Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 63
`Entered: January 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00721
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge TROCK.
`
`Opinion Dissenting filed by Administrative Patent Judge ARBES.
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 63
`Entered: January 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00721
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge TROCK.
`
`Opinion Dissenting filed by Administrative Patent Judge ARBES.
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1
`
`
`
`
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`INTRODUCTION
`I.
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Volkswagen Group of America, Inc. (“Petitioner”) has shown by a
`preponderance of the evidence that claims 9–11 and 23 (the “challenged
`claims”) of U.S. Patent No. 8,166,081 B2 (Ex. 1001, “the ’081 Patent”) are
`unpatentable. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`A. Procedural History
`Petitioner Volkswagen Group of America, Inc. filed a Petition (Paper
`1, “Pet.”) requesting inter partes review of claims 9–11 and 23 of the ’081
`Patent. Patent Owner StratosAudio, Inc. filed a Preliminary Response.
`Paper 6. Pursuant to an Order, Paper 11, Petitioner filed a Reply, Paper 12,
`and Patent Owner filed a Sur-reply, Paper 14 to address issues raised in
`Patent Owner’s Preliminary Response. Based upon the record at that time,
`we instituted inter partes review on all challenged claims on the grounds
`presented in the Petition. Paper 16 (“Institution Decision” or “Dec.”).
`After institution, Patent Owner filed a Response, Paper 27
`(“PO Resp.”), Petitioner filed a Reply, Paper 31 (“Pet. Reply”), and Patent
`Owner filed a Sur-reply, Paper 36 (“PO Sur-reply”).
`On June 2, 2022, we granted a Motion for Joinder with IPR2021-
`00721 filed by Mazda Motor of America, Inc., Subaru of America, Inc., and
`Volvo Car USA, LLC in IPR2022-00203. See Paper 37. Pursuant to that
`Order, Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo
`Car USA, LLC maintained a secondary role in this proceeding.
`On July 21, 2022, we issued an Order, Paper 43, terminating Mazda
`Motor of America, Inc. from this proceeding due to a settlement.
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`On July 22, 2022, an oral hearing was held. A transcript of the
`hearing is made part of the record. Paper 52 (“Tr.”).
`On September 29, 2022, we issued an Order, Paper 56, terminating
`Volvo Car USA, LLC from this proceeding due to a settlement.
`Concurrently with this Final Written Decision we are issuing an order
`terminating Subaru of America, Inc., from this proceeding due to a
`settlement.
`B. Related Matters
`
`The parties identify the following as related matters:
`• StratosAudio, Inc. v. Hyundai Motor America, No. 20-cv-
`01125-ADA (W.D. Tex.);
`• StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 20-cv-
`01126-ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Subaru of America, Inc., No. 20-cv-01128-
`ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Volvo Cars USA, LLC, No. 20-cv-01129-
`ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Volkswagen Group of America, Inc., No.
`6:20-cv-1131 (W.D. Tex.);1
`
`Pet. 1; Paper 4, 1.
`
`
`1 Patent Owner identifies this proceeding as StratosAudio, Inc. v.
`Volkswagen Group of America, Inc., No. 20-cv-01127-ADA (W.D. Tex.).
`Paper 4, 1. The correct case number appears to be 6:20-cv-1131-ADA.
`Ex. 2006, 1.
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`Patent 8,166,081 B2
`C. The ’081 Patent
`The ’081 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:18–20. The
`’081 Patent explains that it is generally desirable to associate products with
`specific characteristics and such associations may increase the chance that a
`potential customer will decide to purchase a product when the product is
`associated with a favorable characteristic. Id. at 1:22–30. In view of this,
`the ’081 Patent states that an advertisement may be more effective if it is
`associated with an image of a celebrity or another media element that
`exhibits favorable characteristics. Id. at 1:30–34.
`The ’081 Patent describes a media enhancement system that is
`configured to associate a secondary media signal (e.g., an advertisement) to
`a primary media signal (e.g., a radio broadcast). Id. at 3:8–12. The ’081
`Patent explains that the secondary media signal may be based on the content
`of the primary media, user characteristics (e.g., demographic and/or
`geographic information), and/or third party preferences (e.g., the goals of
`advertisers). Id. at 3:17–21.
`The ’081 Patent discloses one example in which a radio station
`transmits a song in a first media signal that is received by a user enabled-
`device (e.g., a cellular phone with a radio). Id. at 3:27–30. A media
`association system analyzes the song to determine what media elements can
`be associated with the song, and the media association system provides a
`second media signal (e.g., an advertisement) to the user enabled-device. Id.
