Trials@uspto.gov
`571.272.7822
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` Paper: 44
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` Entered: November 22, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA)
`INC., SONY MOBILE COMMUNICATIONS AB, and SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioner,
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`v.
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`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01407
`Patent 6,928,433 B2
`____________
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`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Sony Corporation, Sony Mobile Communications (USA) Inc., Sony
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`Mobile Communications AB, and Sony Mobile Communications Inc.
`(collectively, “Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319
`to institute an inter partes review of claims 2, 3, 5, 7, and 17–28 of U.S.
`Patent No. 6,928,433 B2 (“the ’433 patent”). Paper 2 (“Pet.”). Applying the
`standard set forth in 35 U.S.C. § 314(a), we granted Petitioner’s request and
`instituted an inter partes review of all challenged claims. Paper 13 (“Dec.”).
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`During the trial, Patent Owner timely filed a Response (Paper 19,
`“PO Resp.”), to which Petitioner timely filed a Reply (Paper 25, “Reply”).
`An oral hearing was held on August 29, 2017, and a copy of the transcript
`was entered into the record. Paper 43 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. Based on the record
`before us, we determine that Petitioner has shown, by a preponderance of the
`evidence, that claims 2, 3, 5, 7, and 17–28 of the ’433 patent are
`unpatentable.
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`I. BACKGROUND
`A. The ’433 Patent (Ex. 1001)
`The ’433 patent was the subject of an inter partes reexamination that
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`resulted in the cancellation of claims 1, 4, 6, and 8–16, and the addition of
`new claims 17–28. Ex. 1002.
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`The ’433 patent describes a user interface for a portable player that
`plays files stored in memory, such as audio files. Ex. 1001, 3:53–55. The
`content may be organized into a hierarchy of top-level categories and
`associated sub-categories. Id. at 2:12–29. The hierarchy is displayed on the
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`device so that a user can traverse the hierarchy to find individual tracks or
`playlists composed of logical groups of tracks. Id. at 3:4–7.
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`Figure 10 of the ’433 patent is reproduced below:
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`Figure 10 illustrates a sequence of display screens showing how to navigate
`to lower levels of the hierarchy. Id. at 8:57–58. Categories screen 150
`illustrates the display of first-level categories. Id. at 8:59–63. Lists screen
`154 is displayed as a result of a user opening the Albums category of library
`catalog screen 150, and shows items within the Albums category. Id. at 9:4–
`9. Tracks screen 156 shows a result of opening an item in the Lists screen
`154, and Details screen 158 shows the details of a track selected in Tracks
`screen 156. Id. at 9:10–44.
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`B. Illustrative Claim
`Because all of the challenged claims depend from claim 1, which was
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`canceled in the reexamination, we present that canceled claim to illustrate
`the subject matter:
`1. A method of selecting at least one track from a plurality
`of tracks stored in a computer-readable medium of a portable
`media player configured to present sequentially a first, second,
`and third display screen on the display of the media player, the
`plurality of tracks accessed according to a hierarchy, the
`hierarchy having a plurality of categories, subcategories, and
`items respectively in a first, second, and third level of the
`hierarchy, the method comprising:
`selecting a category in the first display screen of the
`portable media player;
`displaying the subcategories belonging to the selected
`category in a listing presented in the second display screen;
`selecting a subcategory in the second display screen;
`displaying the items belonging to the selected subcategory
`in a listing presented in the third display screen; and
`accessing at least one track based on a selection made in
`one of the display screens.
`C. Instituted Grounds of Unpatentability
`Petitioner relies on the following references in its challenges:
`Looney
`US 5,969,283
`Oct. 19, 1999
`Ex. 1009
`Proehl
`US 6,118,450
`Sept. 12, 2000
`Ex. 1011
`Johnson
`US 5,798,921
`Aug. 25, 1998
`Ex. 1012
`Birrell
`US 6,332,175 B1 Dec. 18, 2001
`Ex. 1013
`Seidensticker US 6,128,012
`Oct. 3, 2000
`Ex. 1014
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`We instituted trial under 35 U.S.C. § 103(a) based on the following
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`combinations of references. Dec. 25.
