Trials@uspto.gov
`571-272-7822
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`Paper 22
`Entered: March 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01749
`Patent 6,757,913 B2
`____________
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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`Paper 22
`Entered: March 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01749
`Patent 6,757,913 B2
`____________
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2016-01749
`Patent 6,757,913 B2
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting inter partes review of claims 1–4, 6–13, 20, and 22 of U.S. Patent
`No. 6,757,913 B2 (Ex. 1001, “the ’913 patent”). We instituted an inter
`partes review of all the challenged claims because Petitioner demonstrated a
`“reasonable likelihood” of prevailing on “at least 1 of the claims challenged
`in the petition.” Paper 10 (“Inst. Dec.”); see 35 U.S.C. § 314(a).
`After institution of trial, Digital Stream IP, LLC (“Patent Owner”)
`filed a Patent Owner Response (Paper 15, “PO Resp.”), and Petitioner filed a
`Reply (Paper 19, “Pet. Reply”).
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 4, 6–13, 20, and 22 of the ’913 patent are
`unpatentable. Petitioner has not, however, made such a showing with
`respect to claims 2 and 3. This final written decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`II. BACKGROUND
`A. Related Proceedings
`Patent Owner identifies one pending federal district court case
`involving the ’913 patent: Digital Stream IP LLC v. Sirius XM Radio Inc.,
`No. 1:18-cv-00087 (D. Del.). Paper 21, 2.
`The parties previously identified four other federal district court cases
`involving the ’913 patent. Pet. 1; Paper 5, 2. According to Patent Owner,
`those “litigations have been terminated.” Paper 21, 2.
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`B. The ’913 Patent
`The ’913 patent describes a system for local wireless transmission and
`reception of digital audio and program information. Ex. 1001, at [54], 4:67–
`5:1. Figure 1, which is reproduced below, illustrates such a system.
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`In particular, Figure 1 is a schematic representation of a transmitter and
`receiver/tuner system. Id. at 3:48–50. Digital data distribution system 10
`outputs to transmitter 100 serial digital data stream 22, which contains a
`plurality of digital audio and program information signals. Id. at 4:16–20,
`5:1–5. The digital audio signal may be encoded with music, while the
`program information signal may be encoded with information about the
`composer, the track title, the artist, and the associated album. Id. at 2:60, 8:9–
`12. Transmitter 100 converts the digital audio and program information
`signals into digital RF carrier frequencies and broadcasts them to multiple
`devices, including receiver/tuner 200. Id. at 5:5–12.
`An example of a receiver/tuner is shown in Figure 3, which is
`reproduced below.
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`Figure 3, above, is a top plan view of a receiver/tuner. Id. at 3:54–56. A user
`can press the number keys to select one of the digital audio and program
`information channels transmitted by transmitter 100. Id. at 7:29–33. Once the
`user makes a selection, the receiver/tuner electronically outputs the selected
`audio and displays the corresponding program information for the selected
`audio track. Id. at 5:13–15.
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`C. Illustrative Claim
`Claims 1 and 20 are independent claims. Each of claims 2–4, 6–13,
`and 22 depends from one of claims 1 and 20. Claim 1 is illustrative of the
`subject matter at issue, and is reproduced below.
`1. A wireless digital audio transceiver for receiving a locally
`broadcast digital audio signal wherein the digital audio signal
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`comprises a plurality of carrier waves to carry digital audio data
`and audio program information, the transceiver comprising:
`a user interface to enable a user to select digital audio data
`from a plurality of digital audio data within the digital
`audio signal;
`a tuner operably coupled to the user interface to tune to a
`frequency associated with a carrier wave containing the
`selected digital audio data;
`a demodulator coupled to the tuner to extract the selected
`digital audio data and the audio program information from
`the carrier wave; and
`a digital to analog converter to convert the selected digital
`audio data into an analog signal and to send the analog
`signal to an output for playback to the user.