`at 3:30–36. While the user enabled-device is playing the song, the user
`enabled-device displays the media content in the second media signal (e.g., a
`still or moving picture of the advertised product). Id. at 3:37–40. The ’081
`Patent discloses another embodiment in which a user enabled-device is
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`playing a song from a first media signal, media content from a second media
`signal (e.g., a still or moving picture with selectable audio of an advertised
`product) is displayed by the user enabled-device, and the audio track for the
`first media signal is paused upon selection of the second media signal audio.
`Id. at 3:41–47.
`Figure 1A of the ’081 Patent is reproduced below.
`
`
`
`Figure 1A, above, is a block diagram that depicts signals and
`identifiers correlated and transmitted between elements of a media
`enhancement system. Id. at 2:41–43. The system can include first
`transmitter 3, control management system 100, media association system 2,
`primary device 4, and advertisement entity 6. Id. at 8:11–16. First
`transmitter 3 can be broadcast content from a radio station, from over the
`internet, through a cable line, or satellite, and/or through other
`communication methods. Id. at 8:17–24. For instance, first transmitter 3
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`can send first media signal 111 that is received by primary device 4. Id. at
`8:41–43.
`Figure 1B of the ’081 Patent is reproduced below.
`
`
`According to the ’081 Patent, Figure 1B, above, is a block diagram
`illustrating that media association system 2 can send or transmit secondary
`or related media signal 114, using information regarding the media content
`of first media signal 111, to primary device 4 and/or ancillary device 5
`through an Internet connection. Id. at 9:34–37, 9:39–48. Advertisement
`entity 6 can send advertisement signal 113 to media association system 2 so
`advertisement signal 113 is provided to primary device 4 upon the latter
`receiving a specific song from first transmitter 3 via first media signal 111.
`Id. at 10:24–29.
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`The ’081 Patent explains that unique identifier 115 can be provided
`for each media signal (i.e., first media signal 111 and advertisement media
`signal 113) to facilitate the assignment and/or sending of advertisement
`media signal 113 with first media signal 111. Id. at 12:66–13:3. According
`to the ’081 Patent, unique identifier 115 can be stored in a database and/or
`other location, such as control management system 100, along with other
`relevant information. Id. at 13:13–15. The ’081 Patent discloses that unique
`identifier 115 can be used by media association system 2, advertisement
`entity 6, first transmitter 3, and/or primary device 4 and/or control
`management system 100 to track and/or record the results of any signal and
`to determine whether the signal should be provided to primary device 4
`and/or the user. Id. at 13:16–22.
`Figure 3 of the ’081 Patent is reproduced below.
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`Figure 3, shown above, is an illustration that depicts primary device 4,
`such as a radio-enabled cellular phone, with display panel 450 that is
`connected to media association system 2. Id. at 2:50–51, 18:55–57, 19:11–
`13, 19:17. Primary device 4 receives first media signal 111 (not shown in
`Fig. 3) via receiver 455 and/or wire data connection 470. Id. at 18:57–59.
`First media signal 111 includes, for example, a radio program that primary
`device 4 can play to a user via speaker 453. Id. at 18:61–63. Display panel
`450 can show information relating to the radio program being played. Id. at
`19:13–15. For instance, upper portion 451 of the display panel can include
`textual information corresponding to the radio’s music. Id. at 19:17–22.
`The information about the radio’s music may be obtained from a Radio
`Broadcast Data System (RBDS) and/or Radio Data System (RDS) signal
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`accompanying first media signal 111 when the latter is in the form of a radio
`signal. Id. at 24:63–65. Lower panel 452 displays advertisement media
`signal 113 (not shown in Fig. 3), which may comprise any form of media
`content. Id. at 12:40–42, 19:45–46.
`Primary device 4 can also send signals to transmitter 3, media
`association system 2, control management system 100, and/or advertisement
`entity 6. Id. at 15:9–12. For example, the signals from primary device 4 can
`be responses to interactive media signals. Id. at 15:12–14. Primary device 4
`can transmit user behavior, can report location, direction of motion, and/or
`speed, and can detect other information about a user and/or the user’s
`location and/or environment. Id. at 15:17–27. The ’081 Patent explains that
`this information can be used by media association system 2 to determine
`what media and/or advertisements to send to primary device 4 to obtain a
`user’s reaction and/or what media and/or advertisements are likely to elicit a
`positive reaction at a given time and/or when the user is in a given state or
`environment. Id. at 15:27–34.
