throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA)
`INC., SONY MOBILE COMMUNICATIONS AB, and SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioner,
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`______________
`
`Case IPR2016-01407
`Patent 6,928,433
`______________
`
`Record of Oral Hearing
`Held: August 29, 2017
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`
`
`
`
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`
`
`APPEARANCES
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL N. RADER, ESQ.
`JOSHUA J. MILLER, ESQ.
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02201
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JONATHAN D. BAKER, ESQ.
`MICHAEL D. SAUNDERS, ESQ.
`Farney Daniels, P.C.
`411 Borel Avenue
`Suite 350
`San Mateo, California 94402
`
`
`ALSO PRESENT:
`
`
`Russell Swerdon, Esq.
`
`
`
`The above-entitled matter came on for hearing on Tuesday, August 29,
`
`2017, commencing at 1:00 p.m. at the U.S. Patent and Trademark Office,
`1961 Stout Street, 14th Floor, Room D, Denver, Colorado 80202.
`
`
`
`
`
`
`
`2
`
`
`

`

`
`
`Case IPR2016-01407
`Patent 6,928,433
`
`
`P R O C E E D I N G S
`
` WHEREUPON, the following proceedings were
`taken pursuant to the Patent Trial and Appeal Board.
`* * * * *
` JUDGE HAAPALA: Good afternoon and welcome to
`Denver. I'm Judge Haapala. This is Judge Boucher. And
`appearing on videoconference in Alexandria is Judge
`Giannetti. Let's begin with your appearances. Let's start
`with petitioner. Would you please approach the microphone.
` MR. RADER: Thank you, Your Honor. Michael
`Rader from Wolf, Greenfield & Sacks on behalf of the Sony
`entity petitioners, and with me is my colleague, Josh Miller.
` JUDGE HAAPALA: Mr. Rader, will you be
`presenting for petitioner?
` MR. RADER: Yes, I will.
` MR. BAKER: Good morning, Your Honor. I'm
`Jonathan Baker from Farney Daniels on behalf of the patent
`owner, Creative Technology Limited. And with me today is my
`colleague, Michael Saunders, from Farney Daniels as well.
`And also with us today is Russell Swerdon, in-house counsel
`at Creative Labs.
` JUDGE HAAPALA: And, Mr. Baker, are you
`presenting for patent owner?
` MR. BAKER: Yes, I am.
` JUDGE HAAPALA: Okay. I'd like to go over how
`we're going to proceed today. Each party is going to have
`
`1
`
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`3
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`45 minutes of time to present its arguments. Petitioner, you
`have the burden, so we'll begin with you. Patent owner, you
`will get a chance to respond to petitioner's arguments.
`Petitioner, you can reserve rebuttal time if you want.
` So in our order of June 13, we also authorize
`patent owner, if you choose, to address at this hearing any
`arguments or evidence that you feel that the petitioner
`presented in its reply that are not permitted under the
`proper scope of our rules. So petitioner if patent owner
`presents any such arguments, you can respond.
` Please remember that Judge Giannetti will not
`be able to hear you unless you speak into the microphone.
`And I understand that both parties have demonstratives.
`We've reviewed the submissions, we've reviewed petitioner's
`objections, and we decided that both parties can use their
`demonstratives as aids to oral arguments, but they're not
`evidence, and neither party is going to be authorized to submit
`the demonstratives as evidence, so we're not going to rule on
`the objections at this time.
` As a reminder, Judge Giannetti is not going to
`be able to see your slides, so please when you're making your
`presentation, refer to the slide number as you're going
`through it during your argument. I'd also like to remind the
`parties that we will not entertain any speaking objections.
`If you have an issue, you can raise it during your time.
` So petitioner, you can begin when you're
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`4
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`ready.
` MR. RADER: Thank you, Your Honor. I'm going
`to reserve up to about 15 minutes for rebuttal, although, I
`may run into that a little bit in my affirmative
`presentation, in which case, I'll just reserve a little bit
`less, if that's okay.
