Atty Docket No. FABO-049/00US
`(309101-2144)
`
`
`
`
`Case IPR2017-00092
`Patent 9,124,717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioners,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00092
`Patent 9,124,717
`
`
`PETITIONERS’ REPLY
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`(309101-2144)
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`
`
`
`Case IPR2017-00092
`Patent 9,124,717
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioners,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00092
`Patent 9,124,717
`
`
`PETITIONERS’ REPLY
`
`
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`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`
`Case IPR2017-00092
`Patent 9,124,717
`
`Table of Contents
`
`
`Page
`
`
`I.
`Introduction ..................................................................................................... 1
`Patent Owner’s Constitutional Arguments are Without Merit ....................... 2
`II.
`III. Claims 1-6 of the ’717 Patent Are Unpatentable............................................ 3
`A.
`“Providing a Website” .......................................................................... 3
`B.
`“Plurality of Visual Images Associated with at Least One
`Compressed Digital Audio and/or Visual File for Selection of at
`Least One Compressed Digital Audio and/or Visual File” .................. 6
`“Digital Signal Processor” ................................................................. 11
`C.
`“Processing” ....................................................................................... 14
`D.
`“OFDM” ............................................................................................. 18
`E.
`IV. Conclusion .................................................................................................... 23
`
`1
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`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`
`
`List of Exhibits
`
`Currently Filed
`
`Case IPR2017-00092
`Patent 9,124,717
`
`
`
`
`
`Exhibit No.
`1068
`
`Title of Document
`Excerpts from Michael D. Scott, Internet and Technology Law
`Desk Reference, Aspen Law and Business, pp. 541-542 (1999)
`
`1069
`
`1070
`
`1071
`
`1072
`
`Excerpts from The American Heritage Dictionary, p. 1398 (4th
`ed. 2000)
`
`“Patent Owner’s Response to Petition for Inter Partes Review of
`U.S. Patent No. 7,548,875,” IPR2014-01236, Paper 21 (Apr. 29,
`2015)
`
`“Appellant Skky, Inc.’s Corrected Opening Brief” filed Aug. 9,
`2016 in Skky, Inc. v. MindGeek, S.A.R.L. et al., Case No. 16-2018
`(Fed. Cir.)
`
`“Appellant Skky, Inc.’s Reply Brief” filed Nov. 21, 2016 in Skky,
`Inc. v. MindGeek, S.A.R.L. et al., Case No. 16-2018 (Fed. Cir.)
`
`Previously Filed
`
`Description of Document
`U.S. Patent No. 9,124,717 to John Mikkelsen et al., entitled “Media
`Delivery Platform”
`
`Declaration of Tal Lavian, Ph.D.
`
`U.S. Patent No. 7,065,342 to Devon A. Rolf, entitled “System and
`Mobile Cellular Telephone Devices for Playing Recorded Music”
`
`Excerpts from Ben Forta et al., WAP Development with WML and
`WMLScript, Sams Publishing (September 2000)
`
`Ex. No.
`1001
`
`1002
`1003
`
`1004
`
`1
`
`
`
`
`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
`Patent 9,124,717
`
`Ex. No.