`D. Challenged Claims
`Petitioner challenges claims 9–11 and 23. Claim 9 is the only
`independent claim. Claim 9 is reproduced below:
`9[pre] A
`system
`for
`combining multiple media
`comprising:
`9[a] a first receiver module configured to receive at least
`a first media content and data enabling
`the
`identification of a specific instance of the first
`media content from a first broadcast medium;
`9[b] a second receiver module configured to receive at
`least a second media signal content and uniquely
`identifying data specific to at least the second media
`content,
`
`9
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`Patent 8,166,081 B2
`9[c]
`the second media content received discretely from
`the first media content;
`9[d] an output system configured to present concurrently
`the first media content and the second media content
`on an output of the first receiver module or the
`second receiver module;
`9[e] an input module configured to receive at least a
`response input responsive to the second media
`content; and
`9[f] a transmitting module configured to transmit a
`response message having at least the uniquely
`identifying data specific to the second media
`content to a computer server.
`Ex. 1001, 35:22–41 (bracketed labelling designated by Petitioner; see
`Pet. 15–42).
`
`E. Evidence
`Petitioner relies upon the following evidence:
`(1) U.S. Patent No. US 6,349,329 B1, issued February 19, 2002
`(“Mackintosh”) (Ex. 1004);
`(2) U.S. Patent Application Publication No. 2005/0262542 A1,
`published November 24, 2005 (“DeWeese”) (Ex. 1005); and
`(3) Declarations of Tim A. Williams, Ph.D. (Exs. 1003, 1016).
`Patent Owner relies on the declaration of Todd Moon, Ph.D.
`(Ex. 2019).
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`Patent 8,166,081 B2
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`
`Mackintosh
`Mackintosh
`DeWeese
`DeWeese
`
`Basis
`
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`
`Claims Challenged
`9–11, 23
`9–11, 23
`9–11, 23
`9–11, 23
`
`Pet. 3.
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Whether a reference anticipates is assessed from the perspective of an
`ordinarily skilled artisan. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
`1323, 1336 (Fed. Cir. 2008) (“[T]he meaning of a prior art reference requires
`analysis of the understanding of an artisan of ordinary skill.”). In
`determining the level of skill in the art, we consider the type of problems
`encountered in the art, the prior art solutions to those problems, the rapidity
`with which innovations are made, the sophistication of the technology, and
`the educational level of active workers in the field. Custom Accessories, Inc.
`v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic
`Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that “a person of ordinary skill in the art
`(‘POSITA’) would have had at least a B.S. in computer science or electrical
`engineering or a related field, and approximately three years of experience
`working in the communications or Internet-related industries” and that this is
`approximate because “a higher education or skill level might make up for
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`less experience, and vice-versa; for example, a POSITA could have a
`master’s degree with no industry experience.” Pet. 7 (citing Ex. 1003 ¶ 33).
`Patent Owner does not dispute this level of skill. PO Resp. 11–12.
`Petitioner’s description of the level of ordinary skill is generally
`consistent with the subject matter of the ’081 Patent. We agree with
`Petitioner’s description with the exception of the qualifier “at least” to keep
`the description from extending to a level beyond that of ordinary skill.
`Accordingly, for purposes of this Final Written Decision, a person of
`ordinary skill in the art is a person with a bachelor’s degree in computer
`science or electrical engineering or a related field, and approximately three
`years of experience working in the communications or Internet-related
`industries, or other equivalent industry experience in the field. A person
`with a master’s degree in one of these fields with less industry experience
`would also qualify as a person of ordinary skill in the art.
`B. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). Under Phillips, claim terms are generally given their
`ordinary and customary meaning as would be understood by one with
`ordinary skill in the art in the context of the specification, the prosecution
`history, other claims, and even extrinsic evidence including expert and
`inventor testimony, dictionaries, and learned treatises, although extrinsic
`evidence is less significant than the intrinsic record. Phillips, 415 F.3d at
`1312–17. Usually, the specification is dispositive, and it is the single best
`guide to the meaning of a disputed term. Id. at 1315.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(in the context of an inter partes review, applying Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`1. “media content”
`Petitioner asserts that it adopts the ’081 Patent’s definition of “media
`content,” which is:
`[T]he terms “media” or “media content” are broad terms that
`comprise any form of content, including without limitation,
`graphics, videos, sounds, text, text messages, interactive
`applications, vibrations, television and/or radio programming,
`podcasts, movies, songs, games, telephone conversations,
`speeches, news, information, advertisements, polls votes,
`personal messages, and/or other physical manifestations
`capable of communicating a concept or idea.