` So what I'd like to do in the 30 to 35 minutes
`that I have now is to do two things. First, I'm going to
`take just about six or seven minutes to do a little bit of
`review. Obviously, what the 433 patent is about and what the
`two primary prior art references disclose, the Birrell
`reference and the Seidensticker reference. And, of course,
`what the combination looks like. So what it looks like when
`you take the hierarchically organized user interface of
`Seidensticker and use it to display the hierarchically
`organized music data of Birrell.
` JUDGE BOUCHER: Can I interrupt just for a
`minute. I just wanted to ask the technician to move the
`camera. Apparently they can't see the podium clearly -- the
`camera is focused on us -- so that Judge Giannetti can --
`thank you.
` MR. RADER: As you'll see, the combination of
`the Seidensticker interfaced with the Birrell data looks just
`like the preferred embodiment of the 433 patent. Now that
`background is very important, because the
`Birrell-Seidensticker combination itself, there's very little
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`in any of the claims that's not provided in that combination.
`So many of Creative's arguments center just on that
`combination; although, there are a few subsidiary arguments
`with the secondary references.
` So after laying the foundation about Birrell
`and Seidensticker, I will then respond to the argument that
`Creative raised in its patent owner response, including both
`about the combination as well as some subsidiary points, like
`the idea of adding a song to a playlist while it's playing,
`which is disclosed in the Looney reference.
` So if we can jump to slide 3. On slide 3 what
`we've done is we've just reproduced claim 1 of the 433
`patent, which gives you a good overview of what the patent is
`about. Now, it was cancelled during reexamination so this
`claim is unpatentable. But all of the claims depend from it,
`so they all incorporate these limitations. And it describes
`the basic idea of navigating a hierarchy to access music.
` So you have at the top level the categories,
`the subcategories, and then the items, and the items are
`identified as tracks. So everyone agrees and understands
`that you can practice this method by starting with genres
`like rock, classical, jazz, and then drilling down to the CDs
`within a particular genre, and then going down to the tracks
`within a particular CD.
` Now, there's really very little variation on
`this core navigational concept described in any of the other
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`claims. What it all boils down to in terms of the navigation
`is one thing, and that's for the dependent claims, and that's
`the idea that you can drill down not just by genre, but by
`artist or album. With that one additional concept, you have
`the navigation described in all of the claims, all of the
`challenge claims, and that concept is disclosed in the Proehl
`and Johnson references.
` So given how minor that variation is, and
`given how clearly it is disclosed in the Proehl and Johnson
`references, most of Creative's arguments, as I said before,
`actually center around the Birrell and Seidensticker
`combination itself in terms of the navigation.
` JUDGE BOUCHER: It seems that one of the
`issues surrounds those last two limitations in claim 1,
`especially with respect to the additional limitations of
`claims 2 and 3, for example. So do you agree that displaying
`the items in a third display screen needs to be performed at
`the same time that accessing one track, based on a selection
`on one of the display screens?
` MR. RADER: So I want to make sure I
`understand your question. Obviously, claim 1 requires that
`as one of its limitations that you have to display the items
`or the tracks. Separately, claims 2 and 3 both require that
`you -- that you also play tracks that are associated with a
`CD on the second screen.
` JUDGE BOUCHER: Right. And that access is
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`7
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`based on a selection made in one of the display screens.
` MR. RADER: That's right.
` JUDGE BOUCHER: And so it seems to me that the
`issue is whether that selection results in displaying the
`items on the third display screen, as well as accessing that
`track.
` MR. RADER: So I think -- I think I understand
`your question now. So the question is: Does it have to
`result from selecting the CD in the second screen, that is --
`and there was some confusion on this, I think, in the patent
`owner response. When you select the CD to play, does it then
`have to not only play the CD but also display the tracks in
`the third screen. Is that your question?
` JUDGE BOUCHER: Yes.
` MR. RADER: That's not the claim construction
`that I understand is appropriate, and I don't believe that's
`the claim construction that Creative has advanced. I think
`what they've -- although it's a little bit confusing,
`honestly, in the patent response. I think the claim
`construction they've advanced is that you have to carry out a
`method in which you both display the tracks.
` As the board says in its institution decision,
`you can do that first, and then back up the hierarchy, ascend
`in the hierarchy to the second screen, and then choose a CD
`to play.