`1005
`
`Description of Document
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, IEEE Communications
`Magazine (January 2000)
`
`1006
`
`1007
`
`1008
`
`U.S. Patent No. 5,726,978 to Carl Magnus Frodigh et al., entitled
`“Adaptive Channel Allocation in a Frequency Division Multiplexed
`System”
`
`EP 1039683 A2 to Laroia et al., entitled “Frequency hopping multiple
`access with multicarrier signals”
`
`U.S. Patent 5,815,488 to Williams et al., entitled “Multiple User
`Access Method Using OFDM”
`
`1009
`
`Cheong Yui Won et al., A Real-time Sub-carrier Allocation Scheme
`for Multiple Access Downlink OFDM Transmission, IEEE (1999)
`1010 Wonjong Rhee et al., Increase in Capacity of Multiuser OFDM System
`Using Dynamic Subchannel Allocation, IEEE (2000)
`
`1011
`
`1012
`
`1013
`
`1014
` 1015
`
`1016
`
`1017
`
`EP 1033894 A2 to Masatoshi Saito, entitled “Portable telephone
`terminal apparatus for receiving data and data receiving method”
`
`U.S. Patent No. 6,423,892 to Muralidharan Ramaswamy, entitled
`“Method, Wireless MP3 Files from the Internet”
`
`Excerpts from John Hedtke, MP3 and the Digital Music Revolution
`(1999)
`
`Gene Frantz, Digital Signal Processor Trends, IEEE Micro (2000)
`
`E. Lawrey, Multiuser OFDM, Fifth International Symposium on
`Signal Processing and its Applications (Aug. 1999)
`
`U.S. Patent No. 5,732,113 to Timothy Schmidl, entitled “Timing and
`Frequency Synchronization of OFDM Signals”
`
`U.S. Patent No. 6,711,221 to Maxim Belotserkovsky, entitled
`“Sampling Offset Correction in an Orthogonal Frequency System
`Multiplexing System”
`
`2
`
`
`
`
`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
`Patent 9,124,717
`
`Ex. No.
`1018
`
`Description of Document
`Richard Van Nee et al., OFDM
`Communications (2000)
`
`for Wireless Multimedia
`
`1019
`
`1020
`
`1021
`1022
`1023
`1024
`
`1025
`1026
`
`1027
`
`1028
`
`1029
`
`U.S. Patent No. 3,488,445 to Robert W. Chang entitled “Orthogonal
`Frequency Multiplex Transmission System”
`
`Chang, R.W., Synthesis of band-limited orthogonal signals for multi-
`channel data transmission, Bell Labs Technical Journal, no. 45, pp.
`175-1796 (Dec. 1966)
`
`5th International OFDM Workshop 2000
`
`6th International OFDM Workshop 2001
`
`17th International OFDM Workshop 2012
`
`Rainer Grünheid et al., Adaptive Modulation and Multiple Access for
`the OFDM Transmission Technique, Wireless Personal
`Communications (May 2000)
`
`Excerpts from Comprehensive Dictionary of Electrical Engineering
`
`IEEE Std 802-11a-1999, Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) specifications: High-
`speed Physical Layer in the 5 GHz Band
`
`U.S. Patent No. 6,125,124 to Jari Junell, entitled “Synchronization
`and Sampling Frequency in an Apparatus Receiving OFDM
`Modulated Transmissions”
`
`U.S. Patent No. 7,133,352 to Zion Hadad, entitled “Bi-Directional
`Communication Channel”
`
`U.S. Patent No. 6,108,810 to Brian Kroeger, entitled “Digital Audio
`Broadcasting Method Using Puncturable Convolutional Code”
`
`1030
`
`Ahmad R.S. Bahai, Multi-Carrier Digital Communications (1999)
`
`3
`
`
`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
`Patent 9,124,717
`
`Ex. No.
`1031
`
`Description of Document
`Leonard J. Cimini, Jr., Analysis and Simulation of a Digital Mobile
`Channel Using Orthogonal Frequency Division Multiplexing, IEEE
`Trans. Commun., Vol. 33, No. 7, pp. 665-675 (July, 1985)
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`Giovanni Santella, Performance Evaluation of Broadband
`Microcellular Mobile Radio in M-QAM OFDM Systems, IEEE
`(1996)
`
`H. Rohling et al., Performance of an OFDM-TDMA Mobile
`Communication System, IEEE (1996)
`
`Antti Toskala et al., Cellular OFDM/CDMA Downlink Performance
`in the Link and System Levels, IEEE (1997)
`
`Fredrik Tufvesson et al., Pilot Assisted Channel Estimation for
`OFDM in Mobile Cellular Systems, IEEE (1997)
`
`Branimir Stantchev et al., An Integrated FSK-signaling Scheme for
`OFDM-based Advanced Cellular Radio, IEEE (1997)
`
`J. C-I Chuang, An OFDM-based System with Dynamic Packet
`Assignment and Interference Suppression for Advanced Cellular
`Internet Service, IEEE (1998)
`
`Branimir Stantchev et al., Burst Synchronization for OFDM-based
`Cellular Systems with Separate Signaling Channel, IEEE (1998)
`
`Kevin L. Baum, A Synchronous Coherent OFDM Air Interface
`Concept for High Data Rate Cellular Systems, IEEE (1998)
`
`Li Ping, A Combined OFDM-CsDMA Approach to Cellular Mobile
`Communications, IEEE Transactions on Communications, Vol. 47,
`No. 7, pp. 979-982 (July 1999)
`
`Justin Chuang et al., High-Speed Wireless Data Access Based on
`Combining EDGE with Wideband OFDM, IEEE Communications,
`Vol. 37, No. 11, pp. 92-98 (Nov. 1999)
`
`4
`
`
`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
`Patent 9,124,717
`
`Ex. No.
`1042
`
`Description of Document
`Justin Chuang et al., Beyond 3G: Wideband Wireless Data Access
`Based on OFDM and Dynamic Packet Assignment, IEEE
`Communications Magazine (July 2000)
`
`1043
`
`1044
`
`1045
`
`1046
`
`Chi-Hsiao Yih et al., Adaptive Modulation, Power Allocation and
`Control for OFDM Wireless Networks, IEEE (2000)
`
`Fumilhide Kojima et al., Adaptive Sub-carriers Control Scheme for
`OFDM Cellular Systems, IEEE (2000)
`
`Chi-Hsiao Yih et al., Power Allocation and Control for Coded OFDM
`Wireless Networks, IEEE (2000)
`
`U.S. Patent No. 5,828,650 to Esa Malikamaki, entitled “Combined
`Modulation—and Multiple Access Method for Radio Signals”
`
`1047
`
`EP 0786890 A2 to Mitsuhiro Suzuki, entitled “Resource Allocation
`in a Multi-User, Multicarrier Mobile Radio System”
`1048 WO 1997030531 A1 to Roger Larsson, entitled “Improvements in or
`Relating to OFDM Systems”
`
`1049
`
`1050
`
`1051
`
`1052
`
`U.S. Patent No. 6,188,717 to Stefan Kaiser, entitled “Method of
`Simultaneous Radio Transmission of Digital Data Between a
`Plurality of Subscriber Stations and a Base Station”
`
`U.S. Patent No. 6,711,120 to Rajiv Laroia, entitled “Orthogonal
`Frequency Division Multiplexing Based Spread Spectrum Multiple
`Access”
`
`U.S. Patent No. 6,553,019 to Rajiv Laroia, entitled “Communications
`System Employing Orthogonal Frequency Division Multiplexing
`Based Spread Spectrum Multiple Access”
`
`U.S. Patent No 6,922,388 to Rajiv Laroia, entitled “Signal
`Construction, Detection and Estimation For Uplink Timing
`Synchronization and Access Control in a Multi-Access Wireless
`Communication System”
`
`5
`
`
`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
`Patent 9,124,717
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`Ex. No.
`1053
`
`Description of Document
`U.S. Patent Appl. Pub. No. 2001/0021182 to Takashi Wakutsu,
`entitled “Transmitter Apparatus and Receiver Apparatus and Base
`Station Making Use of Orthogonal Frequency Division Multiplexing
`and Spectrum Spreading”
`
`1054
`
`1055
`
`1056
`
`1057
`1058
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`1064
`1065
`
`Laurie Ann Toupin, Flash-OFDM
`Communications into the Main Stream
`
`‘Hops’ Wireless Data
`
`U.S. Provisional Patent Application No. 60/167,179 to Devon Rolf,
`filed November 23, 1999, entitled “System, Method, and Device for
`Playing Recorded Music on a Wireless Communications Device”
`
`Redline Comparison of U.S. Patent No. 7,065,342 and U.S.
`Provisional Patent Application No. 60/167,179
`
`Excerpts from Andy Rathbone, MP3 for Dummies (1999)
`
`Excerpts from Scot Hacker, MP3 The Definitive Guide (March 2000)
`
`U.S. Patent No. 6,560,577 to Jay G. Gilbert, entitled “Process for
`Encoding Audio from an Analog Medium into a Compressed Digital
`Format Using Attribute Information and Silence Detection”
`
`Date-stamped excerpts of Ben Forta et al., WAP Development with
`WML and WMLScript, Sams Publishing (September 2000)
`
`Date-stamped excerpts of Scot Hacker, MP3 The Definitive Guide
`(March 2000)
`
`U.S. Patent No. 6,693,236 to Eric J. Gould et al., “User Interface for
`Simultaneous Management of Owned and Unowned Inventory”
`
`Excerpts from Random House Webster’s College Dictionary (1999)
`
`Biography of Mark R. Weinstein
`
`Declaration of Mark R. Weinstein ISO Motion for Admission Pro
`Hac Vice
`
`1066
`
`Biography of Yuan Liang
`
`6
`
`
`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Case IPR2017-00092
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`Ex. No.
`1067
`
`Description of Document
`Declaration of Yuan Liang ISO Motion for Admission Pro Hac Vice
`
`
`
`
`
`
`7
`
`
`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`I.
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`
`
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`Case IPR2017-00092
`Patent 9,124,717
`
`INTRODUCTION
`The Petition established that claims 1, 2, 4 and 5 are obvious over Rolf in view
`
`of Forta, Gatherer, Frodigh, and Gould, and that claims 3 and 6 are obvious over
`
`Rolf in view of Forta, Gatherer, Frodigh, Gould, and Hacker. The Petition was
`
`supported by extensive evidence, including dozens of contemporaneous documents
`
`and a comprehensive expert declaration from Dr. Lavian. The Patent Owner did not
`
`depose or cross-examine Dr. Lavian, nor did the Patent Owner submit any expert
`
`declaration of its own. The evidence set forth in the Petition is thus uncontested.
`
`The Patent Owner’s Response instead recycles the same failed arguments the
`
`Board and/or the Federal Circuit have rejected. With respect to the OFDM
`
`limitations, for example, the Patent Owner asserts that a person of ordinary skill in
`
`the art would not have been motivated to utilize OFDM with the cell phone of Rolf.
`
`But the Board rejected this same argument in its Final Written Decision in
`
`MindGeek, S.A.R.L. et al. v. Skky, Inc., IPR2014-01236, which was affirmed by the
`
`Federal Circuit in Skky, Inc. v. MindGeek, S.A.R.L.., 859 F.3d 1014 (Fed. Cir. 2017).
`
`As the Board recently observed in a related proceeding, “in MindGeek, the Board
`
`and the Federal Circuit similarly concluded that it would have been obvious to utilize
`
`OFDM for Rolf’s system of delivering music files to a cellular telephone.”
`
`(IPR2017-00550, Paper 11, at 10.)
`
`The Patent Owner also recycles arguments—almost verbatim—from its
`
`1
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Preliminary Response, adding little to no analysis responsive to the Board’s stated
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`Case IPR2017-00092
`Patent 9,124,717
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`
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`rationales for rejecting those arguments in the Institution Decision. For example,
`
`the Patent Owner repeats apparent claim construction arguments from its
`
`Preliminary Response with respect to the phrases “providing a website” and
`
`“processing,” which the Board correctly rejected in its Institution Decision. The
`
`Patent Owner’s arguments are based on unduly narrow interpretations that have no
`
`support in the specification, and the Patent Owner has offered no new evidence or
`
`argument to justify a departure from the Institution Decision.
`
`Finally, with respect to the “digital signal processor” (DSP) limitation, the
`
`Patent Owner asserts that Rolf and Gatherer cannot be combined because Rolf is
`
`directed to a 3G wireless communication system and Gatherer to a GSM/2G system.
`
`But as the Board correctly and repeatedly found, this argument is based on a gross
`
`mischaracterization of both references. For the reasons set forth below and in the
`
`Petition, the Petitioners respectfully requests that the Board find claims 1-6
`
`unpatentable based on the instituted grounds.
`II.
`PATENT OWNER’S CONSTITUTIONAL ARGUMENTS ARE WITHOUT MERIT
`
`The Patent Owner devotes the first seven pages of its Response to asserting
`
`that inter partes review (IPR) is unconstitutional. The Federal Circuit thoroughly
`
`considered and rejected those arguments in MCM Portfolio LLC v. Hewlett-Packard
`
`Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 292 (2016). The
`
`2
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`Petitioners are obviously aware that the Supreme Court agreed in Oil States to take
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`Case IPR2017-00092
`Patent 9,124,717
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`up the issue of the constitutionality of the IPR procedure. Oil States Energy Servs.,
`
`LLC v. Greene’s Energy Grp., LLC, 639 F. App’x 639 (Fed. Cir. 2016), cert. granted
`
`in part, 137 S. Ct. 2239 (2017). But until a decision in Oil States issues, MCM
`
`Portfolio remains controlling law.
`III. CLAIMS 1-6 OF THE ’717 PATENT ARE UNPATENTABLE
`A.
`“Providing a Website”
`Claim 1 recites “providing a website to the cell phone; wherein the website
`
`is associated with the at least one compressed digital audio and/or visual file.”
`
`Recycling an argument it unsuccessfully made pre-institution, the Patent Owner
`
`argues that Forta does not disclose this limitation because, according to the Patent
`
`Owner, Forta instead teaches “a simplified, menu based representations of a website
`
`viewable on cellular phones.” (Response, at 26.) According to the Patent Owner,
`
`Forta “recognizes that such depictions are not the same as a website viewed on a
`
`conventional computer, noting that ‘the results can be far from optimal.’” (Id.
`
`(quoting Forta, at p.100).) The Board rejected this argument in its institution
`
`decision, reasoning that the claim language does not require “that the cell phone
`
`display the website in the same manner as a conventional computer, nor does it
`
`exclude a website with a simplified menu.” (Institution Decision, Paper 7, at 7.)
`
`The Board’s decision is supported by the patent specification, which makes
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`3
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`clear that a full-blown website designed for a conventional desktop computer is not
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`Case IPR2017-00092
`Patent 9,124,717
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`required. The specification merely states that “a website suitable for viewing and
`
`selecting downloading sound and/or image clips or entire files may be used.”1 (’717,
`
`3:36-41.) The specification, in fact, expressly contemplates that the digital audio or
`
`visual files may be “accessible by way of a specialized website” that may be
`
`accessed by a “cell phone” or “other hand held device.” (’717, 5:3-11 (“The present
`
`invention may include a number of modules …. These modules include a server of
`
`the files accessible by way of a specialized website for viewing, … files or portions
`
`thereof …. A telephone, be it conventional, cell phone or other hand held device
`
`with access to a communication network can access the server ... through the
`
`website.”).) This is also consistent with extrinsic evidence showing that courts have
`
`understood the term “website” to simply refer to “[a] group of related documents
`
`sharing a Web ‘address.’” (Ex. 1068, at p.541.) The Patent Owner presents no
`
`evidence to support its narrow interpretation of the claimed website.
`
`The Patent Owner’s narrow interpretation is also inconsistent with Forta,
`
`which refers to these so-called “simplified representations” as mobile websites.
`
`(Forta, p.99 (“Figure 13.2 shows what the Amazon.com site looks like when it comes
`
`through an HTML/WML Translator.”), p.100 (“This is the Amazon.com site that is
`
`
`1 All underlining has been added for emphasis.
`
`4
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`
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`Atty Docket No. FABO-049/00US
`(309101-2144)
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`written explicitly for phones with a WAP browser in them.”).) The combination of
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`Case IPR2017-00092
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`Rolf and Forta therefore disclose the claimed “website.”
`
`The Patent Owner also argues that “[t]he simplified representation in Forta is
`
`devoid of any compressed audio or audio-visual data files.” (Response, at 26.) But
`
`the Petitioners did not rely on Forta for the “compressed digital audio and/or visual
`
`file” recited in the claim. Rolf itself discloses the ability of a client device to connect
`
`to the server via a website (Petition, at 19 (citing Rolf, 5:32-34, 12:52-55)), and the
`
`ability to select a music recording from a “menu or listing of recordings.” (Petition,
`
`at 23-24 (quoting Rolf, 5:30-39, 9:4-6).) The Petition cited Forta because it provides
`
`concrete examples of how the “menu or listing of recordings” in Rolf could have
`
`been provided through a website with interactive menus. (Petition, at 27 (citing
`
`Forta, Figs. 13.3, 13.5, p.317), 28.) The Patent Owner’s attempt to focus
`
`individually on Forta, and ignore the combination of Forta with Rolf, should be
`
`rejected. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
`
`obviousness cannot be established by attacking references individually where the
`
`rejection is based upon the teachings of a combination of references.”). The Petition
`
`also provided an extensive explanation of the motivation to combine, as the Board
`
`recognized in its institution decision. (Petition, at 21-23; Institution Decision, at 7.)
`
`Finally, the Patent Owner asserts that “[n]either Forta nor Rolf explains how
`
`to overcome these limitations and modify the simplified representation to function
`
`5
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`with the device disclosed in Rolf.” (Response, at 27; see also id., at 28.) But the
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`Case IPR2017-00092
`Patent 9,124,717
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`
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`Patent Owner does not explain why the alleged limitations of the mobile websites
`
`would have made them unsuitable for the system of Rolf. The claim language does
`
`not require that the provided “website” be complex—in fact, claim 1[b] requires
`
`only that the website provide “at least one compressed digital audio or audio-visual
`
`data file,” and as such, could be satisfied by a simple website listing only one file.
`
`As the Petition explained, Forta specifically discloses that mobile websites can be
`
`used to provide displayable menus for e-commerce, such as selecting items from an
`
`on-line store. (Petition, at 20-23; Lavian, Ex. 1002, ¶¶91, 92.) Accordingly, the
`
`Patent Owner’s arguments should be rejected. Cf. The Toro Company v. MTD
`
`Prods. Inc., IPR2016-01352, Paper 9 at 10-11 (PTAB Jan. 4, 2017) (declining to
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`institute where, unlike the present case, patent owner explained why the proposed
`
`modification “may have unintended consequences,” while the petitioner provided
`
`“essentially no explanation”).
`
`B.
`
`“Plurality of Visual Images Associated with at Least One
`Compressed Digital Audio and/or Visual File for Selection of at
`Least One Compressed Digital Audio and/or Visual File”
`Claim 1 recites “wherein the website includes a plurality of visual images
`
`associated with at least one compressed digital audio and/or visual file for
`
`selection of at least one compressed digital audio and/or visual file.” The Patent
`
`Owner first attacks Forta and characterizes it as limited to “a simplified
`
`6
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`representation of a website for viewing by way of WAP” that is “devoid of any
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`compressed audio or audio-visual data files.”2 (Response, at 28.) But this “focused
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`attack” on Forta ignores how Forta is combined with Rolf, which undisputedly
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`discloses the claimed “at least one compressed digital audio and/or visual file.” See
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`Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017);
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`see also In re Merck, 800 F.2d at 1097 (“Non-obviousness cannot be established by
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`attacking references individually where the rejection is based upon the teachings of
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`a combination of references.”).
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`Patent Owner also attacks Gould in a similar vein, asserting that it does not
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`“relate to cellular devices, but instead teaches the display of a user interface on the
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`screen of a conventional computer.” (Response, at 24; see also id., at 28-29.) As an
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`initial matter, contrary to the Patent Owner’s assertion, Gould is expressly not
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`limited to “conventional computers”: “While the invention has been described in
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`2 The Board already correctly found a similar attack on Forta to be “not persuasive,”
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`(Institution Decision, at 7) and Patent Owner has introduced no new evidence or
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`argument in its Response to rebut Petitioners’ initial proffer. Any attorney argument
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`regarding what Patent Owner believes was or was not available on Amazon.com “at
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`the time” is entirely unsupported and does not affect the record. (See Response, at
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`26-28.)
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`terms of use a personal computer, those skilled in the art will recognize that the
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`present invention can be used in connection with other similar electronic equipment
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`such as a hand held device…” (Gould, 4:46-50.) And as this Board has emphasized
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`in a related proceeding, “[p]rior art references must be considered as a whole for all
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`that they teach, regardless of the specific problems to which they are directed.”
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`(IPR2017-00089, Paper 7, at 14.)
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`Moreover, as explained in the Petition, it would have been obvious to combine
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`Rolf with Forta and Gould, and this combination would have resulted in a website
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`that provides compressed digital audio or audio-visual data files to the cell phone in
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`Rolf according to the menu, selection, and visual image techniques taught by Forta
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`and Gould. (Petition, at 31-32 (citing Lavian, ¶ 100).) The Petition further explained
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`in detail why “[a] person of ordinary skill in the art would have found it obvious to
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`associate visual images with the plurality of compressed digital audio in Rolf using
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`the interactive menu and display techniques described in Forta and Gould.”
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`(Petition, at 32 (citing Lavian, ¶102).) For instance, the Petition explains several
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`motivations to combine Rolf and Forta: “Rolf already discloses a server on the
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`World Wide Web accessible to cell phones, but does not provide a detailed
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`discussion of the website it provides. A person of ordinary skill in the art would
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`have found this omission insignificant because techniques for providing websites to
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`cell phones, such as the WAP techniques described in Forta, were already well-
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`known.” (Petition, at 21-22 (citing Rolf, 5:30-35, 5:46-53, 5:64-66, 9:10-15, 12:49-
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`55 and Lavian, ¶84).) Forta also disclosed its general utility in providing websites
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`on mobile devices and underscored that “WAP will succeed because it is supported
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`by almost every major hardware, software, device, data carrier, and telecom vendor.”
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`(Petition, at 22 (citing Forta, p. 1).) As further explained by Dr. Lavian, one of
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`ordinary skill in the art would have understood the value in using WAP as disclosed
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`by Forta when implementing a system such as that disclosed in Rolf. (Petition, at
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`22 (citing Lavian, ¶¶84, 85).) For the same reasons, one of ordinary skill would have
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`been confident that such an attempt would be successful.
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`The Petition also provided a robust rationale for combining Rolf and Gould.
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`“Gould explains that the user interface can be ‘used with music which can be
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`downloaded directly from a network such as the Internet using MP3 or similar
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`technology.’ Rolf is directed to a system for downloading music recordings
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`(including MP3 files) over a network such as the Internet.” (Petition, at 32-33 (citing
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`Gould, 6:1-3 and Rolf, 3:17-21).) Further motivation is also described. “Rolf and
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`Gould both further disclose a menu or listing-based interface and the ability of the
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`user to initiate a purchase of a recording from the interface.” (Petition, at 33 (citing
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`Rolf, 3:64-4:6, 6:53-59, 9:10-15 and Gould, 3:23-30, 5:57-60, Fig. 4).)
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`(Petition, at 29-30 (Gould, Fig. 4).) Dr. Lavian’s declaration is also cited to support
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`the Petition’s explanation that “[a] person of ordinary skill in the art would have
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`been motivated to improve the interface of Rolf by incorporating the display of
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`visual images (including the album cover graphics taught in Gould) in order to
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`provide a richer, more informative visual experience.” (Petition, at 33 (citing Lavian
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`¶¶103, 104).)
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`Finally, the Patent Owner asserts that “[n]either Gould nor Rolf explains how
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`to bridge the gap from a conventional computer system to a mobile device.”
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`(Response, at 29.) But by focusing on Rolf and Gould, the Patent Owner ignores the
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`fact that, as explained at length by Petitioners and Dr. Lavian, the entirety of Forta
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`is dedicated to teaching how to develop and deliver websites to mobile devices.
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`(Petition, at 7-8, 19-21, 26-28 (discussing Forta); Lavian, ¶¶60-62, 79-82, 89-90, 94-
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`96 (same).) For the foregoing reasons, Petitioners have sufficiently shown that the
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`limitation “wherein the website includes a plurality of visual images associated with
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`at least one compressed digital audio and/or visual file for selection of at least one
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`compressed digital audio and/or visual file” would have been obvious.
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`C.