`Pet. 8 (quoting Ex. 1001, 5:22–29; citing Ex. 1003 ¶¶ 39–40). Patent Owner
`does not dispute Petitioner’s construction. PO Resp. 16.
`While the ’081 Patent does not provide a strict definition for the term
`“media content,” the specification does state that “the terms ‘media’ or
`‘media content’ are broad terms that comprise any form of content.”
`Ex. 1001, 5:20–23. The ’081 Patent also provides a number of different
`examples of media or media content, such as “graphics, videos, sounds, text,
`text messages . . . television and/or radio programming, podcasts, movies,
`songs, games, telephone conversations, speeches, news, information,
`advertisements, polls votes, [and] personal messages.” Id. at 5:24–28.
`For purposes of this Decision, we do not find it necessary to expressly
`construe the term “media content.” See Vivid Techs., 200 F.3d at 803
`(holding that only terms that are in controversy need to be construed, and
`“only to the extent necessary to resolve the controversy”). To the extent that
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`the determination of the meaning of this claim term is necessary, we use its
`ordinary and customary meaning.
`2. “present . . . media content”
`Petitioner argues the term “present . . . media content,” which appears
`in claim 9, “should be construed to mean ‘provide an output, related to a
`media content, that can be sensed by the user,’ for example, display, audio,
`and vibration.” Pet. 8–9 (citing Ex. 1001, 5:22–29, 5:36–40, 19:1–64;
`Ex. 1003 ¶¶ 42–44). Patent Owner does not dispute Petitioner’s
`construction. PO Resp. 16.
`Petitioner points out that the ’081 Patent explains that media content
`can be presented in various ways. The ’081 Patent states, and Petitioner
`points out, that “the terms ‘display,’ ‘present,’ their synonyms, and their
`alternative conjugations should be used interchangeably and be broadly
`interpreted as providing media to be sensed by the user.” Pet. 9 (citing
`Ex. 1001, 5:36–40; Ex. 1003 ¶ 43).
`Petitioner also points out that the ’081 Patent explains that media
`content “need not be presented through the display panel, but could
`alternatively be presented through the speaker, a vibration system, and/or
`any other primary device output.” Pet. 9 (citing Ex. 1001, 19:52–56, see
`also id. at 19:1–65; Ex. 1003 ¶ 44).
`For purposes of this Decision, we do not find it necessary to expressly
`construe the term “present . . . media content.” To the extent that the
`determination of the meaning of this claim term is necessary, we use its
`ordinary and customary meaning.
`3. first/second receiver module
`The terms “first receiver module” and “second receiver module” are
`recited in independent claim 9. See Ex. 1001, 35:22–31. Patent Owner
`
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`asserts that the recited claim terms “do not require a particular construction,”
`but “maintains that the Board should interpret the claim to require two
`distinct receiver modules.” PO Resp. 12. “In view of the totality of Claim
`9,” Patent Owner argues, “the Board should understand first receiver module
`and second receiver module as two separate and distinct receiver modules.”
`Id. (citing Ex. 2019 ¶ 50).
`Petitioner argues that Patent Owner’s proposal “attempts to
`improperly import additional limitations into the claims,” and “seeks to
`rewrite [claims that] are clear and unambiguous in their original form, both
`on their own and in light of the specification.” Pet. Reply 4, 6. Petitioner
`points out that Patent Owner does not “provide an actual construction for the
`Board to adopt,” and argues that “there is no construction for the Board to
`consider.” Id. at 5. Petitioner also argues that Patent Owner’s
`“interpretation introduces additional ambiguity as to what constitutes
`‘separate and distinct’ receiver modules.” Id. at 6.
`We agree with Patent Owner that the claim terms, “first receiver
`module” and “second receiver module,” do not require a particular
`construction. But as the proponent of a particular “interpretation” or
`“understanding” of these terms, Patent Owner has not shown that the
`ordinary and customary meaning of “first receiver module” and “second
`receiver module” are somehow deficient or deprive claim 9 of its clarity.
`We also agree with Petitioner that Patent Owner’s proposal would
`improperly add limitations to the claim as well as create ambiguity as to
`what does, or does not, constitute “separate and distinct” receiver modules.
`Moreover, as the proponent of the proposed “interpretation” or
`“understanding” of the claim terms, Patent Owner has not justified
`incorporating the additional limitations of “separate and distinct” modules
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`into claim 9, and Patent Owner’s arguments for doing so are flawed because
`they ignore key aspects of the ’081 Patent’s specification that provide
`important context to the claim language “module.”
