UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_____________
`
`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`____________
`
`Record of Oral Hearing
`Held: January 11, 2018
`____________
`
`
`
`
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`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_____________
`
`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`____________
`
`Record of Oral Hearing
`Held: January 11, 2018
`____________
`
`
`
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
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`
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`HEIDI KEEFE, ESQUIRE
`Cooley, LLP
`3175 Hanover Street
`Palo Alto, CA 94304
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`RYAN M. SCHULTZ, ESQUIRE
`ANDREW J. KABAT, ESQUIRE
`Robins Kaplan LLP
`800 LaSalle Avenue
`Suite 2800
`Minneapolis, MN 55402
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, January
`11, 2018, at 1 p.m., at the U.S. Patent and Trademark Office, Madison
`Building East, 600 Dulany Street, Alexandria, Virginia, before Walter
`Murphy, Notary Public.
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`2
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE WEINSCHENK: Be seated. All right. Good afternoon
`everyone. This is a hearing for IPR2017-88, 89, 92 and 97. Let’s start with
`appearances and when you make your appearance please step up to the
`center podium. Who do we have for Petitioner?
`MS. KEEFE: Good afternoon, Your Honors. Heidi Keefe on behalf
`of Petitioner, Facebook. With me in the courtroom are Andrew Mace, co-
`counsel Yuan Liang, also co-counsel, and our client Kate Duvall from
`Facebook.
`JUDGE WEINSCHENK: Thank you.
`MS. KEEFE: Thank you.
`JUDGE WEINSCHENK: And who do we have from Patent Owner?
`MR. SCHULTZ: Good afternoon, Your Honors. Ryan Schultz from
`Robins Kaplan. With me is my colleague and co-counsel, Andrew Kabat.
`JUDGE WEINSCHENK: Thank you. Before we get started just a
`few housekeeping matters. Judge DeFranco is joining us by telephone
`today. Judge DeFranco, are you there?
`JUDGE DEFRANCO: I certainly am, Judge Weinschenk.
`JUDGE WEINSCHENK: All right, great. So when you make your
`presentations please step up to the podium so that he can hear you and also
`when you refer to demonstratives please use slide numbers so that he can
`follow along. As you know from our order, each side will have 60 minutes
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`to present their case. Petitioner, before you begin just let us know if you’d
`like to reserve any time for rebuttal. You can start when you’re ready.
`MS. KEEFE: Thank you, Your Honors. Good afternoon. I’m
`estimating that I’d reserve approximately half of my time for rebuttal. If I
`went a little bit over that’s not a problem with me, I’ll just use whatever time
`I have left but I’m aiming for 30 minutes for my opening presentation.
`JUDGE WEINSCHENK: Sounds good.
`MS. KEEFE: Thank you, Your Honors. I also wanted to say at the
`very outset, wanted to compliment opposing counsel because we were able
`to talk and agree that we could streamline our presentations for you here
`today. So when we started and submitted our presentations originally, I’m
`going to slide 12 of our deck -- sorry, I think I’m going to slide 12 of our
`deck. On slide 12 of our deck our list of the oral arguments that we had
`intended on making, the parties have agreed that they will submit on the
`papers regarding the terms “providing a website”, “attached to a library” and
`“plurality of visual images” unless Your Honors have specific questions,
`although I’m happy to address.
`So I’ll begin with the OFDM limitation. I’d also like to make one
`interesting comment about these proceedings. This is one of the first
`proceedings that I’ve ever been involved in in which there was no cross-
`examination of the expert witness that Petitioner proffered as part of its
`opening petition. The expert was not cross-examined and there is no
`evidence concerning cross-examination of that expert.
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`Similarly, no expert was proffered by Patent Owner in this case.
`While that’s not always interesting, it’s a little bit interesting here because
`there was an expert for Patent Owner in the previous case which also
`involved patents within the same family also involving the OFDM
`limitations. In that case, the Patent Owner had similarly argued that OFDM
`could not be combined with the primary Rolf reference because Rolf was a
`3G reference. In that case the Board properly pointed out, as it did here in
`the Institution Decision, that in fact Rolf is not limited to 3G. Rolf instead is
`a cellular system. It’s a system which transmits music audio files over a
`cellular system to a cellular phone. It lists 3G as one of the possible ways in
`which that can be done, but it’s certainly not limited to that.