` And I don't believe that patent owner disputes
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`that that's the appropriate claim limitation. They do make a
`couple of arguments about whether the combination, in fact,
`satisfies that, which I'm prepared to address.
` JUDGE BOUCHER: Okay. Thank you.
` MR. RADER: So if we can look at slide 4, very
`quickly, of course, the Birrell reference describes the same
`three-level hierarchy, first the genres, which include jazz,
`country, rock, et cetera. At the second level, the listing
`of the CDs within a genre, and at the third level the listing
`of tracks within a particular CD.
` In the middle here we've highlighted in
`yellow, and this is from columns 4 and 5 of Birrell. Birrell
`says expressly the user can select CDs and/or individual
`tracks to be played. And that's an important disclosure to
`answer Your Honor's question, which I'll get to on those
`slides about claims 2 and 3.
` And then, finally, at the bottom it describes
`that it has a display. Birrell has a display, and it
`describes that there's a control procedure for a user to
`control the display, interact with the display, and select
`tracks to play. And that disclosure is very important
`because it relates to -- it ties Birrell closely to
`Seidensticker, which then provides the display and the
`combination.
` So slide 5 are brief excerpts from column 5 of
`Seidensticker, as well as Figure 1, which describes the basic
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`idea of drilling down and reascending, using an action button
`to drill down and a back button to go back up. And, of
`course, you can select any item in the menu at a particular
`-- at a particular level.
` So what does it look like when you -- if we
`can turn to slide 7. What does it look like when you use
`that hierarchically organized display in Seidensticker to
`display the Birrell hierarchically organized data? So on the
`right-hand side of the screen, you see from Dr. Bederson's
`declaration of the petition, the genre information in the
`first display screen comes directly out of Birrell.
` Because if you remember, classical, jazz,
`country, rock, and light rock. That's directly out of
`Birrell, as we saw. The idea that you have CDs that
`correspond to those genres is directly out of Birrell. The
`idea that each CD has tracks is directly out of Birrell. And
`the idea of drilling down from one level to the other, that's
`directly out of Seidensticker as shown in -- for example, in
`figures 10 and 11 of Seidensticker.
` If we can have slide 8 now. Slide 8 just
`presents an excerpt from the institution decision. So Dr.
`Bederson, Sony's expert, explained in the declaration when he
`filed the petition that the Birrell and -- that the
`Seidensticker interface, hierarchically user interface, is
`directly applicable, seamlessly to the hierarchically
`organized music data of Birrell, and that a person of an
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`ordinary skill in the art would have ample reason to use
`that, because Birrell itself, of course, said it needs to
`have a display for its hierarchically organized music data.
` The institution decision credited that
`testimony from Dr. Bederson. And, in fact, both references
`contain disclosures that motivate the combination. Remember,
`Birrell is a portable music player with the hierarchical
`music data. It says you have to display it. It says you
`have to be able to use the display to select, but it doesn't
`tell you exactly what its display looks like. So it's a
`portable music player is in search of a display.
` Seidensticker is a hierarchically organized
`user interface that it's, by its terms, says it's applicable
`to every or any portable electronic device. So it's a
`display in search of a device and data to populate it. So
`both references recommend themselves to the other.
` JUDGE HAAPALA: Mr. Rader, I wanted to address
`a point that patent owners brought up, that the combination
`would not be predictable, and patent owner raised some
`arguments that user interfaces are complex, and design
`choices -- there's a lot of design choices, and you can't
`predict which ones would be successful. Could you address
`those arguments, please.
` MR. RADER: Sure. Dr. Bederson, I believe,
`addressed that in his testimony. I mean, in every
`combination there's, I suppose, an element of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`unpredictability. Here, the record reflects that this is
`about a simple and straightforward combination, even calling
`it a combination is a little bit funny. What it is is just
`taking a hierarchically organized user interface and
`populating it with existing data that's organized
`hierarchically.
` So, you know, the kinds of issues they raised
`in their patent owner response were things like, well,
`Seidensticker doesn't contemplate music data. Well, the
`answer to that is that Seidensticker says its applicable to
`any kind of device that uses any data. So while it doesn't
`expressly talk about music, it expressly says I'm applicable
`to whatever device you want to use me on.