`“Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Phillips, 415 F.3d at 1313 (citing Multiform Desiccants, Inc.
`v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)); see also Medrad,
`Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We
`cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we
`must look at the ordinary meaning in the context of the written description
`and the prosecution history.”).
`For example, the ’081 Patent specification explains that:
`in general the word ‘module,’ as used herein, refers to logic
`embodied in hardware and/or firmware, and/or to a collection of
`software instructions, possibly having entry and/or exit points,
`written in a programming language. . . . It will be appreciated that
`software modules may be callable from other modules and/or
`from themselves, and/or may be invoked in response to detected
`events and/or interrupts. . . . Generally, the modules described
`herein refer to logical modules that may be combined with other
`modules or divided into sub-modules despite their physical
`organization or storage.
`Ex. 1001, 6:47–7:8 (emphases added).
`This use of the term “module” in the ’081 Patent specification
`explains to one of ordinary skill in the art that a “module” may be “logic
`embodied in hardware” and/or “firmware,” and/or “a collection of software
`instructions.” Id. at 6:47–49. Moreover, this use of the term “module” also
`explains to one of ordinary skill in the art that generally the “modules” being
`described refer to “logical modules” that “may be combined with other
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`modules” or “divided into sub-modules” despite their physical organization
`or storage. Id. at 7:5–8.
`The parties here do not appear to dispute that claim 9 does, in fact,
`recite two receiver modules, i.e. “a first receiver module” and “a second
`receiver module.” See, e.g., Pet. 25 (“Mackintosh’s computer [212/702],
`which includes ‘communications interface 724,’ corresponds to the claimed
`‘first receiver module’”), id. at 32 (“a [person of ordinary skill in the art]
`would have understood that the communication interface [724] of
`Mackintosh’s user terminal/computer [212/702] corresponds to the claimed
`‘second receiver module’”); PO Resp. 1–2 (“The [claimed] system is
`configured to present concurrently both the first and second media on the
`output of either the first receiver module or the second receiver module.”).
`Rather, the disagreement here seems to stem from the parties
`misconstruing each other’s arguments, and not from any inherent ambiguity
`in the claim language. For example, Petitioner is not arguing that claim 9
`“be read as having only a single receiver module,” as Patent Owner asserts.
`See PO Resp. 13. Rather, Petitioner is arguing that the ’081 Patent’s
`“specification contemplates a single device having the necessary modules
`for receiving both the first and second media content.” Pet. Reply 9 (citing
`Ex. 1016 ¶¶ 26–27) (emphasis added); see also id. at 10 (“The [’081 patent]
`specification therefore also describes the functionality of the claimed first
`and second receiver modules occurring at a single device which uses
`multiple receiver modules to receive both sets of media content.”).
`In its Sur-reply, Patent Owner eventually concedes “that the
`specification of the ’081 patent supports a reading where one device can
`have the ‘necessary modules for receiving both the first and second media
`content.’” PO Sur-reply 2 (citing Pet. Reply 8–10). Patent Owner finally
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`articulates the misunderstanding between the parties when it states, “Patent
`Owner never argued claim 9 requires two ‘devices.’ Patent Owner instead
`pointed out that the claim requires two distinct modules.” Id. (citing
`PO Resp. 12–15).
`For these reasons, we do not find it necessary to expressly construe or
`interpret the claim terms “first receiver module” and “second receiver
`module” as Patent Owner proposes. To the extent that the determination of
`the meaning of these terms is necessary, however, we use their ordinary and
`customary meaning as would be understood by one with ordinary skill in the
`art in the context of the claims, the specification, the prosecution history and
`relevant extrinsic evidence. This understanding of the term “module” is
`informed by its description in the specification of the ’081 Patent as “logic
`embodied in hardware and/or firmware, and/or . . . a collection of software
`instructions,” which “may be callable from other modules and/or from
`[itself], and “may be combined with other modules or divided into sub-
`modules.” See Ex. 1001, 6:47–7:8.
`4. “on an output of the first receiver module or the second
`receiver module”
`Claim 9 recites in pertinent part, “an output system configured to
`present concurrently the first media content and the second media content
`on an output of the first receiver module or the second receiver module.”
`Ex. 1001, 35:22, 32–35 (emphasis added).
`Although the parties have not formally requested a construction of this
`limitation, it is clear from the briefing and the oral argument that the parties
`dispute the meaning and the scope of this limitation. In essence, the parties
`dispute whether this portion of claim 9 requires one output or two outputs.
`For example, Patent Owner argues, “[e]lement 9[d], requires two outputs”
`
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`IPR2021-00721
`Patent 8,166,081 B2
`(PO Resp. 42), and “you have to have two of these modules receiving data
`discretely, each with their own output” (Paper 52, 47:15–17). Whereas
`Petitioner argues, “the claims are satisfied when a single system includes a
`first and second receiver module and outputs the first and second media
`content concurrently” (Pet. Reply 25), and “We don't believe . . . that two
`separate outputs, one existing on each of these separate and distinct modules
`is required. Instead, a single device having a single output system as shown
`in Fig. 3 of the ’081 Patent is sufficient” (Paper 52, 13:16–22).
`The words of a claim are generally given their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in question at
`the time of the invention when read in the context of the specification and
`prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`Cir. 2005) (en banc). A person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification. Id. at 1313.
`Here, claim 9 selectively uses the conjunctive “and” and the
`disjunctive “or” within the same phrase: “an output system configured to
`present concurrently the first media content and the second media content
`on an output of the first receiver module or the second receiver module.”
`Ex. 1001, 35:32–35 (emphases added).
`Our reviewing court has consistently interpreted the word “or” to
`mean that items in a sequence are alternatives to each other. See Schumer v.
`Lab. Computer Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002). Given this
`understanding, in our view the phrasing of limitation 9[d] means that: 1) the
`output system must be able to present, at the same time, both the first and
`the second media content on an output of the first receiver module; or 2) the
`
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`IPR2021-00721
`Patent 8,166,081 B2
`output system must be able to present, at the same time, the first and the
`second media content on an output of the second receiver module.
`This understanding of the output system of claim 9 is consistent with
`the ’081 Patent specification. For example, the ’081 Patent specification
`describes an embodiment having “an output module configured to output a
`primary media content from the first media signal and output a secondary
`media content from the second media signal.” Ex. 1001, 2:2–5.
`This understanding of the output system of claim 9 is also consistent
`with the testimony of Dr. Williams, who explains how one of ordinary skill
`in the art would understand the ’081 Patent. See Ex. 1016 ¶¶ 30–35. Dr.
`Williams provides examples from the ’081 Patent specification consistent
`with this understanding of the output system recited in claim 9. Dr.
`Williams testifies that “outputting audio data (‘first media content’), for
`example via a speaker, with corresponding visual data (‘second media
`content’), for example via a display, using a single device would be
`sufficient to satisfy the claim.” Id. ¶ 32 (citing Ex. 1001, Fig. 3). Dr.
`Williams points out numerous examples described in the ’081 Patent where
`different media content are presented concurrently on a single device’s
`output. Id.
`While this understanding of limitation 9[d] acknowledges the
`existence of two modules, each having an output, i.e. “an output of the first
`receiver module,” and “an output of the second receiver module,” it does not
`necessarily follow that the outputs of these modules are separate and distinct
`physical structures as Patent Owner argues. See, e.g., PO Resp 1 (“A second
`receiver module with its own separate output, receives a second media
`content”), id. at 43 (“Petitioner does not identify a second ‘output’ that is
`
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`IPR2021-00721
`Patent 8,166,081 B2
`distinct from this first ‘output.’ For example, there is no second device with
`its own separate display” (internal citations omitted)).
`As we discussed above with respect to the claim term “module,” the
`’081 Patent specification explains that a “module” may be “logic embodied
`in hardware” and/or “firmware,” and/or “a collection of software
`instructions.” Ex. 1001, 6:47–49. This use of the term “module” also
`explains to one of ordinary skill that generally the “modules” being
`described refer to “logical modules” that “may be combined with other
`modules” or “divided into sub-modules” despite their physical organization
`or storage. Id. at 7:5–8.
`Patent Owner acknowledged at oral argument that one module could
`be a submodule of another. “Could one module be a submodule of another?
`You know, potentially, it could. I don't know that anything excludes that.”
`Tr. 48:13–15. Because the receiving modules may be logical submodules of
`one another, and therefore not necessarily separate physical structures or
`components, it follows that their outputs may not necessarily be separate
`physical structures either, but may maintain their identity and distinction
`through the use of logic or software or other technical means. Dr. Williams,
`for example, explains how the ’081 Patent “expressly contemplates first and
`second media content being transmitted and received discretely using a
`single, subdivided signal. This would be achieved, for example, by
`multip
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