`JUDGE ARBES: Counsel, that was a different secondary reference
`though, right --
`MS. KEEFE: That was.
`JUDGE ARBES: -- for OFDM?
`MS. KEEFE: That reference was OFDM FM but it was almost
`exactly the same in the sense that it was a reference which said that you
`could use OFDM over a cellular network the same reason that Frodigh is
`being used in this case, and so the reason for using that reference and the
`arguments made by Patent Owner for why the combination was improper are
`identical. They said that in that case OFDM couldn’t be combined with Rolf
`because Rolf was 3G and that was OFDM. They cited the exact same
`European references for the notion that the European Union when debating
`in coming up with using CDMA for 3G networks had somehow taught away
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`from the use of OFDM and in fact that’s not true at all. That Board, as well
`as the Federal Circuit in affirming the Board’s decision to invalidate the
`claims, specifically held that in fact there were advantages and
`disadvantages to using OFDM in a cellular network, just as here. So I
`wanted to point that out because it’s instructive for this case. Even though
`it’s a different reference it’s being used for the same purpose and the same
`arguments made against it.
`JUDGE ARBES: Counsel, one question regarding that. There were
`some statements I believe in that reference that OFDM was particularly
`attractive for certain reasons. Specific disclosures in that reference that were
`relied on for the motivation to combine, those statements are not in the
`reference you’re relying on here, right?
`MS. KEEFE: That’s correct. What there are referenced though, in
`the Frodigh reference, Frodigh specifically calls out that OFDM is -- and this
`is at column 1, lines 59 through essentially column 2, line 18 -- that OFDM
`is particularly suited to cellular networks. That OFDM is something that
`you would use in cellular. Column 2, lines 38 through 60 of the Frodigh
`reference also specifically, this is Exhibit 1006, also specifically
`contemplates the advantages for using OFDM in cellular, pointing
`particularly to efficient use of bandwidth as well as a reduction in
`interference.
`Frodigh also specifically says that OFDM would be used for
`transmission over a cellular network for voice and data, just as in Rolf, and
`that’s at column 7, lines 50 through 63. So here Frodigh has essentially the
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`exact same type of teaching to combine because it specifically points out just
`how valuable OFDM is in a cellular context and the only argument Patent
`Owner had against was a misread or misquote of Rolf saying that it was
`limited to 3G, which it is not, and a misquote of the European papers that
`were at Exhibits 2003 and 2004 of the Patent Owner response which did not
`teach away from using OFDM in a cellular network, but instead indicated
`that there both advantages and disadvantages to not only OFDM but all of
`the other types of network transmission capabilities like TDMA and CDMA
`as well.
`JUDGE WEINSCHENK: Ms. Keefe, was the evidence that we have
`here in Exhibits 2003 and 2004, was that at issue in the previous case you
`mentioned?
`MS. KEEFE: Yes, it was, Your Honor.
`JUDGE WEINSCHENK: The same evidence was of record?
`MS. KEEFE: Yes, it was, Your Honor. That’s right, right? I
`apologize, I just wanted to make absolutely certain, but yes it absolutely
`was, Your Honor, and the arguments were made there as well with the same
`argument that those references somehow taught away from use of OFDM
`but in fact they did not because, again, there as here it was pointed out that
`those references list advantages and disadvantages for all the networks. If
`anything, I would say that those references teach that it was obvious to try
`OFDM in a cellular network because it specifically pointed out the
`advantages of using OFDM especially for things like downloads as opposed
`to things like uploads.
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`All of the challenged claims require OFDM. I don’t think we need to
`go through the technology of what OFDM is but Frodigh, as we said before,
`specifically calls out the advantages that are desirable in a cellular system --
`I’ve pointed out those references, this is on slide 20 -- and the European
`references are listed with our statement that they are not teaching away in an
`argument rejected by the Federal Circuit at slide 21 and, again, in slide 22.
`The argument specifically was rejected by the Federal Circuit. We
`have that on slide 23. You can see the quote from Skky v. MindGeek at the
`Federal Circuit. We agree with MindGeek that the Board’s finding of a
`motivation to combine the three references is supported by substantial
`evidence. As Your Honor pointed out --
`JUDGE DEFRANCO: So, Ms. Keefe. This is Judge DeFranco.
`MS. KEEFE: Yes, Your Honor.
`JUDGE DEFRANCO: So what do you want us to do with that
`Federal Circuit case? Is it binding on us in any respect because as my
`colleagues pointed out it’s a different teaching reference. So you’re simply
`asking us to recognize the instructive aspects of the decision, it’s not binding
`on us in any manner, correct?
`MS. KEEFE: That’s absolutely correct, Your Honor, but we would
`like you to take advantage of the instructive nature of what happened, not
`only with the prior Board, but with the Federal Circuit affirming that
`Board’s rejection of the same arguments that are being made by Patent
`Owner with respect to the European papers using OFDM in a cellular
`network, and unless Your Honors have any other questions on OFDM I’ll
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`proceed to the arguments regarding whether or not Rolf or a combination of
`Rolf and Frantz disclose a digital signal processor. All of the claims require
`there to be a digital signal processor within the cellular device for receiving
`and processing the files that were transmitted via the OFDM modulation.
`And on slide 26 we indicated that Rolf and Gatherer, and I should
`note very quickly I said Frantz up front because Rolf and Gatherer are used
`for three of the petitions and then Rolf and Frantz is used for the 465
`petition. They indicate the exact same things. I can do the parallel citations
`if Your Honors prefer, but what happens in both is that in both Rolf itself
`discloses use of a processor on the cellular telephone. That’s not disputed.
`What’s disputed is whether or not there would be a motivation to use a
`digital signal processor, a DSP, on the cellular phone of Rolf by combining
`it with a reference like Gatherer or like Frantz.
`The Gatherer reference specifically indicates that DSP was pervasive
`in cellular telephones at the time of the alleged invention. The Patent Owner
`argues that there’s no motivation to combine Rolf and Gatherer because they
`allege Rolf is 3G and Gatherer is limited to GSM or 2G. But we’re not
`using Gatherer for the proposition of a GSM or a 2G network and in fact the
`Gatherer reference does not say what Patent Owner wants it to say. Instead,
`the Gatherer reference specifically contemplates the notion that DSP
`processors, digital signal processors -- this is on slide 27 -- were pervasive at
`the time and used in 3G networks. Rolf itself is not limited to a 3G network,
`but does have the mention of a 3G network and so it’s very logical to
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`combine Rolf and Gatherer since both discuss the use of DSP in 3G
`networks.
`Slide 28. There’s no requirement for a detailed explanation of how
`the DSP in Gatherer would be bodily incorporated but instead the notion that
`one creating the system of Rolf would look to a reference like Gatherer to
`understand that DSP was pervasive at the time and in fact had massive
`benefits to the type of processing that was being done by digital signal
`processors at the time.
`The combination of Rolf land Gatherer is extremely good, looking at
`slide 30, because of the quotes in Gatherer itself and I quote, this is from
`Exhibit 1005 at page 84.
`“Programmable DSP’s are pervasive in the wireless handset market
`for digital cellular telephony.”
`DSP’s had actually already been deployed for precisely the purposes
`contemplated by the claims, that of processing incoming information into a
`cellular telephone. Therefore, one of ordinary skill in the art could have
`practiced without undue experimentation due to the maturity of the
`technologies because they were well known and extensively utilized. That’s
`also supported by the unrebutted testimony of Dr. Tal Lavian at paragraphs
`30 through 32, paragraph 90, and paragraphs 203 through 205 of Exhibit
`1002.
`
`The next dispute between the parties revolves around the definition of
`the term processing. Receiving and processing files comes up in every claim
`and this is receiving and processing files on the cellular telephone. So this is
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`when the incoming signal, whether it be streamed at that point or packetized
`music audio visual information is transmitted from the database via the
`server down to the cellular phone, there has to be a DSP which is configured
`for receiving and processing files.
`Patent Owner argues that processing must be construed to be
`happening before storage and playback. That’s not an appropriate definition
`of the word processing and I’m going to jump ahead to slide 34. Patent
`Owner’s proposed construction which says preparing a digital audio and/or
`visual file for storage in memory and playback is not the broadest reasonable
`construction and would in fact read out preferred embodiments cited within
`the patent specification itself.
`Looking to the 718 specification, which is mirrored in all the other
`specifications, at column 14, lines 58 through 15, line 3, the specification
`teaches that the processor taught by the Skky patent 300 performs tasks
`including controlling the board’s units, monitoring the keys pressed by the
`user, processing the key press events, receiving information from the
`computer through the digital interface and so on and so forth. So processing
`has to have a broader definition to encompass all of the other activities that
`the processor must be able to perform according to the preferred
`embodiment in the specification.
`JUDGE ARBES: Counsel, just a few questions. So you disagree with
`the Patent Owner’s proposed interpretation. What is Petitioner’s proposed
`interpretation for processing?
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`MS. KEEFE: Petitioner’s proposed interpretation of processing
`would be that which you can find in any computer science dictionary which
`means acting mathematically some form of mathematical operation, some
`form of -- basically that, some form of operation on the incoming
`information.
`JUDGE ARBES: Okay. And there was a dictionary definition that
`you submitted in your reply defining process as to perform operations on
`data. Is that --
`MS. KEEFE: That’s fine.
`JUDGE ARBES: -- okay.
`MS. KEEFE: That’s fine, Your Honor. I think that’s as broad as
`reasonably possible. I think if it were to be in this context something that’s
`mathematical, knowing that everything here is going to mathematically
`something happening on the data, that’s fine as well.
`JUDGE ARBES: And one more question regarding the portion of the
`specification that you cite on slide 34.
`MS. KEEFE: Yes, Your Honor.
`JUDGE ARBES: The sentence there says that tasks performed by the
`processor include, and I see your playing back sound clips there, but how
`does that relate to the definition of processing? I mean it just says these are
`tasks performed by the processor. Do all of those things have to be
`processing then? How do you get to the claim language from there?
`MS. KEEFE: The answer is yes, Your Honor. A processor processes,
`and so something which is processing, the processor is processing. That’s
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`just the gerund form of the verb and so the fact that the DSP, the processor,
`is processing the information, these are all types of processing that the
`processor has to be able to do. These are all operations on data, so being
`able to process, for example, monitoring of keys pressed by the user and
`processing of key press events happens by the processor, and so that’s
`another thing that the processor has to do.
`JUDGE ARBES: Are they all processing though, because there are
`some in there for reception of information and the claims do say receiving
`and processing. So the tasks here that talk about reception, are those
`processing?
`MS. KEEFE: I think they are as well, Your Honor. It continues not
`just receiving but receiving through the interface and so making sure that it’s
`available to be received through that interface may require some processing
`and so the processor has to be able to accomplish the processing of any of
`those tasks, and this is actually a paragraph that’s repeated twice in the
`specification. So this is not just once but in two separate embodiments the
`Patent Owner was careful to indicate that the processor had to be able to
`perform all of these types of processing, and so processing I think has to be
`broad enough to encompass those.
`JUDGE ARBES: But you would agree there’s a distinction between
`receiving and processing that’s --
`MS. KEEFE: I would, Your Honor.
`JUDGE ARBES: Okay.
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`MS. KEEFE: I would. Simply receiving by itself does not
`necessarily have to include processing but I think the fact that it continues
`the sentence receiving through the interface may require some processing to
`make sure that it was able to receive it through that interface versus
`something else.
`JUDGE ARBES: But you have to receive through an interface, how
`else would you receive it?
`MS. KEEFE: I think Your Honor’s probably right, but I think there
`could be processing that’s required there. Your Honor is right that there’s a
`possibility that they would be receiving without processing but there also is
`a possibility that receiving would require some level of processing.
`JUDGE ARBES: Okay.
`MS. KEEFE: But regardless -- so the first thing they say is that the
`definition --
`JUDGE DEFRANCO: But counsel -- this is Judge DeFranco again.
`MS. KEEFE: Yes, Your Honor.
`JUDGE DEFRANCO: But why isn’t that processing as recited in the
`claim limited to before playback, because it is talking about, just as Judge
`Arbes pointed out, it’s talking about receiving and processing the transmitted
`signal. So why doesn’t that exclude playback then, because it seems to be
`talking about them in the same breath --
`MS. KEEFE: Well, Your Honor, I don’t -- I’m sorry, were you --
`JUDGE DEFRANCO: -- at the reception end, meaning at the
`reception part?
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`MS. KEEFE: Understood, Your Honor, and I think here is the only
`reason that it may not is because if you’re talking about a streaming
`operation, for example, there may be playback occurring at the same time
`that there is also reception or processing, and so there is no requirement that
`everything be received and processed before any playback occur and that to
`me is what the definition proffered by Patent Owner seems to indicate.
`However, and the only other thing I would note, Your Honor, is that
`one of your sister Boards in a parallel proceeding that has not reached the
`trial conclusion yet, we think properly rejected the proposed construction by
`Patent Owner as importing limitations from the specification. This is also on
`slide 34 at paper 9 of IPR 2017-687, noting that none of the claims
`specifically indicated that it had to be a timing before playback or before
`storage.
`However, while I do believe that the broadest interpretation could
`include playback, that is not the only thing that Petitioner cited. In fact,
`Petitioner cited the processing occurring after receipt and before playback in
`the combination with Frodigh by citing to the passage of the Frodigh
`reference at column 8 -- this is on slide 33 -- at column 8, lines through 38
`through 63, which explain that Frodigh itself talks about when you use
`OFDM you have the receiver 330 includes a demodulator 332, frequency
`demultiplexers, fastforwarding a transform (phonetic) circuitry, demapping
`circuitry, et cetera, to describe in detail how the receiver 330 receives and
`processes the data transmitted by the OFDM modulations, and so we didn’t
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`rely solely on playback, we also relied on processing the information after
`receipt and prior to playback.
`JUDGE WEINSCHENK: Ms. Keefe, does this issue about whether
`processing is limited to preparing for playback really matter at all here?
`MS. KEEFE: I don’t think that it actually does, Your Honor, because
`it’s met by our combination one way or the other. Similarly, in the Rolf
`reference itself, to the extent that Your Honors decided that the definition
`proffered by Patent Owner was one that you wanted to accept, I would point
`Your Honors to column 10 starting at line 43 of Exhibit 1003, the Rolf
`reference, which specifically talks about receiving data packets by the Rolf
`processor and taking those data packets and processing them by parsing -- if
`you look to line, for example, 53, for example as illustrated in figure 8 -- the
`processor or data parser transmits those packets containing data for
`displaying on a display of the wireless communication device to buffer 102
`while data indicative of sound, so it’s parsed sound versus video, are
`streamed through a sound buffer 104. Goes on to talk about the buffers
`being something that can actually store the information.
`So even if Your Honors choose to adopt Patent Owner’s, and for some
`reason reject the citation to Frodigh which specifically contemplates
`processing information before playback, Rolf itself also specifically
`discloses bringing the information into the cell phone and using a processor
`to process the information before playback.
`JUDGE WEINSCHENK: Ms. Keefe, was that portion that you just
`directed us to in Rolf, was that cited in your papers anywhere?
`
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`
`MS. KEEFE: I don’t believe that it was, Your Honor. Like I said, it’s
`in column 10 starting at line 43 through line 60, and while I was trying to
`make sure that I could answer all of Your Honor’s questions, I saw that as
`well that would fit within Patent Owner’s proposed construction of the term.
`JUDGE WEINSCHENK: Can we consider something that you’ve
`just presented for the first time at the oral hearing?