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`Claims
`2, 3, 5, 7
`19, 21, 25
`23, 27
`17, 18
`20, 22, 26
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`24 and 28
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`References
`Birrell and Seidensticker
`Birrell, Seidensticker, and Proehl
`Birrell, Seidensticker, Proehl, and
`Johnson
`Birrell, Seidensticker, and Looney
`Birrell, Seidensticker, Proehl, and
`Looney
`Birrell, Seidensticker, Proehl,
`Johnson, and Looney
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`In support of its contentions, Petitioner submitted declarations by its witness,
`Benjamin B. Bederson, Ph.D. Exs. 1006, 1020. In response, Patent Owner
`submitted declarations by its witness, Eric J. Gould Bear. Exs. 2001, 2014.
`Both experts were cross-examined during the trial, and transcripts of their
`deposition are in the record. Exs. 2017, 2045 (Bederson depositions); Ex.
`1021 (Bear deposition). Additionally, Patent Owner filed a motion for
`observation on the cross-examination of Dr. Bederson, and Petitioner filed a
`response. Papers 33, 36.
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`Patent Owner further submitted a declaration by Tan Shao Mieng, to
`provide support for its arguments regarding secondary considerations of
`non-obviousness. Ex. 2015.
`D. Related Proceedings
`Patent Owner identifies a number of proceedings in which it has
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`alleged infringement of the ’433 patent. See Paper 11. These include
`assertions by Patent Owner against Petitioner in Creative Tech. Ltd. v. Sony
`Corp., No. 2:16-cv-00263 (E.D. Tex.), which is also identified by Petitioner.
`Pet. 5. Patent Owner further identifies the following declaratory judgement
`proceeding involving the patent: Google, Inc. v. Creative Labs, Inc. and
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`Creative Technology Ltd., Case No. 3:16-cv-02628-JST (N.D. Cal.). Paper
`11.
`Additionally, the parties both state the ’433 patent was the subject of
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`a now-terminated investigation at the U.S. International Trade Commission
`and further identify the following pending appeal of the ITC investigation:
`Creative Technology Ltd. v. ITC, Case No. 16-2715 (Fed. Cir.). Papers 11,
`12.
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`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations such as commercial success, long felt but unsolved needs,
`and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The obviousness inquiry further requires an analysis of “whether there was
`an apparent reason to combine the known elements in the fashion claimed by
`the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness”)).
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`B. Level of Ordinary Skill in the Art
`Based on testimony of its expert, Dr. Bederson, Petitioner asserts a
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`person of ordinary skill in the art would have had at least the equivalent of a
`bachelor of science degree in computer science or similar subject, or two to
`three years of experience in designing and implementing user interfaces for
`portable electronic devices, and additionally asserts more education could
`substitute for experience, and experience could substitute for formal
`education. Pet. 10 (citing Ex. 1006 ¶¶ 36–38). Patent Owner’s expert, Mr.
`Bear, opines that Dr. Bederson has underestimated the experience of a
`person of ordinary skill. Ex. 2014 ¶ 32. Accordingly, relying on the
`testimony of Mr. Bear, Patent Owner asserts a person of ordinary skill in the
`art at the time of the invention of the ’433 patent would have had at least a
`bachelor’s degree in computer science, cognitive science, computer user
`interface design, or a similar subject (or equivalent work experience), and
`two to three years of experience in designing user interfaces for consumer
`electronic devices. PO Resp. 4 (citing Ex. 2014 ¶ 32).
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`Our decision does not turn on the differences between the definitions,
`particularly as Mr. Bear testifies that the opinions expressed in his
`declaration would apply regardless of whether his description is applied or
`whether Dr. Bederson’s definition is applied. See Ex. 2014 ¶ 32. We see no
`compelling reason to apply the higher level of skill advocated by Patent
`Owner. Accordingly, we accept the level of skill advocated by Petitioner,
`with the addition of Mr. Bear’s identification of cognitive science and
`computer user interface design as additional permissible undergraduate
`degrees.
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`C. Claim Construction
`In an inter partes review, claims of an unexpired patent are
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`interpreted using the broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In our
`Institution Decision, we made the following preliminary claim constructions.
`Dec 5–9.
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`“display screen”
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`Claim Term
`“portable media player”
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`Construction
`a device capable of being easily and
`conveniently transported that can
`play media content, such as audio or
`video content
`a particular set of user interface
`elements presented on the display of
`a device
`Patent Owner does not address or contest our constructions in its Response;
`however, Patent Owner’s expert, Mr. Bear, states in his declaration that he
`applied the constructions by the Board in its Decision on Institution. Ex.
`2014 ¶ 41. Petitioner does not address or contest our constructions in its
`Reply. Accordingly, although we have considered the construction of the
`terms anew in light of the full trial record, we see no compelling reason to
`alter our preliminary constructions, and, therefore, adopt them for this Final
`Written Decision.
