`by the portable device.
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`MR. MELNIK: That the portable device must provide
`unencoded content over the wireless link to the interface?
`JUDGE QUINN: Correct.
`MR. MELNIK: Yeah, we would accept that
`construction for purposes of these proceedings, yes.
`JUDGE QUINN: Okay.
`JUDGE LEE: I have a question here. It seems to me
`you are reading the encoded or unencoded --
`JUDGE QUINN: Jameson, Judge Lee, I can't hear you.
`JUDGE LEE: Yes, I had to turn the mic off so it doesn't
`give you feedback.
`JUDGE QUINN: That's okay.
`JUDGE LEE: Here is my question. I'm looking at
`paragraph 55 of Clayton. And those two words are at the heart of
`the dispute, encoded or unencoded. It seems that the petitioner is
`reading those two words as though they modify the content that is
`going to be transmitted. Prior to even considering whether in the
`ordinary course of operation of the cell phone the phone is going
`to be encoding whatever it is going to try to transmit, is it even
`possible that those two words are actually talking about the
`normal operations of the cell phone where it may encode or not
`encode whatever it's transmitting and really has nothing to do
`with the music content at all?
`MR. MELNIK: It's certainly possible that that could
`happen. And I think Clayton anticipates and discloses certain
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`embodiments where there is encoding of the content either driven
`by the device or by protocols on the device. And for instance,
`and we can talk about this a little bit later, we have some slides on
`it, but we don't need to go to those right now. The A2DP
`protocols for bluetooth provide a level of encoding for the content
`that is independent of the content itself, right. Whether it's music,
`audio content, whether it's video, whether it's text, doesn't matter.
`That gets encoded in order to comply with that protocol. It's
`possible the phone as a device does the same thing.
`JUDGE LEE: Protocol-wise. It's got nothing to do
`with whether you want to hear the music. It's doing encoding
`that's necessary for the transmission.
`MR. MELNIK: That's disclosed. But also disclosed is
`the embodiment where that would not happen, right. So we are
`not taking the position that Clayton does not disclose that in
`certain embodiments there is encoding. There is. It discloses
`that, but not in all embodiments.
`JUDGE LEE: So let's say it doesn't do encoding.
`That's the embodiment you are focusing on, right?
`MR. MELNIK: Correct.
`JUDGE LEE: But that doesn't answer the question
`about whether the content that is being transmitted, whether that
`is still formatted in an MP3 format or has that already been
`decoded so that it's immediately playable on a speaker? So we
`are talking about two different kinds of encoding. One is to
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`decipher the MP3 content so that it's immediately playable as
`audio, and the other encoding is whatever a cell phone does in
`order to transmit signals according to a protocol. So I'm seeing
`two ways how that can be read. And you seem to just say, oh, it's
`unencoded and therefore, it meets the claim. But I don't think so.
`You have to say that it's unencoded for any protocol. But you
`have to account for whether the MP3 format has been decoded.
`MR. MELNIK: If I could, I would move to slide eight,
`which is an excerpt from Dr. Matheson's declaration where I
`believe he is addressing the point that you are making, Your
`Honor, which is that if there are MP3 files stored on the phone
`and a person of ordinary skill wanted to employ the embodiment
`disclosed by Clayton of transmitting unencoded content over the
`wireless link to the interface, Dr. Matheson addresses this and
`says a person of ordinary skill would understand that you decode
`that MP3 file and then you send the unencoded data, the
`unencoded content across the wireless link to the interface.
`JUDGE LEE: I see that's what he says, but the
`language in paragraph 55 is broader. We can't tell from the
`language in paragraph 55. That unencoded phrase may have
`something to do with decoding for protocol purposes rather than
`decoding the MP3 format.
`MR. MELNIK: Well, again, what a person of ordinary
`skill, according to Dr. Matheson, so I'm now going to look at
`slide 7, what he says is when a person of ordinary skill reads this
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`Case IPR2016-00418
`Patent 8,155,342 B2
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`language, they understand that that unencoded data is
`synonymous with the decoding data. What it means to a person
`of ordinary skill is that it would refer to -- and we see it in the
`middle of the slide here, would refer to what, again, a person of
`ordinary skill would call pulse-code modulation, which is
`effectively -- and he gives an example of a WAV content.
`Pulse-code modulation is effectively a digitally encoded
`WAV form. It is the digital representation of the audio that can
`be sent across the wireless communication link to the interface,
`run through a digital-to-analog converter and shot out to the
`speakers. It doesn't need to be decoded. It's not MP3 data that
`has to then be turned into a digitally-encoded WAV form. It is a
`digitally-encoded WAV form.
`JUDGE QUINN: Counsel, I think what my colleague
`wants is if there is a way that someone can construe paragraph 55
`to include in those sentences that it is the transmission, the
`wireless transmission encoding and decoding that is being
`addressed there. Not the encoding or decoding of the audio file
`itself, like with a Codec. Has your expert addressed why
`someone wouldn't read 55, then, to read this statement of
`encoding or unencoding to be limited to the transmission, the
`wireless transmission signal rather than the substantive encoding
`of the WAV file or the MP3 file or whatever else is going on?
`MR. MELNIK: So what our expert has provided is
`what a person of ordinary skill would understand this to mean.
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`We have not tried to provide all of the possible things that a
`person of ordinary skill would not understand this to mean and
`what a person of ordinary skill --
`JUDGE QUINN: But patent owner raised this in their
`response and said this confirms that all of the decoding is
`happening at the wireless transmitter and that decoding is
`referring to the decoding of the MP3 file or the ASC file,
`whatever format that is, because there is a content decoder in the
`wireless transmitter. So why then 55 could be read to provide an
`exception when there are no embodiments in Clayton, none, that
`you have provided to us that show an unencoded file or stream,
`right, because that's what we are looking for? We are not looking
`for files. We are looking for a stream of audio, unencoded ready
`to play without being decoded by the wireless transmitter.
`MR. MELNIK: What the patent owner raised in their
`response is the sentence that follows that, which says that any
`needed conversion or decoding of such content woul
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