`MS. KEEFE: Yes, Your Honor, I think you can. There’s actually two
`Federal Circuit cases that are I think not only on point but actually go a step
`further on the issue. In the Ariosa v. Verinata and the Genzyme v. Biomarin
`case, those are cases where actually new art was discussed even at the
`hearing itself and the Federal Circuit said that the whole purpose of the trial
`was to continue to to develop the record and make sure that the full record
`was presented before decisions were rendered, and so they allowed even
`new art to be considered.
`This is not new art. The combination that the Institution Decision was
`based on was the Rolf reference itself in combination with others, and this is
`merely a separate citation in the Rolf reference, and I have citations to those
`cases if Your Honors would like them.
`JUDGE ARBES: If we can go back to Frodigh for just a moment. So
`you said that Frodigh discloses the limitation even under Patent Owner’s
`proposed interpretation. Can you explain exactly what is the processing in
`Frodigh that you’re relying on? What is the actual action that you’re talking
`about?
`
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
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`MS. KEEFE: The actual action that I’m talking about is the
`demodulation. So the basically taking the encoded packets and decoding
`them, so it’s demodulation which is in the very first line. The receiver
`includes a demodulator and a frequency demultiplexer. Both of those things
`have to happen. Those are both mathematical operations that would occur
`before any storage or playback would occur.
`JUDGE ARBES: Okay. So that would meet Patent Owner’s
`definition of preparing a digital audio and/or visual file for storage in
`memory and playback?
`MS. KEEFE: I think it would, Your Honor.
`JUDGE ARBES: Okay.
`MS. KEEFE: Yes.
`JUDGE ARBES: And that always needs to occur. You need to
`demodulate the signal, right?
`MS. KEEFE: Yes, Your Honor.
`JUDGE ARBES: Okay.
`MS. KEEFE: And that’s one of those things where I’m not sure I
`understand where the real argument can be here because in order to have a
`system that has an encoded message coming in and then being played back,
`it has to be processed at some point. That’s how these systems work and so
`the fact that Frodigh specifically explained it is very helpful to us. The fact
`that Rolf also specifically explained processing that had to occur. You had
`to take the audio signals and strip them from the visual signals so that you
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
`knew which one to process so that it could be played back. Thank you, Your
`Honors.
`I can now skip all the way to slide 48. The term at issue here is a
`selection based on information associated with a cell phone. It appears only
`in the 693 patent in claims 3 and I think it’s claim 4. It’s providing for a
`selection of a stream of the compressed digital audio or audio visual file
`based on information associated with a cell phone. The first thing it wanted
`us to know is that the phraseology itself does not say providing a selection
`based on. It does not say selecting based on. It simply says providing for a
`selection based on information associated with a cell phone. The way that
`that makes the most sense to me in plain parlance is providing for a selection
`of a stream based on information is allowing for the selection based on
`information associated with a cell phone. Associated with a cell phone
`under its broadest interpretation simply means in any way referring to
`having anything to do with. Associated is a very broad term. It doesn’t
`mean attached to. It doesn’t mean linked. It simply means having some
`relation to. So here, if the provision of the ability to select is made with any
`relation to the cell phone itself, this limitation would be met.
`JUDGE ARBES: Counsel, before you move on to the next point I’d
`like to ask both parties a question.
`MS. KEEFE: Please, Your Honor.
`JUDGE ARBES: Can you give us an example from the specification
`of the 693 patent of this information?
`
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`Case IPR2017-00088 (Patent 9,124,718 B2)
`Case IPR2017-00089 (Patent 9,118,693 B2)
`Case IPR2017-00092 (Patent 9,124,717 B2)
`Case IPR2017-00097 (Patent 8,892,465 B2)
`
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`MS. KEEFE: Yes, Your Honor. In fact in the 693 -- I apologize, I
`thought I actually had that in my slides -- but in both our petition and our
`reply, we note the passage in the 693 specification that specifically
`contemplates recognizing an input from a key on the phone itself and talks
`specifically about the fact that you’re recognizing that particular key being
`hit from the cell phone, so from that phone, in order to select the file that’s
`going to be played. That is information associated with a cell phone. It is
`the information about the key pad from the cell phone itself and that’s in the
`693, for example, at column 10, line 44 through column 11, line 11.
`JUDGE ARBES: So the informat
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