` JUDGE BOUCHER: So with those screens up
`there, which don't appear in either reference, but are what
`you're contending results from the combination of the two
`references. Can you walk me through how, for example, the
`limitations of claim 2 are met? The easy ones are selecting
`a category. And if in the first display screen, you select
`"rock," you hit second display screen and so on.
` MR. RADER: Right.
` JUDGE BOUCHER: And then it's easy, you get to
`display the items in the selected subcategory and the third
`display screen where you have the tracks there. And so what
`is the accessing limitation in claim 1, and what are the two
`specific limitations comprised by that in claim 2?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`12
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
` MR. RADER: So claim 1 says, accessing at
`least one track based on a selection made in one of the
`display screens. So according to claim 1, you can make the
`selection in any display screen you want to access at least
`one track, maybe more than one track. Claim 2 then says,
`where in the accessing the at least one track comprised of
`selecting a subcategory, which here would be a CD, in the
`second display screen and playing a plurality of tracks
`associated with it. So it's really very simple.
` Actually, as the board outlined in the
`institution decision, you would drill down to the third
`display screen where you see the tracks. You would then
`ascend in the hierarchy to the second display screen where
`you see the CDs, and then you would select a CD to play,
`which satisfies the limitation of claim 2.
` JUDGE BOUCHER: So I have to navigate down to
`the third display screen, play the track, then navigate back
`up to the second display screen.
` MR. RADER: You don't need to play a track
`when you navigate to the third. You just have to display the
`third. That's what the -- claim 1 requires that you display
`the third, and then it says for accessing you can do that in
`any display screen. And claim 2 narrows claim 1 to say, you
`need to select a subcategory in the second screen.
` So in order to practice the combination of
`claims 1 and 2 together, you can navigate to the bottom, to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`the third display screen, don't select anything, go back up a
`level to the second display screen and then select a CD,
`which is what the board articulated correctly in its
`institution decision.
` JUDGE BOUCHER: And that's what you
`articulated in your petition?
` MR. RADER: That's correct. If we can go to
`slide 10, I'm going to try to breeze through these quickly.
`So we -- I'll walk through each of the five arguments that
`the patent owner makes in its patent owner response in
`response to the Birrell-Seidensticker combination.
` So if we can have slide 11. This is an
`argument, which is a reiteration of an argument that was made
`in the preliminary response, that, hey, there are other ways
`you can display Birrell's data other than using the
`Seidensticker interface.
` So, for example, Creative says, you just have
`a long list of all of the CDs and all of the tracks. It
`would be really long, but you can just scroll down and then
`select either a CD or a track that you want.
` And they argue that because that's possible,
`it negates the obviousness of using the Seidensticker
`interface. And that's simply not the law. The law is, as we
`show you here, from In Re Fulton that the prior art -- for a
`combination to be obvious, the prior art need not be the most
`desirable combination, although in this case it's very
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`14
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`desirable, and it's certainly need not be the only
`combination. So this argument fails as a matter of law.
` Looking at slide 12, this is basically an
`extension of that argument where they say, look, they argue
`and their expert asserts that there is a device called the
`Personal Jukebox 100 or the PJB100, which was the commercial
`embodiment of the Birrell patent. And they say, look, that
`existed.
` And if you assume that one of skill in the art
`knew about that and that device had a display, hierarchy or
`display menu that differed from that of Seidensticker, one of
`a skill in the art would have just used that, and it wouldn't
`be obvious to use anything else.
` Again, that runs right into In Re Fulton and
`black-letter law that says there's not -- there's never, or
`not necessarily, only one obvious way to display data, and
`it's -- again, it need not be the best way, and it certainly
`doesn't need to be the only way. So even assuming there
`existed in the prior art one thought about how to display the
`Birrell data, it in no way negates the obviousness of using
`this very seamless Seidensticker interface to display that
`data.
` Slide 13. So this is another argument
`Creative says, well, they fault Sony and Sony's expert, Dr.