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`D. The Instituted Grounds
`Petitioner asserts in its Petition two grounds based on obviousness
`under 35 U.S.C. § 103. Pet. 3, 10, 46. We instituted inter partes review on
`all the challenged claims and on both asserted grounds. Inst. Dec. 6, 11, 15.
`The instituted grounds are as follows.
`Claims Challenged
`References
`Basis
`1–3, 6–13, 20, and 22
`Schotz1 and Rovira2
`§ 103
`1, 2, 4, 6, 7, 9, and 10
`Kostreski3 and Streck4
`§ 103
`In support of the instituted grounds, Petitioner relies on two declarations of
`Daniel Stark (Exs. 1006, 1013).
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`1 Schotz, U.S. Patent No. 5,491,839, issued Feb. 13, 1996 (Ex. 1002).
`2 Rovira, U.S. Patent No. 5,406,558, issued Apr. 11, 1995 (Ex. 1003).
`3 Kostreski, U.S. Patent No. 5,651,010, issued July 22, 1997 (Ex. 1004).
`4 Streck, U.S. Patent No. 5,101,499, issued Mar. 31, 1992 (Ex. 1005).
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`III. ANALYSIS
`A. Real Party-In-Interest
`We first address Patent Owner’s contention that the Petition should be
`dismissed “for [Petitioner’s] failure to prove it is the sole real party in
`interest.” See PO Resp. 49.
`Petitioner certifies in its Petition that Unified Patents is the real party-
`in-interest. Pet. 1. With regard to that certification, Petitioner submitted
`Exhibit 1012, which is titled “Petitioner’s Voluntary Interrogatory
`Responses.” During a conference call that we held on June 14, 2017, with
`counsel for each party and Mr. Kevin Jakel of Unified Patents, Patent Owner
`requested to cross-examine Mr. Jakel on his testimony set forth in Exhibit
`1012. Petitioner declined to voluntarily produce Mr. Jakel for a deposition
`on the theory that Exhibit 1012 is not an affidavit within the meaning of 37
`C.F.R. § 42.51(b)(1)(ii), which provides for the cross-examination of
`affiants as part of routine discovery. Contrary to Petitioner’s position,
`however, we found that Exhibit 1012 constitutes an affidavit. Paper 13, 2.
`We further authorized Petitioner to file a motion to withdraw Exhibit 1012
`in its entirety in lieu of producing Mr. Jakel for cross-examination. Id. That
`same day, Petitioner filed a Motion to Withdraw Exhibit 1012 (Paper 14),
`and we granted that Motion (see Paper 16).
`Patent Owner now contends that we should “view [Petitioner’s]
`assertions [regarding real party-in-interest] as nothing more than
`unsupported attorney argument, and certainly not evidence.” PO Resp. 53.
`As support, Patent Owner explains that “35 U.S.C. § 312(a)(2) places the
`burden of identifying all real parties in interest on the petitioner and that the
`ultimate burden of persuasion always remains with the petitioner.” Id. at 51
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`(citing Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case
`IPR2013-00453, at 7 (PTAB Feb. 23, 2015) (Paper 91)). Patent Owner
`further explains that Exhibit 1012 was the “only evidence” that Petitioner
`offered in support of its assertions regarding real party-in-interest, and,
`“[w]ith [Petitioner] now having withdrawn [Exhibit 1012], there is no
`evidence supporting [Petitioner’s] real party in interest contentions.” Id. at
`50–51.
`In its Reply, Petitioner counters that it “gained a rebuttable
`presumption of accuracy when it submitted a mandatory notice identifying
`real party-in-interest,” and that “[t]he burden of production now falls on the
`Patent Owner to provide sufficient rebuttal evidence that reasonably brings
`into question Petitioner’s identification of the real parties-in-interest.” Pet.
`Reply 18 (citing Atlanta Gas, Paper 88, 9). In that regard, Petitioner asserts
`that “Patent Owner has not identified any evidence or reasoning here
`suggesting that Unified’s certification of [real party-in-interest] is incorrect.”