`D. Obviousness over Birrell and Seidensticker
`Petitioner challenges claims 2, 3, 5, and 7, which depend from
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`canceled claim 1, as obvious under 35 U.S.C. § 103(a) over Birrell and
`Seidensticker. Pet. 63–79.
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`1. Scope and Content of Birrell
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`Birrell describes a portable audio player that plays compressed audio
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`data. Ex. 1013, 3:31–33. A table of contents organizes the compressed
`audio files in a hierarchy. Id. at 4:52–61. In an exemplary embodiment, the
`top level of the hierarchy contains music genres (e.g., classical, jazz), a
`second level of the hierarchy contains a listing of CDs within each genre,
`and a third level of the hierarchy contains the names of the tracks on each
`CD. Id. at 4:50–61. The table of contents can be viewed on the display of
`the audio player, and the user can select CDs and/or individual tracks to be
`played by adding them to a “play list” of tracks to be played by the system.
`Id. at 4:66–5:3.
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`2. Scope and Content of Seidensticker
`Seidensticker describes a user interface for a portable device that
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`stores and displays data. Ex. 1014, 1:13–15. Data is presented to a user as a
`hierarchical directory having a plurality of levels, which users can navigate
`using a first pair of controls (Action/Back) and a second pair of controls
`(Up/Down). Id. at 2:56–3:7. The controls (e.g., buttons) are used to
`navigate the user through the directory/menu hierarchy such that when the
`Action button is depressed, the next lower level of the hierarchy is
`displayed, and when the Back button is depressed, the next higher level of
`the hierarchy is displayed. Id. at 6:44–53. Figures 10 and 11 of
`Seidensticker are reproduced below:
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`Figure 10 (left) illustrates an exemplary Table of Contents View display
`screen that includes a list of action items, such as “Get to Theater.” Id. at
`4:38–39, 17:62–65. Figure 11 (right) shows an exemplary Records View
`display screen for the “Get to Theater” action item. See id. at 4:40–41.
`Seidensticker further describes other exemplary menus, including a “Main
`Menu” with a “Games” option, and a “Games” menu listing a variety of
`games. Id. at 7:1–7, Fig. 6.
`3. Claim 1 Limitations
`The challenged claims all depend from claim 1, which was canceled
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`during reexamination. See Ex. 1002; see also Ex. 1004, 6249 (Examiner
`maintaining rejections of claim 1 under 102(b) and 103(a)). Because the
`challenged claims incorporate the limitations from claim 1, Petitioner must
`establish the cited references disclose the limitations of that claim, as well as
`those limitations added by the dependent claims.
`a. accessed according to a hierarchy
`The preamble of claim 1 recites, in part, “selecting at least one track
`from a plurality of tracks . . . the plurality of tracks accessed according to a
`hierarchy.” In general, a claim preamble gives context to what is recited in
`the body of the claim and is not construed as a separate limitation,
`particularly “if it is reasonably susceptible to being construed to be merely
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`duplicative of the limitations in the body of the claim.” Symantec Corp. v.
`Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288–89 (Fed. Cir. 2008).
`Petitioner asserts Birrell discloses this limitation through its
`description that a table of contents 152 organizes compressed files in a
`hierarchy and “[t]he table of contents 152 can be viewed on the display 118,
`and the user can select CDs and/or individual tracks to be played.” Pet. 74
`(citing Ex. 1013, 4:50–54, 4:66–5:3).
`Patent Owner argues Birrell does not provide enough specificity for
`how the user carries out the function to select songs to be played, and
`further, that there is no disclosure in Birrell that the content is actually
`accessed according to a hierarchy because it does not disclose accessing
`from the table of contents. PO Resp. 5–6. Patent Owner further argues that
`Seidensticker does not cure the deficiency in Birrell, and that Petitioner does
`not rely on Seidensticker for the “accessed according to a hierarchy”
`limitation. Id. at 7. Additionally, Patent Owner asserts Seidensticker does
`not teach its interface is useful for accessing anything outside of its own user
`interface, but only to organize the text that is part of the user interface itself.
`Id. at 7–8.
`We agree with Petitioner (Pet. 14) that the body of claim 1 already
`sets forth accessing a track by navigating a hierarchical interface through its
`limitations describing navigation of first, second, and third display screens
`by selecting “categories,” “subcategories belonging to the selected
`category,” and “items belonging to the selected subcategory,” and accessing
`at least one track based on a selection. We discern no meaningful difference
`between the preamble’s recitation of “accessed according to a hierarchy”
`and the recitations in the body of claim 1. Nor does Patent Owner present
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`arguments that there is a substantive difference. Therefore, we find the
`preamble limitation to be merely duplicative of the limitations in the body of
`the claim, and do not accord it separate patentable weight. Moreover, for the
`reasons discussed below, we are not persuaded by Patent Owner’s arguments
`of any deficiencies in Petitioner’s analysis of the corresponding limitations
`that appear in the body of the claim.
`b. display screens
`Petitioner asserts combining Seidensticker’s approach to navigating a
`hierarchical menu structure with Birrell’s hierarchical table of contents
`would have led a person of ordinary skill to present three display screens for
`Birrell’s three levels of its table of contents. In this combination, the first
`display screen would contain a list of music genres, the second display
`screen a list of CDs within a genre, and the third display screen tracks for a
`selected CD. Pet. 67–69. Petitioner’s examples of such screens are
`illustrated below:
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`Petitioner’s examples of first, second, and third display screens are depicted
`above. In particular, Petitioner and Dr. Bederson assert the display screens
`represent examples of first, second, and third display screens generated by
`modifying the hierarchically related screens of Seidensticker’s Figures 10
`and 11 based on Birrell’s discussion of contents of its menu hierarchy. Id. at
`68; Ex. 1006 ¶ 187. Petitioner further provides a claim chart illustrating
`how the combination of Birrell and Seidensticker discloses displaying first,
`second, and third display screens, respectively displaying categories,
`subcategories, and items. See Pet. 72–75.
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`We are persuaded Petitioner establishes that Birrell’s three-level
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`hierarchical table of contents discloses the claimed category, subcategory,
`and item hierarchy. Pet. 63–64, 74. In particular, we agree Birrell discloses
`a table of contents that may be organized in three levels: a top level that
`contains music genres (category); a second level that lists the CDs for a
`particular genre (subcategory); and a third level that stores the names of the
`tracks for each CD (item hierarchy). See Ex. 1013, 4:52–65.
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`We are further persuaded by Petitioner’s analysis that Seidensticker
`discloses navigating a hierarchical menu structure through the use of display
`screens (construed to be “a particular set of user interface elements presented
`on the display of a device”), with a list of entries for each menu level being
`presented on a respective screen. Pet. 65–66, 72–74. The cited sections of
`Seidensticker disclose navigating a hierarchical user interface through an
`Action button, which takes the user to a selected lower level of the hierarchy
`and displays the subdirectories and elements for that level, and a Back
`button which takes the user to a higher or parent level of the display
`hierarchy. See Ex. 1014, 5:13–24, 6:44–53. We agree with Petitioner’s
`analysis that applying the hierarchical user interface of Seidensticker to the
`hierarchically organized data of Birrell meets the claimed series of
`displaying three display screens displaying categories, subcategories, and
`items. See Reply 15 (citing Pet. 67–70; Ex. 1006 ¶¶ 196–199).
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`Patent Owner argues that neither Birrell nor Seidensticker discloses
`the recited display screens. See PO Resp. 8–14. In particular, Patent Owner
`argues there are numerous ways to present Birrell’s table of contents without
`the use of three screens. Id. at 9–12. Patent Owner further asserts nothing in
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`Seidensticker’s description discloses using its interface to subdivide media
`content into sequentially displayed screens. Id. at 13.
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`We are unpersuaded by these arguments. Patent Owner’s arguments
`attacking the references individually are not persuasive because Petitioner
`relies on the combined teachings of the references to meet the disputed
`limitations. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). To the
`extent Patent Owner’s arguments attack the motivation to combine these
`references, we address arguments regarding insufficient reason to combine
`below.
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`c. “accessing at least one track based on a
`selection made in one of the display screens”
`Petitioner relies on the combination of Birrell and Seidensticker to
`disclose this limitation. See Pet. 72–76. We agree with Petitioner that
`Seidensticker discloses selections made in display screens. Pet. 72–75; see
`Ex. 1014, 2:56–58, 5:8–36. We also agree with Petitioner that Seidensticker
`expressly discloses its selections can execute an application (i.e., are not
`used just to display text in its own user interface as Patent Owner asserts in
`its arguments discussed above for the preamble limitation). Reply 15; see
`Ex. 1014, 9:42–48. And we agree that Birrell discloses accessing a track
`through its description of a user selecting individual tracks to be played. Pet.
`75–76; see Ex. 1014, 4:66–5:3. Thus, we agree with Petitioner that the
`combination of Birrell’s selection of an application in a display screen with
`Seidensticker’s disclosure of selection of individual tracks meets the
`“accessing at least one track” limitation. For the reasons discussed below,
`we further determine Petitioner provides sufficient reason to combine the
`references in the proposed manner.
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`d. Remaining Limitations of Claim 1
`We have reviewed Petitioner’s analysis of the remaining limitations
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`recited in claim 1 as set forth in its claim chart and the supporting evidence.
`See Pet. 71–76. We are persuaded Petitioner sufficiently establishes the
`combination of Birrell and Seidensticker discloses these limitations for the
`reasons set forth by Petitioner. See id. For example, we agree with
`Petitioner that Birrell discloses the recited “portable media player”
`(construed to be “a device capable of being easily and conveniently
`transported that can play media content, such as audio or video content”)
`through its disclosure of a portable audio player. Pet. 71 (citing Ex. 1013,
`1:4–6). Patent Owner has not raised arguments against these limitations in
`its Patent Owner Response; therefore, those arguments are waived. Novartis
`AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); In re
`Nuvasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016).1
`4. Claims 2 and 3 Limitations
`Claim 2 depends from claim 1 and recites “wherein the accessing at
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`least one track comprises selecting a subcategory in the second display
`screen and playing a plurality of tracks associated with the selected
`subcategory.” Patent Owner argues that this limitation requires that the
`selecting a subcategory in the second screen directly causes the accessing.
`PO Resp. 34–35. Patent Owner asserts this interpretation is confirmed by
`the reexamination history of the ’433 patent. Id. at 35 (citing Ex. 1004,
`6149, 6182, 6236). Petitioner does not contest Patent Owner’s interpretation
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`1 As in Nuvasive, the Scheduling Order in this proceeding cautioned Patent
`Owner that “any arguments for patentability not raised in the response will
`be deemed waived.” Paper 14, 6.
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`of this limitation, but asserts that even under Patent Owner’s construction,
`the prior art meets this limitation. Tr. 19.
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`As discussed supra with reference to claim 1, Petitioner adequately
`identifies the subcategory in the second display screen with Birrell’s CDs
`(second level of hierarchy) and establishes that the Birrell-Seidensticker
`combination teaches displaying the second subcategory (list of CDs) in the
`second display screen. See Pet. 68, 73–75. Petitioner additionally asserts
`Birrell discloses that a user can select an entire CD to be played and the user
`selection is added to a “play list,” which is a queue of tracks to be played by
`the system. Pet. 77 (citing Ex. 1013, 4:66–5:3). Petitioner also asserts
`Seidensticker has a Back button to ascend the hierarchy so that a user may
`navigate to the third screen to display items belonging to the selected
`category (per claim 1), then back to the second screen to make a selection of
`a subcategory to play the associated tracks (per claims 2 and 3). See Reply
`16; see also Pet. 73 (discussing the use of the Back button of Seidensticker
`to navigate through the interface in its mapping of claim 1, from which
`claim 2 depends). Thus, Petitioner contends that the selection of a CD to be
`played from the second level of Birrell’s table of contents in the Birrell-
`Seidensticker combination, satisfies all limitations of claim 2.2 Pet. 77.
`
`Patent Owner contends that Petitioner does not identify a disclosure
`in Birrell or Seidensticker that describes a selection on the second screen
`
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`2 Although claims 1 and 2 do not set forth a specific mechanism used to
`perform either recited “selecting a subcategory in the second display
`screen,” Petitioner and its expert provide several examples of mechanisms
`that one of skill in the art would have used to permit both choices, such as
`separate options or configuring the same button for both purposes. See
`Reply 17, 18; Ex. 1020 ¶¶ 14, 15.
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`causing a group of tracks to be accessed and also a third display screen to be
`displayed (as required by claim 1). PO Resp. 37. Patent Owner argues that
`the use of the “Back Button” fails because neither reference discloses a user
`interface that can both cause a new display screen to be presented and cause
`an accessing. Id. at 37–39.3 Patent Owner argues that in Seidensticker,
`every menu item is exclusively either: (i) a menu item for redirecting to
`another screen with a further set of menu options, or (ii) an application or
`other function-performing menu, but not both. Id. at 38.
`
`We have reviewed Petitioner’s analysis and the supporting evidence
`and conclude that Petitioner establishes, by a preponderance of the evidence,
`that the Birrell-Seidensticker combination satisfies the limitations of claim 2.
`Specifically, for the reasons described with reference to claim 1’s
`limitations, we agree with Petitioner that the Birrell-Seidensticker
`combination teaches a subcategory displayed in a second screen. See Pet.
`68–69, 76–77. We further agree that Birrell discloses selecting a CD (a
`subcategory displayed in a second screen) and playing a plurality of tracks
`associated with the CD (a selected subcategory). See Ex. 1013, 4:66–5:3.
`We also agree that Seidensticker discloses the use of a Back button, which
`would allow the user to navigate to the third screen to display items as
`
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`3 We disagree with Patent Owner’s assertion that the “Back Button Theory”
`was identified only by the Board and not by Petitioner. See PO Resp. 37.
`As pointed out by Petitioner during oral argument (Tr. 22), Petitioner
`discusses the use of the Back button in multiple places in the Petition. See
`e.g., Pet. 73, 78–79. Furthermore, our Decision to Institute made explicit the
`findings we relied on to determine Petitioner established adequately the
`Birrell-Seidensticker combination teaches the “accessing” limitation recited
`in claim 2. See Dec. 15–16. Patent Owner was given adequate opportunity
`to respond to this theory, which it did in its Response. See PO Resp. 37–38.
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`recited in claim 1, then back to the second screen to make the selection
`recited in claim 2. See Ex. 1014, 5:21–22. Accordingly, we conclude the
`combination teaches “accessing at least one track comprises selecting a
`subcategory in the second display screen and playing a plurality of tracks
`associated with the selected subcategory.”
`
`We are not persuaded by Patent Owner’s arguments that
`Seidensticker’s menu items cannot both redirect the user to another screen
`and execute an application (i.e., cause the recited accessing). See PO Resp.
`37–38. Patent Owner’s arguments appear to be premised on the assumption
`that the same menu item must be used in the second display screen both to
`provide a selection to display subcategory items in a third display screen (as
`set forth in claim 1) and to provide a selection to play a plurality of tracks
`associated with a selected subcategory (as set forth in claim 2). But claim 2
`is not so limiting. It merely requires that the user be able to select a
`subcategory to play a plurality of tracks—it does not require that this option
`be the same option used to display the items in the third display screen.4
`Petitioner persuades us that, in light of the teachings of Birrell and
`Seidensticker, one of skill in the art would have known how to provide a
`second display screen that implements both an option to select a second
`subcategory to display its items in a third screen (claim 1) and an option to
`select a second subcategory and playing a plurality of tracks associated with
`
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`4 We further observe that in advocating its proposed construction of claim 2,
`Patent Owner points us to a portion of the reexamination history. PO Resp.
`36 (citing Ex. 1004, 6182). But on the same page that Patent Owner asks us
`to consider, Patent Owner cites to a portion of the Specification describing
`that another option allows the user to cause any currently selected list of
`songs to immediately be played. See Ex. 1004, 6182 (citing Spec. 9:20–23)
`(emphasis added).
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`the selected subcategory (claim 2). See Reply 17–18 (citing testimony of
`Dr. Bederson).
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`Claim 3 depends from claim 1 and recites “wherein the accessing at
`least one track comprises selecting a subcategory and adding the tracks
`associated with the selected subcategory to a playlist.” We have reviewed
`Petitioner’s analysis and supporting evidence and we are persuaded that for
`similar reasons as claim 2, and in light of Birrell’s disclosure that a user can
`select CDs to be added to a playlist (Ex. 1013, 4:67–5:3), the Birrell-
`Seidensticker combination satisfies the limitations of claim 3. See Pet. 78.
`
`Patent Owner relies on the same arguments made with respect to
`claim 2 for this claim. See PO Resp. 34–38. We are not persuaded for the
`reasons discussed above.
`5. Claims 5 and 7 Limitations
`Claim 5 depends from claim 1 and sets forth that the accessing at
`
`least one track comprises selecting an item in the third display screen and
`adding at least one track associated with the selected item to a playlist.
`Patent Owner does not present a separate argument for this claim.
`
`As described with reference to claim 1’s limitations, we agree with
`Petitioner that the Birrell-Seidensticker combination discloses displaying
`items (tracks) in a third display screen. See e.g., Pet. 67–68. Petitioner
`further asserts Birrell discloses selection of an individual track to be played
`and adding it to a playlist. Id. at 78. We agree. See Ex. 1013, 4:66–5:3
`(describing a user can select an individual track to be played and that user
`selections are added to a queue of tracks to