`Bederson, for failing to identify the problem solved in the
`433 patent or its solution in the prior art. This runs right
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`into the Supreme Court in KSR, which said that it was error
`to focus on the problems solved in the patent at issue for
`purposes of the obviousness analysis. And any reason,
`motivation, or problem in the prior art can suffice to
`provide a reason to combine two references.
` Now, if we turn to slide 14. While the
`argument about identifying the problem or the solution from
`the 433 patent is wrong as a matter of law, we nevertheless
`went the extra mile and demonstrated that that problem and
`solution were identified in the prior art. And, in fact, in
`the very prior art that forms the basis for ground one.
` So Mr. Bear, who is Creative's expert, argues
`here on slide 14 in an excerpt from his declaration that the
`problem of the 433 patent was when you have too much data to
`display on the screen at one time, you have to organize it in
`a way that makes it easier to display. That was the problem
`and solution. And the solution was a hierarchical
`organization.
` Well, that's exactly what Seidensticker says.
`You know, in the excerpt from Seidensticker, column 2 here,
`it starts out by saying, "The user interface includes the
`display screen having only a few rows." That's actually how
`the 433 patent starts, with the same observation. And it
`goes on to say, look, scrolling is time-consuming, so what
`you should do is have a hierarchical user interface right
`there in the prior art.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`16
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
` In slide 15, we additionally included some
`excerpts at the bottom here from the ISO standard. As it
`turns out, that Creative's --
` JUDGE HAAPALA: Would you please, before we
`start into that, would you please succinctly state what the
`purpose of your introducing this reference is.
` MR. RADER: Absolutely. The purpose is to
`rebut the suggestion, which is legally erroneous, but to
`also factually rebut the suggestion that the problem and
`solution of the 433 patents were not known in the prior art.
`Creative seems to argue that that is an independent reason to
`find the claims not obvious.
` Now, that's legally incorrect under KSR, but
`we felt it was important through Seidensticker as well as
`through this reference, which is an ISO standard of the
`family that Mr. Bear himself cited in his own declaration to
`demonstrate that his statement was factually incorrect.
` JUDGE HAAPALA: So if we agree that it's
`legally erroneous to require the prior art to identify the
`problem, do we need to consider this?
` MR. RADER: You do not.
` JUDGE HAAPALA: Thank you.
` JUDGE BOUCHER: This is a bit -- this is going
`to sidetrack you a little bit. But can you address the
`reasons that the examiner in the re-examination allowed, for
`example, claim 2, and to the extent that the examiner had
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`17
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`before him arguments that are similar to the ones that you're
`making now?
` MR. RADER: So in the re-examination -- my
`recollection of that is twofold. One, Creative swore behind
`most of the references. And the petitioner in that case
`settled out with Creative so it didn't bring forward
`additional references.
` And with regard to claim 2, with the
`particular reference that was at issue there, Creative made
`two arguments, one was that claim 2 required actually playing
`the songs based on the selection of the CD in screen 2, as
`opposed to just selecting the CD in screen 2 and then perhaps
`playing songs on the third display screen.
` But Creative also made other arguments, the
`exact details of which I don't have at my fingertips, about
`why that reference, even under a broader interpretation,
`which allowed selection of a CD and then playing of tracks on
`the third display screen, would not satisfy those
`limitations. But here we have a combination of references
`that does disclose both displaying the tracks in the third
`display screen, and -- and even under the narrower
`interpretation that Creative argued playing the tracks based
`on selecting the CD in the second display screen.
` So while it's not entirely clear from a
`re-exam file history which of the two arguments that Creative
`made, the re-examination the examiner was persuaded by,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`18
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`Creative makes the assertion that they were persuaded by one
`rather than the other. It's not clear from the file history.
` What he apparently didn't have there was a
`reference that disclosed what this reference does, which is
`both displaying the tracks on the third display screen and
`also playing based on a selection made on the second.
` JUDGE HAAPALA: Did you contest patent owner's
`construction or offer different construction for this
`limitation?