`“Digital Signal Processor”
`Claim 1 recites a “cell phone having a digital signal processor.” The Petition
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`explained that “[i]t would have been obvious to a person of ordinary skill in the art
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`to combine Rolf with Gatherer, predictably resulting in the cell phone 12 of Rolf
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`having a digital signal processor.” (Petition, at 36.) In an attempt to find fault with
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`this straightforward combination, the Patent Owner mischaracterizes Rolf as being
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`directed to 3G wireless, and Gatherer as being directed to GSM/2G wireless. From
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`these false premises, the Patent Owner argues that a person of ordinary skill “would
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`not be motivated to apply GSM or 2G principles to 3G knowing that the technologies
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`could evolve in very different ways.” (Response, at 31.) This argument should be
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`rejected.
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`The Board correctly recognized that “although Rolf states that encoded music
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`data is ‘preferably transmitted’ by a 3G network, Rolf is not limited to a 3G
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`network.” (Institution Decision, at 14.) Indeed, Rolf makes clear that data can be
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`transmitted over a “packet switched network,” which need not be 3G. (Rolf, 3:21-
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`25, 13:13-15.) Likewise, nothing in Gatherer limits the applicability of DSPs to 2G
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`systems. Although Gatherer discusses the use of DSPs in 2G/GSM systems in
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`existence at the time of its publication, Gatherer also provides extensive discussion
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`on the use of DSPs in 3G systems. (E.g., Gatherer, p.85 (“With the advent of
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`wireless data applications and the increased bandwidth of 3G, we expect this trend
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`to accelerate.”), p.86 (“As the industry shifts from second-generation to 3G wireless
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`we see the percentage of the physical layer MIPS that reside in the DSP going from
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`essentially 100 percent in today’s technology for GSM to about 10 percent for wide
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`band code-division multiple access (WCDMA).”), p.87 (“In this section we discuss
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`how coprocessors can complement the function of programmable DSPs in the
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`implementation of a flexible 3G platform.”), p.89, (“We estimate that to support 240
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`3G voice channels … would require a 45K gate coprocessor and only 6 MHz of DSP
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`processing on a C6x.”).) As such, far from dissuading a person of ordinary skill
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`from using a DSP with the cell phone of Rolf, Gatherer’s extensive discussion on
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`the use of DSPs for future 3G technology provides a further motivation to combine
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`with a 3G-compatible system. Thus, in attempting to draw a false distinction
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`between the technologies in Rolf and Gatherer, the Patent Owner has highlighted yet
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`another express motivation to combine.3
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`The Patent Owner further argues that “Petitioners have not provided sufficient
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`evidence that one of skill would have a reasonable expectation of success that the
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`proposed combination would work.” (Response, at 31.) This argument ignores the
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`extensive explanation that the Petition provided on this subject. The Petition
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`explained, for example, that DSPs were widely-available, off-the-shelf components
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`that had already been incorporated into cellular phones. (Petition, at 37-38 (citing
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`Lavian, ¶118.) Dr. Lavian explained in his unrebutted declaration that off-the-shelf
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`DSPs had existed since at least the early 1980s, and that “[b]y the time of the alleged
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`invention, DSPs were standard components in cell phones.” (Lavian, ¶¶30, 32.) Dr.
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`Lavian also cited several contemporaneous publications (in addition to Gatherer)
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`3 Indeed, even the very sentence from Gatherer the Patent Owner cites to argue that
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`“the application of GSM principles to 3G technology is ‘debatable’” (Response, at
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`31), Gatherer goes on to suggest the existence of a close kinship between GSM and
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`3G technology with respect to the use of DSPs in cellular telephony. (Gatherer, p.84,
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`(“The assumption is, of course, that third-generation cellular (3G) products will
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`evolve in a similar manner to GSM, which is in itself debatable, but we believe that
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`history does have some good points to make with respect to 3G.”).)
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`demonstrating that DSPs had already been deployed for precisely the purposes
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`contemplated by the claims. (Id., ¶¶30, 31.) Dr. Lavian explained that the prior art
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`references cited in the combination provided sufficient detail to allow the
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`combination to be practiced without undue experimentation, and that one of ordinary
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`skill certainly “coul
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