`Id. at 17. According to Petitioner, this is different than Atlanta Gas because
`the patent owner in that case “did proffer sufficient evidence that parties,
`other than those identified as real party-in-interest, possessed sufficient
`control over the relevant IPR proceeding.” Id. at 20.
`We agree with Petitioner. Although Petitioner bears the burden of
`correctly identifying the real parties-in-interest, “[w]e generally accept the
`petitioner’s identification of real parties-in-interest at the time of filing the
`petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB
`Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its
`Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1),
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`Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the
`real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable
`presumption that Petitioner has complied with its obligation to identify all
`real parties-in-interest. See Zerto at 6–7.
`Patent Owner recognizes that “it [is] incumbent on the patent owner to
`come forward with some rebuttal evidence.” PO Resp. 52. In response to
`Petitioner’s identification of the real party-in-interest, Patent Owner
`contends that “this is not an instance where a petitioner’s certification in a
`petition can be taken at face value” because “evidence proffered by
`[Petitioner] in support of its position was withdrawn deliberately.” Id. at 53.
`We do not, however, require evidence beyond a petitioner’s identification of
`real parties-in-interest in the absence of rebuttal evidence that such
`identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit
`1012 from the record does not constitute such rebuttal evidence.
`In view of the foregoing, we find that the circumstances here do not
`raise sufficient doubt about whether Petitioner has satisfied its obligation to
`name all real parties-in-interest. Therefore, we determine that the Petition
`should not be dismissed on this basis.
`
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`B. Claim Construction
`For an inter partes review, we construe claims in an unexpired patent
`by applying the broadest reasonable interpretation 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)
`(upholding the use of the broadest reasonable interpretation standard).
`Under that standard, claim terms generally are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its
`ordinary meaning if the patentee acted as his own lexicographer,” however,
`and clearly set forth a definition of the claim term in the specification. CCS
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Petitioner proposes an express construction for the claim term
`“transceiver.” Pet. 10. Patent Owner does not propose an express
`construction for any claim term. See generally PO Resp. In light of the
`parties’ arguments, we determine that no term requires express interpretation
`to resolve any controversy in this proceeding.
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`C. Obviousness over Schotz and Rovira
`Petitioner argues that claims 1–3, 6–13, 20, and 22 would have been
`obvious over Schotz and Rovira. Pet. 10–45. With respect to this ground,
`Patent Owner argues patentability of only claims 2, 3, and 22. PO Resp. 26–
`45. For the reasons explained below, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1, 6–13, 20,
`and 22 would have been obvious over Schotz and Rovira. Regarding claims
`2 and 3, however, we determine that Petitioner has not demonstrated by a
`preponderance of the evidence that these claims would have been obvious
`over Schotz and Rovira.
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`1. Schotz
`Schotz describes a transmitter/receiver system such as the one shown
`in Figure 1, which is reproduced below.
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`Figure 1 shows a transmitter/receiver system with transmitter 4 and
`receiver 6. After receiving left and right audio signals from audio sources
`#1, #2, and #3, transmitter 4 transmits a combined audio signal to receiver 6.
`Ex. 1002, 3:50–52, 4:9–10. The combined audio signal is composed of three
`distinct channel carrier frequencies. Id. at 4:25–32. Schotz’s system
`provides for ten groups of three distinct carrier frequencies. Id. at 4:33–35,
`tbl.II. A user may select one of the ten groups by setting transmitter and
`receiver house code select switches 10, 16 to the same setting, and then
`further select one of the three carrier signals in that group by setting channel
`select switch 18. Id. at 4:36–41. Once the user completes a selection,
`receiver 6 processes the selected signal and converts it into the original
`audio source’s left and right audio signals. Id. at 4:43–47. Audio output
`connection 22 provides the user with left and right audio output of the
`selected channel. Id. at 4:9–11.
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`2. Rovira
`Rovira describes a system for communicating program data signals
`that are combined with digital data signals. Ex. 1003, at [57] (Abstract).