` MR. RADER: We -- we did not because we did
`not need to. So we did not take a position on whether claims
`2 and 3 require the tracks be played based solely on the
`selection made in the second display screen, or whether they
`could be played based on this third, because our prior art
`Birrell expressly discloses playing the entire CD by clicking
`on the CD. So that's not an issue we needed to take a
`position on. We effectively operated under their
`construction because our prior art met it.
` JUDGE HAAPALA: Thank you.
` MR. RADER: Okay. I'd like to move on to
`slide 17. In a couple of places Creative argues that each of
`the references individually is missing a limitation of claim
`1, the base claim. So, for example, here in the patent owner
`response at seven, in that section they're talking about this
`idea of tracks that have to be accessed according to a
`hierarchy, right, as opposed to just a long list. It's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`19
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`actually in the preamble of claim 1. They say, look, Birrell
`doesn't disclose that, and that's true, because Birrell
`doesn't tell you what its user interface looks like.
` But as the board correctly observed in the
`institution decision, that doesn't address the combination of
`Birrell and Seidensticker. So while there's several
`arguments about what Birrell discloses or what Seidensticker
`discloses, nowhere in the patent owner response, nowhere,
`does Creative contest that all the limitations of claim 1 are
`satisfied by the combination of Birrell and Seidensticker.
`Their primary arguments are the ones I just went through
`about whether one of a skill in the art would have been
`motivated to combine those two references.
` So on that note, let me just pause for a
`second to tie this back to the claim so I can quickly start
`moving through the claims. So claims 5 and 7, which depends
`on claim 1, are not separately argued in the patent owner
`response. They don't make any arguments about claims 5 and
`7. They're dependent only on the arguments about claim 1,
`which, for the most part, boil down to whether you would have
`combined Birrell and Seidensticker in the first place.
` And since all of the arguments that they make
`in the patent owner response in terms of limitations
`potentially being missing are focused on the references
`individually rather than together, what this means is that if
`the board confirms its conclusion from the institution
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`20
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`decision, that the combination was obvious, Birrell and
`Seidensticker, then Creative has no arguments, presents no
`arguments for the patentability of claims 5 and 7. Claims 5
`and 7 stand and fall solely based on whether it was obvious
`to combine those two references. So that's it for claims 5
`and 7.
` Now, claims 2 and 3, which Your Honor was
`asking about a moment ago, so they're also part of ground
`one. Ground one is that they're obvious just over Birrell
`and Seidensticker, and that's what I would like to address
`briefly now.
` So if I can have slide 18. This is a little
`bit of review since we've already talked about it, but
`basically what they're arguing here in their patent owner
`response at 36 is the idea that if you select a CD, okay, in
`the second screen, are you ever going to display the tracks
`in the third screen, the latter being required by claim 1,
`the former being required by claim 2.
` And the answer is, as the board itself
`articulated in the institution decision, yes, the Birrell and
`Seidensticker combination, the fundamental thing is you can
`navigate to all of the screens, you can display the tracks as
`required by claim 1, and then you ascend a level, and then
`you can play a CD based on a selection made in screen 2.
` Now, Creative will try to suggest that this
`argument wasn't made in the petition. And so I just want to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`21
`
`
`

`

`Case IPR2016-01407
`Patent 6,928,433
`
`point Your Honors in the petition. Again, remember that
`claim 1 is independent and 2 and 3 are dependent. So for
`claim 1 at page 73 of the petition, where claim 1 talks about
`presenting all three of the display screens, we pointed to
`the action in the back buttons of Seidensticker that you
`would display, in fact, all three of the display screens by
`going up and down.
` And then where claim 2, for example, talks
`about selecting the CD at page 77 of the petition, we
`expressly quoted from Birrell where it says you can play an
`entire CD. And then that disclosure is reiterated again on
`pages 78 and 79, on the top next to claim 7, which expressly
`requires what the board observed, navigating down and then
`back up and then making a selection. So the institution
`decision was a hundred percent correct in concluding the
`combination discloses all of the limitations of claims 1, 2
`and 3.
` JUDGE HAAPALA: Mr. Rader, you're about at
`26 minutes. I'd also like to hear a little bit about your
`argument on claim 17, adding to a playlist while the list is
`playing.
` MR. RADER: I'm alm

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket