Trials@uspto.gov
`571-272-7822
`
` Paper 60
`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.
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner Volkswagen Group of America, Inc. filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 11 and 15–18 of
`U.S. Patent No. 8,903,307 B2 (Ex. 1001, “the ’307 patent”) pursuant to
`
`
`571-272-7822
`
` Paper 60
`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.
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner Volkswagen Group of America, Inc. filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 11 and 15–18 of
`U.S. Patent No. 8,903,307 B2 (Ex. 1001, “the ’307 patent”) pursuant to
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`35 U.S.C. § 311(a). On October 25, 2021, we instituted an inter partes
`review as to all challenged claims on all grounds of unpatentability asserted
`in the Petition. Paper 16 (“Decision on Institution” or “Dec. on Inst.”).
`Patent Owner StratosAudio, Inc. filed a Patent Owner Response (Paper 28,
`“PO Resp.”), Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner
`filed a Sur-Reply (Paper 37, “Sur-Reply”). A combined oral hearing with
`Case IPR2021-00716 was held on July 21, 2022, and a transcript of the
`hearing is included in the record (Paper 49, “Tr.”).
`Mazda Motor of America, Inc., Subaru of America, Inc., and
`Volvo Car USA, LLC filed a motion for joinder and a petition in
`Case IPR2022-00205, which were granted, and, therefore, were joined as
`petitioners in this proceeding. Paper 36. We adjusted the time of pendency
`in this proceeding beyond one year after institution due to joinder. Paper 55.
`The proceeding was terminated as to Mazda Motor of America, Inc.
`and Volvo Car USA, LLC. See Papers 48, 54. In an Order entered
`concurrently with this Decision, the proceeding also is terminated as to
`Subaru of America, Inc.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 11 and 15–18 of the ’307 patent are unpatentable.
`
`
`B. Related Matters
`The parties indicate that the ’307 patent is the subject of the following
`pending district court cases: StratosAudio, Inc. v. Volkswagen Group of
`America, Inc., Case No. 2:22-cv-10524 (E.D. Mich.), and StratosAudio, Inc.
`v. Hyundai Motor America, Case No. 2:22-cv-01712 (C.D. Cal.). See Pet. 1;
`
`2
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`Paper 5, 1; Paper 58, 1–2. Petitioner filed a petition challenging claims of a
`patent related to the ’307 patent in Case IPR2021-00716 (instituted), and
`petitions challenging claims of other patents asserted in one or more of the
`district court cases in Cases IPR2021-00717 (denied), IPR2021-00718
`(denied), IPR2021-00719 (denied), IPR2021-00720 (instituted), and
`IPR2021-00721 (instituted). Hyundai Motor America (“Hyundai”) filed a
`petition challenging claims 11–20 of the ’307 patent in Case IPR2021-01305
`(instituted, “the Hyundai IPR”)1 and petitions challenging claims of other
`patents asserted in one or more of the district court cases in
`Cases IPR2021-01267 (instituted), IPR2021-01303 (instituted), and
`IPR2021-01371 (instituted). Various parties filed petitions and motions
`for joinder to certain of the instituted proceedings, which were granted, in
`Cases IPR2022-00203, IPR2022-00204, and IPR2022-00224.
`
`
`C. The ’307 Patent
`The ’307 patent discloses “[a] broadcast response system [that]
`provides, e.g., a radio broadcast listener with the ability to obtain media
`content such as music or speech while listening to the radio.” Ex. 1001,
`code (57). “From the early days of FM broadcast transmission, stations have
`included ancillary signals such as background music or reading services for
`the blind along with a main carrier signal.” Id. at col. 1, ll. 29–31. “The
`most current and widely used data transmission standard is the United States
`Radio Broadcast Data Systems (‘RBDS’) standard” in which a system
`
`
`1 The Hyundai IPR involves different prior art from the references asserted
`in this proceeding. In a concurrently entered final written decision in the
`Hyundai IPR, we determine that Hyundai has shown by a preponderance of
`the evidence that claims 11–20 of the ’307 patent are unpatentable.
`
`3
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`“broadcast[s] a variety of program-related information,” such as station “call
`letters, station format, traffic alerts and scrolling text messages,” on a
`“subcarrier of a standard FM broadcast channel.” Id. at col. 1, ll. 35–56.
`The ’307 patent states that “[b]roadcasters using the RBDS standard can
`distribute information to a large number of users,” but “the standard does not
`allow individual users to respond to the broadcast information.” Id. at col. 2,
`ll. 28–31. For example, a user listening to the radio may like a particular
`song that he or she would like to purchase, but “must write down or
`remember the identifying information and then go to a store or online
`retailer to purchase the media.” Id. at col. 2, ll. 32–39. The ’307 patent
`purportedly solves that problem by allowing the user to respond to the
`broadcast and purchase media content. Id. at col. 2, ll. 55–60.
`
`
`
`4
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`The ’307 patent includes Figures 1A–D, which are reproduced
`together below.
`
`
`Figures 1A–D depict radio station 140, radio receiver 100, and various other
`devices. Id. at col. 4, ll. 22–25. Radio automation or CD playback system
`142 “extract[s] information about songs or a radio program” from various
`sources and provides playlist information to Automatic Purchase System
`(APS) server 144, which matches the extracted information with information
`in a database of audio files available to download. Id. at col. 5, ll. 41–52.
`If such a file is available, APS server 144 provides download information to
`RBDS/RDS encoder 148. Id. at col. 5, ll. 52–55. RBDS/RDS encoder 148
`then “transmits the RBDS/RDS information using the 57 khz RBDS/RDS
`subcarrier 170 to the FM transmission system 146. The RBDS/RDS
`
`5
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`subcarrier signal 170 is mixed by the FM transmission system 146 with the
`FM baseband program signal 172 and any other subcarriers.” Id. at col. 5,
`ll. 57–62. “The FM transmission system 146 then transmits an FM [radio
`frequency (RF)] signal 162 which is received by the radio receiver 100.”
`Id. at col. 5, ll. 62–63.
`The ’307 patent describes various types of information that can be
`provided to the radio user using the data subcarrier signal, such as a song
`title, artist, album name, purchase price of the song, and IP address for the
`location where the digital version of the song is stored. Id. at col. 3,
`ll. 39–45, col. 5, ll. 4–13, 48–49. A “reference number” representing the
`information stored in a lookup table accessed by APS server 144 “can also
`be employed for ease of implementation.” Id. at col. 3, ll. 42–48.
`RF demodulator section 102 “splits the [received FM RF signal]
`into an audio signal and a data signal.” Id. at col. 4, ll. 39–43. Audio
`demodulator amplifier section 108 receives the audio signal and converts it
`to audio signal 128 that can be output on speaker 118. Id. at col. 4,
`ll. 35–38, 53–54. RBDS/RDS decoder 106 receives the data signal and
`processes it to display information to the user on scrolling display 110. Id.
`at col. 4, ll. 39–47, col. 4, l. 66–col. 5, l. 3.
`The ’307 patent further describes a process whereby “a user can place
`an order to download a song using the control interface 116” of radio
`receiver 100. Id. at col. 5, ll. 14–15. Radio receiver 100 provides a signal to
`authentication and billing system 152 (e.g., over wireless Internet connection
`156) and, when the purchase is approved, download server 154 provides the
`requested material to radio receiver 100 (e.g., over wireless Internet
`connection 158). Id. at col. 5, ll. 15–40. The ’307 patent discloses that
`“[i]n one embodiment, activity of each sale using the [disclosed] system is
`
`6
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`tracked for the purposes of aggregating data or ‘Data Mining’ for sale to
`interested parties such as trade publications and record companies.” Id. at
`col. 3, ll. 52–55.
`
`
`D. Illustrative Claim
`Challenged claim 11 of the ’307 patent is independent. Claims 15–18
`each depend directly from claim 11. Claim 11 recites (with letter
`designations used in the Petition to refer to the various limitations):
`11. A system for correlating media content identifying
`data with at least one broadcast segment received by a
`communication device, the system comprising:
`[a] a receiver configured to receive a broadcast stream
`comprising the at least one broadcast segment and associated
`media content, [b] the receiver further configured to receive a
`data stream associated with the broadcast stream, the data stream
`comprising, at a minimum, the media content identifying data,
`wherein the media content identifying data comprises at least one
`element;
`[c] at least one computer processor configured to extract
`the media content identifying data from the data stream,
`associating each media content identifying data element with at
`least one of a plurality of media content;
`[d] an electronic memory of the communication device
`configured to store, at a minimum, media content identifying
`data elements into identifying data aggregates, each identifying
`data aggregate associated with at least one of the plurality of
`media content and the at least one broadcast segment, [e] wherein
`the at least one broadcast segment is corollary to the at least one
`of the plurality of media content; and
`[f] an output configured to present at least a portion of the
`data elements stored in
`the electronic memory of
`the
`communication device to provide selective outputting using an
`interface of at least one of the following: the media content
`identifying data, the media content, the corollary broadcast
`
`7
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`segment, a temporal position of the corollary broadcast segment
`of the broadcast stream.
`
`
`E. Evidence
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 6,317,784 B1, filed Sept. 29, 1998, issued
`Nov. 13, 2001 (Ex. 1005, “Mackintosh”); and
`U.S. Patent No. 5,579,537, issued Nov. 26, 1996
`(Ex. 1004, “Takahisa”).
`Petitioner filed a declaration from Vijay Madisetti, Ph.D. (Ex. 1003) with its
`Petition and a reply declaration from Dr. Madisetti (Ex. 1018) with its
`Reply. Patent Owner filed a declaration from John C. Hart, Ph.D.
`(Ex. 2019) with its Response. Also submitted as evidence are transcripts of
`the depositions of Dr. Madisetti (Ex. 2021) and Dr. Hart (Ex. 1019).
`
`
`F. Asserted Grounds
`This inter partes review involves the following grounds of
`unpatentability (Pet. 3):
`Claim(s) Challenged 35 U.S.C. §2
`11, 15–18
`103(a)
`11, 15, 16, 18
`102(b)
`17
`103(a)
`
`Reference/Basis
`Mackintosh
`Takahisa
`Takahisa
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’307 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103. See Pet. 3; PO Resp. 16.
`
`8
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art for a challenged
`patent, we look to “1) the types of problems encountered in the art; 2) the
`prior art solutions to those problems; 3) the rapidity with which innovations
`are made; 4) the sophistication of the technology; and 5) the educational
`level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
`666–667 (Fed. Cir. 2000). “Not all such factors may be present in every
`case, and one or more of them may predominate.” Id. at 667.
`Petitioner argues that at the time of the ’307 patent (September 2000),
`a person of ordinary skill in the art would have had “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, or, alternatively, an advanced degree (such as a master’s degree)
`in computer science or electrical engineering (or a related field).” Pet. 7
`(citing Ex. 1003 ¶ 44); see Ex. 1003 ¶ 29. Patent Owner applies the same
`definition of the level of ordinary skill in the art. PO Resp. 16 (citing
`Ex. 2019 ¶¶ 58–59). Based on the full record developed during trial,
`including our review of the ’307 patent and the types of problems and
`solutions described in the ’307 patent and cited prior art, we agree with
`Petitioner’s proposed definition of the level of ordinary skill in the art and
`apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1,
`l. 28–col. 2, l. 51 (describing in the “Background” section of the ’307 patent
`various FM broadcast and other communication methods).
`
`
`9
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`B. Claim Interpretation
`We interpret the claims of the challenged patent
`using the same claim construction standard that would be used to
`construe the [claims] in a civil action under 35 U.S.C. 282(b),
`including construing the [claims] in accordance with the ordinary
`and customary meaning of such [claims] as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2020). “In determining the meaning of [a] disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006). Claim terms
`are given their plain and ordinary meaning as would be understood by a
`person of ordinary skill in the art at the time of the invention and in the
`context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d
`1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to
`this general rule: 1) when a patentee sets out a definition and acts as his own
`lexicographer, or 2) when the patentee disavows the full scope of a claim
`term either in the specification or during prosecution.” Thorner v. Sony
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 3
`
`
`1. Preamble of Claim 11
`In the Decision on Institution, we determined based on the record at
`the time that the preamble of claim 11 is limiting because the body of the
`
`
`3 The claim interpretations adopted herein are identical to those set forth in
`the concurrently entered final written decision in the Hyundai IPR, with one
`exception—we need not interpret “broadcast stream” in that proceeding.
`
`10
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`claim refers to the preamble for antecedent basis for the terms “media
`content identifying data,” “at least one broadcast segment,” and
`“communication device.” See Dec. on Inst. 27 n.5; Eaton Corp. v. Rockwell
`Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the
`body of the claim rely upon and derive antecedent basis from the preamble,
`then the preamble may act as a necessary component of the claimed
`invention.”). Patent Owner agrees, and Petitioner does not argue otherwise
`in its Petition or Reply. See Pet. 49 (arguing that “[r]egardless of whether
`the preamble is limiting, it is disclosed by Mackintosh”); PO Resp. 33–34.
`Based on the full trial record, we determine that the preamble of claim 11 is
`limiting.
`
`
`2. “Broadcast Stream”
`Petitioner argues that “broadcast stream” should be interpreted to
`mean
`“any media conveyance methodology that conveys information
`in the form of a signal,” including, for example, data,
`information, or programming distributed over AM/FM radio,
`digital radio, the Internet, satellite, cable, analog television,
`digital television, or the like.
`Pet. 8. Patent Owner does not object to Petitioner’s proposed interpretation.
`PO Resp. 17. We adopt Petitioner’s proposed interpretation, which is
`consistent with the Specification of the ’307 patent. See Pet. 8–10 (citing
`Ex. 1001, col. 1, l. 29–col. 2, l. 51, col. 4, ll. 16–21, col. 10, l. 56–col. 11,
`l. 20).
`
`
`11
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`3. “Broadcast Segment”
`In the Decision on Institution, based on the record at the time,
`we agreed with and adopted Petitioner’s proposed interpretation of
`“broadcast segment” as “a distinguishable piece or portion of a broadcast
`stream, such as an individual song, speech, or video.” See Dec. on Inst.
`20–23; Pet. 10. Patent Owner argues that “broadcast segment” instead
`should be interpreted to mean “a discretely identifiable portion of
`programming as broadcasted.” PO Resp. 17–20.
`As an initial matter, we note—and the parties agree—that there is
`little difference between the parties’ proposed interpretations. Petitioner’s
`proposed interpretation uses the term “distinguishable,” whereas Patent
`Owner uses “discretely identifiable.” See Pet. 10; PO Resp. 17. According
`to Petitioner, however, there is no difference between “distinguishable” and
`“identifiable,” as the terms are “largely interchangeable.” Tr. 11:10–19,
`78:15–20. Similarly, Petitioner’s proposed interpretation uses the phrase
`“portion of a broadcast stream,” whereas Patent Owner uses “portion of
`programming as broadcasted.” See Pet. 10; PO Resp. 17. Petitioner agrees
`that “of a broadcast stream” and “as broadcasted” are “one and the same.”
`Tr. 79:21–80:7.
`The dispute between the parties appears to be in the application of the
`prior art when using Patent Owner’s proposed interpretation. See id. at
`10:5–9 (arguing that “[i]t is when [Patent Owner] begin[s] to apply [its]
`construction that the differences become apparent and [Patent Owner is]
`essentially cobbling on additional limitations to that construction”), 80:8–25.
`Petitioner contends that Patent Owner’s arguments import four additional
`requirements that are not supported by the claim language or Specification
`of the ’307 patent:
`
`12
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`(1) each broadcast segment must be “discretely identifiable
`relative to all other ‘broadcast segments’ transmitted” and
`“contextually unique to all others”;
`(2) “a broadcast segment can occur once and only once”;
`(3) each broadcast segment “must have a
`temporal
`component”; and
`(4) broadcast segments must differentiate between different
`instances of the same song being broadcast multiple times
`in a day.
`Reply 2–3 (citations omitted). None of these, however, are part of Patent
`Owner’s proposed interpretation. To the extent relevant, we discuss them
`below in our analysis of Petitioner’s obviousness ground based on
`Mackintosh. See infra Section II.D.2.b.
`After reviewing the full trial record, we are persuaded that the
`phrasing of Patent Owner’s proposed interpretation is correct, primarily
`because of its use of “as broadcasted.”
`First, by its plain language, a “broadcast segment” is a “segment” of
`a “broadcast.” See Tr. 10:24–11:1, 17:20–18:5 (Petitioner agreeing that
`a “broadcast segment” is “a segment of the broadcast” and is, for example,
`“distinguishable from the very next segment and the segment after that”);
`Ex. 2021, 22:20–23:7 (Dr. Madisetti agreeing that the ’307 patent “clearly
`describe[s] an example of a distinguishable piece or portion of the work
`as streamed as an individual song” (emphasis added)). Petitioner’s proposed
`interpretation is that a “broadcast segment” is a piece or portion “of a
`broadcast stream,” but that is already part of the claim—limitation 11[a]
`recites “a broadcast stream comprising the at least one broadcast segment”
`(emphasis added). See Pet. 10. Patent Owner’s proposed interpretation
`more clearly specifies that a “broadcast segment” is a portion of
`programming “as broadcasted.” See PO Resp. 17. To illustrate, although a
`
`13
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`song can be an example of a “broadcast segment,” the “broadcast segment”
`is not the song in the abstract, but rather the portion of the broadcast that is
`the song. In other words, “‘[a]n individual song’ as broadcasted may serve
`as one example of a ‘broadcast segment’ because the broadcast of the song
`constitutes a discretely identifiable portion of broadcasting as broadcasted.”
`See id. at 19 (emphasis added); Sur-Reply 9. We are persuaded that the
`language of claim 11 supports Patent Owner’s proposed interpretation.
`Second, although the Specification of the ’307 patent only uses the
`term “broadcast segment” twice, it provides some support for Patent
`Owner’s view that a “broadcast segment” is a portion of programming
`“as broadcasted.” The Specification discloses:
`[R]adio station 140, using either a standard radio automation
`system for tracking of music content which is being broadcast,
`or a data-enabled audio player, broadcasts audio material and
`synchronously sends RBDS/RDS or similar data to an APS
`server 144 that assigns a unique identifier to each specific
`broadcast segment or song.
`The APS server 144 compares the broadcast segment
`identifier with a database 150 of audio available for purchase. If
`the broadcasted audio is available, the APS server 144
`incorporates station call letter information, and an audio
`download location such as IP address and a file name into a data
`stream that is inserted into a radio station’s broadcast using
`RBDS/RDS or similar technology. The information identifying
`the audio selected by the listener or user is routed to the APS
`Data Server and passed on to the location where a digital version
`of the audio content is stored and available for transfer to the end
`user. The user’s radio receiver 100 receives and recognizes the
`encoded RBDS/RDS or other data and presents it on the radio
`display 110 notifying the user that the audio is available for
`purchase.
`
`14
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`Ex. 1001, col. 5, l. 64–col. 6, l. 16 (emphasis added). Thus, in the exemplary
`embodiment described above, the “broadcast segment” is a portion of the
`audio content being broadcasted. 4 See id.
`Based on the full trial record, we interpret “broadcast segment” to
`mean “a discretely identifiable portion of programming as broadcasted.”
`
`
`4. “Media Content”
`In the Decision on Institution, based on the record at the time,
`we agreed with and adopted Petitioner’s proposed interpretation of “media
`content” as “any form of media content that, when translated from the
`signal-form in which it is transmitted, is discernible to humans.” Dec. on
`Inst. 23. Patent Owner does not object to that interpretation, which we adopt
`based on the full trial record. See PO Resp. 20.
`
`
`5. “Receiver Configured to Receive a Broadcast Stream Comprising the
`At Least One Broadcast Segment and Associated Media Content”
`In the Decision on Institution, based on the record at the time,
`we noted that Petitioner’s proposed interpretations of “broadcast segment”
`and “media content”
`read the claim language as encompassing the same underlying
`content (e.g., a song) in two different forms—the “broadcast
`segment” being a distinguishable piece or portion of the
`broadcast stream itself, which is in signal-form, and the “media
`content” being the content after it has been translated from
`signal-form into a form that is discernible to humans.
`
`4 The “broadcast segment” described in the Specification also has an
`assigned “unique identifier” as part of the broadcast. Ex. 1001, col. 5,
`l. 64–col. 6, l. 2. Patent Owner points to that disclosure as support for
`dependent claim 16, which recites “data that enables a unique identification
`of the least one broadcast segment.” PO Resp. 55–56.
`
`15
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`Dec. on Inst. 22–23. We stated that Petitioner’s reading appeared to be
`consistent with the Specification, but encouraged the parties to address in
`their papers the interpretation of the full “receiver” limitation in claim 11.
`Id. Patent Owner argues that a person of ordinary skill in the art “would
`understand the clause consistent with the Board’s finding, with the
`qualification” that we should adopt Patent Owner’s proposed interpretation
`of “broadcast segment.” PO Resp. 20–22. Petitioner “agrees with the
`Board’s interpretation but disagrees with” Patent Owner’s proposed
`interpretation of “broadcast segment.” Reply 7–8. Based on the full trial
`record, we maintain our earlier determination for the “receiver” limitation
`and adopt Patent Owner’s proposed interpretation of “broadcast segment”
`for the reasons explained above. See supra Section II.B.3.
`
`
`6. “Associate” Terms
`Claim 11 recites “a broadcast stream comprising the at least one
`broadcast segment and associated media content,” receiver that “receive[s]
`a data stream associated with the broadcast stream,” computer processor that
`“extract[s] the media content identifying data from the data stream,
`associating each media content identifying data element with at least one of
`a plurality of media content,” and “each identifying data aggregate
`associated with at least one of the plurality of media content and the at least
`one broadcast segment” (emphasis added). Claim 18 recites “an input
`configured to detect a selection associated with the presentation of the stored
`data” (emphasis added). We refer to these as the “associate” terms.
`After our Decision on Institution, the district court issued a Claim
`Construction Order construing the terms “associated,” “associating,” and
`“associating each media content identifying data element with at least one of
`
`16
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`a plurality of media content” to each have their “[p]lain and ordinary
`meaning.” Ex. 3003, 1–2. During the district court proceedings, Patent
`Owner proposed the “[p]lain and ordinary meaning” construction, whereas
`Petitioner argued that the terms were indefinite. Ex. 3001, 1–2.
`In this proceeding, Patent Owner argues in its Response that the
`“associate” terms “are used in their ordinary manner in the context of the
`’307 patent to mean an implemented link between two or more items (such
`as data, broadcast segments, and media content)” where the link is “formal,”
`“intentional,” and “implemented” by the system of claim 11. PO Resp.
`22–23 (citing Ex. 2019 ¶¶ 71–72). According to Patent Owner, this is
`different than a merely “conceptual” link; the term “related,” for example,
`also is used in the Specification of the ’307 patent and does not necessarily
`require “a connection that is implemented in a system.” Id. (citing Ex. 1001,
`col. 1, ll. 26, 38–42, col. 8, ll. 7–12, col. 11, ll. 13–17, 27–30). Petitioner
`disagrees, arguing that the terms “refer to two concepts that were
`conceptually connected without the need for a system to store a link” and
`citing other portions of the Specification that use the term “associated.”
`Reply 8–9 (citing Ex. 1001, col. 7, ll. 27–33, col. 8, ll. 12–14; Ex. 1018
`¶¶ 39–41).
`We agree with Petitioner. Patent Owner does not point to—and we do
`not find—any language in the claims requiring that the recited associations
`be implemented in a particular way, such as by the system storing a link.
`Rather, each limitation merely recites that one item is “associate[d]” with
`another: “broadcast segment” with “media content,” “data stream” with
`“broadcast stream,” “each media content identifying data element” with
`“at least one of a plurality of media content,” “each identifying data
`aggregate” with “at least one of the plurality of media content and the at
`
`17
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`least one broadcast segment,” and “selection” with “the presentation of the
`stored data.”
`Nor does the Specification define or use the term “associated” in a
`manner indicating that the term should be limited to require a formal link
`implemented by the disclosed system. To the contrary, in every instance, the
`Specification uses the term “associated” broadly to refer to two items related
`to each other in some manner; for example, consistent with the language of
`claim 11, the Specification explains how a broadcast may have an
`“associated” data stream providing information about what is being played.
`See, e.g., Ex. 1001, col. 6, ll. 31–33 (“storage server 154 at a source location
`. . . uploads the requested audio to the routing address associated with the
`user’s cell phone account identifier”), col. 7, ll. 27–33 (“[a]utomotive radios
`equipped with the APS module 202 and associated technologies . . . send a
`purchase request (or interactive response) complete with [other information]
`accompanying the associated broadcast”), col. 8, ll. 7–14 (“The user can
`also receive offers or hyperlinks posted on a personal web site . . . .
`Associated books, magazine articles, merchandise and event information can
`also be posted for the user to purchase using the APS.”), col. 12, ll. 13–20
`(“television adapters equipped with the APS module 302 and associated
`technologies can use a wireless interface 318 to send a purchase request (or
`interactive response) complete with [other information] derived from the
`RBDS/RDS data string accompanying the associated broadcast”) (emphasis
`added). The mere fact that the Specification also uses “related” in other
`contexts does not demonstrate that the patentee intended for there to be a
`meaningful difference between “related” and “associated.”
`We interpret the “associate” terms to not require a formal link
`implemented by the system of claim 11 as Patent Owner argues, and
`
`18
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`conclude that no further interpretation is necessary to decide the issues
`presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy,’ we need not construe [a particular claim limitation]
`where the construction is not ‘material to the . . . dispute.’” (citation
`omitted)).
`
`
`7. “Corollary”
`In the Decision on Institution, we encouraged the parties to address in
`their papers the interpretation of the term “corollary” in claim 11. Dec. on
`Inst. 23. Patent Owner argues that the term means “correlated,” and
`Petitioner does not object. See PO Resp. 23; Reply 9. We conclude that no
`interpretation of the term is necessary to decide the issues presented during
`trial. See Nidec, 868 F.3d at 1017.
`
`
`C. Legal Standards
`To prevail in its challenges to the patentability of claims 11 and 15–18
`of the ’307 patent, Petitioner must demonstrate by a preponderance of the
`evidence that the claims are unpatentable. 35 U.S.C. § 316(e). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016)
`(“Where, as here, the only question presented is whether due consideration
`
`19
`
`
`
`IPR2021-00712
`Patent 8,903,307 B2
`of the four Graham factors renders a claim or claims obvious, no burden
`shifts from the patent challenger to the patentee.”).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a) (2006)).
`The question of obviousness is resolved on the basis of underlying factual
`dete
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