`The system receives and compresses a plurality of digital audio signals,
`multiplexes them with program data signals such as title, track, artist, record
`label, and year, and then transmits the combined signals to a receiving
`station. Id. The receiving station demultiplexes the signals and sends them
`to a user’s digital music tuner. Id. The tuner further demultiplexes and
`decodes the signals so that the digital audio signals can be converted into
`analog signals and output for listening, while the corresponding program
`data signals are communicated to the user. Id.
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`3. Independent Claim 1
`Independent claim 1 recites a “wireless digital audio transceiver” that
`receives a “digital audio signal compris[ing] . . . digital audio data and audio
`program information.” For this limitation, Petitioner relies on both Schotz
`and Rovira. For example, Petitioner directs us to where Schotz describes
`receiver 6. Pet. 19–20 (citing Ex. 1002, Fig. 1). Relying on declaration
`testimony of Mr. Stark, Petitioner explains that Schotz’s receiver “is a
`device that can receive a signal and output a signal, thereby providing the
`claimed transceiver.” Id. (citing Ex. 1006 ¶ 84). Petitioner also directs us to
`where Rovira teaches providing digital audio signals from CD players along
`with program data such as title, track, artist, publisher, composer, song
`identification, and play time information blocks for each song on a CD. Pet.
`20–21 (citing Ex. 1003, 4:55–58, 6:5–8). Based on the record before us, we
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`find that Schotz teaches the recited “transceiver” and that Rovira teaches the
`recited “digital audio signal.”
`Claim 1 further recites a “user interface to enable a user to select
`digital audio data from a plurality of digital audio data within the digital
`audio signal.” For this limitation, Petitioner relies on Schotz, identifying
`Schotz’s channel select switch 18 as a “user interface.” Id. at 23. As
`support, Petitioner directs us to where Schotz describes a system that
`transmits and receives an audio signal made up of three distinct carrier
`frequencies. Id. at 20 (citing Ex. 1002, 4:25–33, 4:36–48, Fig. 1). A user
`may select one of the three carrier signals by setting a 3-position channel
`select switch 18. Id. at 22–23 (citing Ex. 1002, 4:39–42, Fig. 1). Based on
`the record before us, we agree that Schotz teaches the recited “user
`interface.”
`Claim 1 further recites a “tuner operably coupled to the user interface
`to tune to a frequency associated with a carrier wave containing the selected
`digital audio data.” For this limitation, Petitioner identifies Schotz’s channel
`frequency synthesizer as a “tuner.” Pet. 24 (citing Ex. 1002, 7:45–54).
`Schotz teaches that the channel frequency synthesizer uses frequency data to
`generate the tuning voltage necessary to generate the particular carrier
`frequency for a channel. Ex. 1002, 7:40–54. Based on the record before us,
`we agree that Schotz teaches the recited “tuner.”
`Claim 1 further recites a “demodulator coupled to the tuner to extract
`the selected digital audio data and the audio program information from the
`carrier wave.” For this limitation, Petitioner first identifies Schotz’s second
`user-selectable means as a “demodulator.” Pet. 26 (citing Ex. 1002, 2:53–
`57). Schotz teaches that the second user-selectable means enables the user
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`to select a desired carrier frequency of a selected group to be demodulated so
`that the user can hear the audio signal extracted by the demodulation.
`Ex. 1002, 2:53–57. Petitioner notes that “Schotz, however, does not
`explicitly disclose a demodulator coupled to the tuner to extract the audio
`program information from the carrier wave.” Pet. 26. For this aspect of the
`limitation, Petitioner directs us to Rovira, which teaches providing
`demodulator 125 coupled to tuner 110. Id. (citing Ex. 1003, 8:27–33,
`Fig. 5). Based on the record before us, we are persuaded that the asserted
`combination of Schotz and Rovira teaches the recited “demodulator coupled
`to the tuner to extract the selected digital audio data and the audio program
`information from the carrier wave.”
`Lastly, claim 1 recites a “digital to analog converter to convert the
`selected digital audio data into an analog signal and to send the analog signal
`to an output for playback to the user.” For this limitation, Petitioner relies
`on Rovira, identifying digital to audio converter 160 as a “digital to analog
`converter.” Pet. 28 (citing Ex. 1003, 8:49–53). Based on the record before
`us, we find that Rovira teaches the recited “digital to analog converter.”
`In addition to showing that the asserted combination of Schotz and
`Rovira teaches each of the recited claim limitations, Petitioner must provide
`“some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`In that regard, Petitioner directs us to Rovira’s teaching that “it is highly
`desirable to communicate program content information” because “having
`such information as music title, composer, artist and record label is vital” to
`music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003,
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`1:32–35 (“Frustration of customers, and possible loss of revenue due to
`subscription cancellation can occur if a subscriber has no method of
`knowing the title, composer or artist of the particular selection of music.”).
`Petitioner argues it, thus, would have been obvious to modify Schotz’s
`system to incorporate a signal that includes both audio data and program
`data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would
`have been motivated to (1) modify Schotz’s transmitter 4 to transmit the
`digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to
`receive this digital audio signal.”); id. at 23 (“[T]his modification would
`result in Schotz’s user interface switch 18 selecting the digital audio data . . .
`within the digital audio signal [of Rovira].”); id. at 25 (“It would have been
`obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to
`frequencies that Schotz is receiving based on its use of Rovira’s digital audio
`signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency
`associated with audio data.”); id. at 27 (“[I]t would have been obvious to
`modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the
`selected digital audio data and the audio program information from the
`carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been
`obvious to modify Schotz to include the digital to analog converter 160
`disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a
`digital to analog converter when using the digital signals disclosed in Rovira
`so that the user can hear the selected music.”).
`We are persuaded by Petitioner’s reasoning, including specifically the
`quoted material in the preceding string citation to the Petition, for modifying
`Schotz’s system to include Rovira’s signal as well as various components for
`processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a]
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`person of ordinary skill is also a person of ordinary creativity, not an
`automaton,” and, in modifying Schotz’s system to include Rovira’s signal,
`would have made any necessary additional modifications such that Schotz’s
`system could process appropriately Rovira’s signal. See KSR, 550 U.S. at
`421.
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`Patent Owner does not present any arguments with respect to claim 1.
`See generally PO Resp. In view of the foregoing, we determine that
`Petitioner has demonstrated by a preponderance of the evidence that claim 1
`would have been obvious over Schotz and Rovira.
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`4. Dependent Claim 2
`Claim 2 depends from claim 1 and recites that “the transceiver is
`portable.” As discussed above with respect to claim 1, we find that Schotz’s
`receiver 6 corresponds to the recited “transceiver.” Petitioner argues that
`“the receiver 6 shown in Figure 1 of Schotz is a portable device” because it
`“may be used with headphones, which are often associated with portable
`devices.” Pet. 30 (citing Ex. 1002, 2:42–43). Petitioner also points out that
`“the receiver may be separated from the transmitter by a distance of 10 to
`300 feet,” and argues additionally that “[t]his varying distance discloses or at
`least suggests the portability of the receiver, due to the user being able to
`place the receiver 6 at various positions within the transmitting distance.”
`Id. (citing Ex. 1002, at [57]). In support of its arguments, Petitioner relies on
`the declaration testimony of Mr. Stark. Id. (citing Ex. 1006 ¶ 109).
`Patent Owner makes several arguments. For example, Patent Owner
`argues that “[Petitioner] makes no contention that headphones are used
`exclusively with portable devices and, further, ignores Schotz’s teaching that
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`receiver 6 is also used with loudspeakers in a wired arrangement,” which “is
`not commonly associated with portable devices.” PO Resp. 44.
`In its Reply, Petitioner counters that “the use of loudspeakers does not
`teach away from portability.” Pet. Reply 5. Relying on the declaration
`testimony of Mr. Stark, Petitioner contends that a skilled artisan “would
`have understood that the alleged portable devices in the ’913 patent,
`including the ‘portable disc player, a portable bookshelf stereo, a portable
`radio/tape player’ could have been used with a loudspeaker.” Id. at 4–5
`(citing Ex. 1013 ¶ 5). In addition, Petitioner notes that “Patent Owner
`provides no expert testimony to support why Schotz’s disclosure of
`headphones would not at least teach or suggest a portable device.” Id. at 5.
`Although we agree with Petitioner that loudspeakers can be used with
`portable devices, we also agree with Patent Owner that headphones are not
`used only with portable devices. See also Pet. 30 (“the receiver 6 may be
`used with headphones, which are often associated with portable devices”)
`(emphasis added). As such, we find that Petitioner has not met its burden of
`showing that Schotz’s receiver is portable. See 35 U.S.C. § 316(e).
`Patent Owner further argues that “because Schotz indicates that
`receiver 6 may be separated from transmitter 4 by distances of 10 to 300
`feet, this is simply a teaching regarding where the receiver must be located
`relative to the transmitter.” PO Resp. 44. According to Patent Owner,
`“[o]nce so situated, there is no suggestion that the receiver is moveable, i.e.,
`portable within the disclosed range.” Id. at 45.
`In response, Petitioner reiterates its argument that the “varying
`distance discloses or at least suggests the portability of the receiver due to
`the user being able to place the receiver 6 in various positions within
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`transmitting distance.” Pet. Reply 6. Petitioner adds that “Patent Owner has
`provided no expert testimony to counter this, and has failed to establish
`anything contrary to the Board’s finding [in its Institution Decision] with
`respect to the portable limitation.” Id.
`We are not persuaded by Petitioner’s argument and evidence. Schotz
`teaches that “[t]he receiver, separated from the transmitter by a distance of
`10 to 300 feet, receives the combined signal.” Ex. 1002, at [57]. As Patent
`Owner points out, this is “a teaching regarding where the receiver must be
`located relative to the transmitter.” PO Resp. 44. That Schotz’s receiver
`and transmitter are separated by a distance of 10 to 300 feet does not mean
`that either device is portable, let alone that the receiver (as opposed to the
`transmitter) is portable. Neither Petitioner nor its declarant explains
`persuasively why the varying distance suggests the portability of the
`receiver. Accordingly, we find that Petitioner has not met its burden of
`showing that Schotz’s receiver is portable.
`Lastly, Patent Owner argues that Schotz’s “receiver 6 receives power
`via a +15VDC power connector,” and that “[a] wired power supply, such as
`that used by Schotz’s receiver 6, without an alternative battery power supply
`is not typically associated with a ‘portable’ device.” PO Resp. 44. In its
`Reply, Petitioner responds that Patent Owner improperly interprets “the term
`‘portable’ as requiring an alternative battery supply.” Pet. Reply 2. We
`agree with Petitioner in this regard. The term “portable” does not require an
`alternative battery supply. See id. at 3–4. As discussed above, however, we
`still find that Petitioner has not met its burden of showing that Schotz’s
`receiver is portable.
`
`
`17
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`In view of the foregoing, we determine that Petitioner has not
`demonstrated by a preponderance of the evidence that claim 2 would have
`been obvious over Schotz and Rovira.
`
`
`
`
`5. Dependent Claim 3
`Claim 3 depends from claim 1 and recites that “the transceiver is
`handheld.” As discussed above with respect to claim 1, we find that
`Schotz’s receiver 6 corresponds to the recited “transceiver.” Petitioner
`argues that, “due to the size of the receiver 6, shown in Figure 1 of Schotz,
`one of ordinary skill in the art would understand that the device can be held
`in a user’s hand.” Pet. 30. As support, Petitioner relies on the declaration
`testimony of Mr. Stark. Id. (citing Ex. 1006 ¶ 111).
`In response, Patent Owner argues that “[Petitioner] does not explain
`what in [Figure 1] that would lead one of ordinary skill in the art to
`understand that the device can be held in a user’s hand, other than to call out
`‘the size of the receiver 6.’” PO Resp. 30; see also id. at 33 (“[Mr. Stark]
`did not, for example, say why a person of ordinary skill would come to that
`conclusion. He did not identify features of the drawings that suggest it, nor
`did he cite anything in the specification that would educate a reader as to the
`size or nature of the receiver 6.”). According to Patent Owner, “the ‘size’ of
`receiver 6 in Schotz’s Fig. [1] is indiscernible because patent drawings are
`not to scale.” Id. at 31 (citing Hockerson-Halberstadt, Inc. v. Avia Group
`Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). Patent Owner points out that
`“[Petitioner] cites nothing in the figure itself or the specification of Schotz
`that could be construed as a scale” or “that describes the size of receiver 6.”
`Id.
`
`
`18
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`Petitioner counters that “Figure 1 [of Schotz] is not being relied on for
`determining precise dimensions of the receiver 6—which would be
`improper—but rather what it at least suggests to a [skilled artisan] with
`respect to the general size of the receiver 6 and the configuration of the
`disclosed device.” Pet. Reply 9. According to Petitioner, a skilled artisan
`“would have understood that [Schotz’s] channel select switch 18 is in the
`form of a hand knob to be twisted by the user’s fingers to make the
`selection.” Id. Petitioner contends that, “[b]ased on the illustrated size of
`the receiver’s 6 knobs coupled with the intention for them to be twisted by a
`user’s fingers, the receiver 6 would have at least suggested to a [skilled
`artisan] that it could be handheld.” Id.; see also id. at 11 (“When looking at
`the size of the hand knobs on the receiver 6, one would have understood that
`Schotz is at least suggesting, in this figure and in the specification, that the
`receiver 6 could be handheld.”). As support, Petitioner relies on the
`declaration testimony of Mr. Stark. Id. at 9, 11 (citing Ex. 1013 ¶¶ 7–8).
`We are not persuaded by Petitioner’s argument. Petitioner has not
`directed us to any evidence indicating that Schotz’s drawings are drawn to
`scale. As Petitioner acknowledges, it therefore would be improper to rely on
`Schotz’s drawings for determining the dimensions of receiver 6. See Pet.
`Reply 9. Petitioner nonetheless relies on Figure 1 of Schotz as evidence
`about the size of receiver 6. For instance, Petitioner argues in its Petition
`that “due to the size of the receiver 6, shown in Figure 1 of Schotz, one of
`ordinary skill in the art would understand that the device can be held in a
`user’s hand.” Pet. 30 (emphasis added). In its Reply, Petitioner further
`argues that “[b]ased on the illustrated size of the receiver’s 6 knobs . . . , the
`receiver 6 would have at least suggested to a [skilled artisan] that it could be
`
`19
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`handheld.” Pet. Reply 9 (emphasis added). Petitioner also argues in its
`Reply that, “[w]hen looking at the size of the hand knobs on the receiver 6,
`one would have understood that Schotz is at least suggesting, in this figure
`and in the specification, that the receiver 6 could be handheld.” Id. at 11
`(first emphasis added). Such “arguments based on drawings not explicitly
`made to scale in issued patents are unavailing.” See Nystrom v. TREX Co.,
`Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005). Accordingly, we find that
`Petitioner has not met its burden of showing that Schotz’s receiver is
`handheld.
`In view of the foregoing, we determine that Petitioner has not
`demonstrated by a preponderance of the evidence that claim 3 would have
`been obvious over Schotz and Rovira.
`
`
`6. Dependent Claims 6–13
`Claim 6 depends from claim 1 and recites that the “digital audio signal
`contains multiple programs each including digital audio data and program
`information.” Claim 7, which depends from claim 6, further recites a
`“demultiplexer.” For these limitations, Petitioner directs us to where Rovira
`teaches “separat[ing] the single data stream into six channels containing 5.6
`Mbps digital audio and program data each. These six channels contain five
`stations each.” Pet. 31 (citing Ex. 1003, 7:58–62). Petitioner also directs us
`to where Rovira describes “demultiplexer 143 which separates the 5.6 Mbps
`data stream to select one of five stereo pairs of digital audio signals.” Id. at
`32 (citing Ex. 1003, 9
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