Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 62
`Entered: January 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., and
`HYUNDAI MOTOR AMERICA,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2021-00720
`Patent 9,355,405 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 62
`Entered: January 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., and
`HYUNDAI MOTOR AMERICA,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2021-00720
`Patent 9,355,405 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`IPR2021-00720
`Patent 9,355,405 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. and Hyundai Motor America
`(“Petitioner”) have shown by a preponderance of the evidence that claims
`12–16 (the “challenged claims”) of U.S. Patent No. 9,355,405 B2 (Ex. 1001,
`“the ’405 Patent”) are unpatentable. See 35 U.S.C. § 316(e) (2018); 37
`C.F.R. § 42.1(d) (2019).
`A. Procedural History
`The Petition (Paper 1, “Pet.”) requested inter partes review of the
`challenged claims of the ’405 Patent. Patent Owner, StratosAudio, Inc.,
`filed a Preliminary Response. Paper 6. Pursuant to an Order, Paper 11,
`Petitioner filed a Preliminary Reply, Paper 12, and Patent Owner filed a
`Preliminary 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 29 (“PO
`Response”), Petitioner filed a Reply, Paper 34 (“Pet. Reply”), and Patent
`Owner filed a Sur-reply, Paper 38 (“PO Sur-reply”).
`On June 2, 2022, we granted a Motion for Joinder with IPR2021-
`00720 filed by Hyundai Motor America, Mazda Motor of America, Inc.,
`Subaru of America, Inc., and Volvo Car USA, LLC in IPR2022-00224. See
`Paper 39. Pursuant to that Order, Hyundai Motor America, Mazda Motor of
`America, Inc., Subaru of America, Inc., and Volvo Car USA, LLC
`maintained a secondary role in this proceeding.
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`On July 22, 2022, an oral hearing was held. A transcript of the
`hearing is made part of the record. See Paper 51.
`On July 29, 2022, we issued an Order, Paper 48, terminating Mazda
`Motor of America, Inc. from this proceeding due to a settlement.
`On September 29, 2022, we issued an Order, Paper 55, 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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`C. The ’405 Patent
`The ’405 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:24–26.
`The ’405 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 1:28–36. In view of this,
`the ’405 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 1:36–40.
`The ’405 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 3:15–19. The ’405
`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 3:23–27.
`The ’405 Patent provides an 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 3:33–36. 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 3:36–42. 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 3:43–46. The ’405
`Patent provides another example in which a user enabled-device is playing a
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`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 3:47–53.
`Figure 1A of the ’405 Patent is reproduced below.
`
`
`
`Figure 1A, shown above, is a block diagram depicting signals and
`identifiers correlated and transmitted between elements of a media
`enhancement system. Id. at 2:48–50. The system can include first
`transmitter 3, control management system 100, media association system 2,
`primary device 4, and advertisement entity 6. Id. at 8:17–22. 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
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`communication methods. Id. at 8:23–30. For instance, first transmitter 3
`can send a first media signal 111 that is received by primary device 4. Id.
`at 8:47–49.
`Figure 1B of the ’405 Patent is reproduced below.
`
`
`
`Figure 1B, shown above, is a block diagram showing media
`association system 2 can receive and/or identify the media content in first
`media signal 111 and use this information to send or transmit secondary or
`related media signal 114, such as information regarding the media content of
`first media signal 111 to primary device 4. Id. at 9:41–44, 9:46–55.
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`Advertisement entity 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 10:31–36.
`The ’405 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 13:6–9. According to
`the ’405 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 13:20–22. The ’405 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 13:23–29.
`Figure 3 of the ’405 Patent is reproduced below.
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`
`Figure 3, shown above, is an illustration depicting primary device 4,
`such as a radio-enabled cellular phone, with display panel 450 that is
`connected to media association system 2. Id. at 2:57–58, 19:1–3, 19:25–27,
`19:31. Primary device 4 receives first media signal 111 (not shown in
`Fig. 3) via receiver 455 and/or wire data connection 470. Id. at 19:3–5.
`First media signal 111 includes, for example, a radio program that primary
`device 4 can play to a user via speaker 453. Id. at 19:7–9. Display panel
`450 can show information relating to the radio program being played. Id.
`at 19:27–29. For instance, upper portion 451 of the display panel can
`include textual information corresponding to the radio’s music. Id. at 19:31–
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`36. The information about the radio’s music may be obtained from a Radio
`Broadcast Data System (RBDS) and/or Radio Data System (RDS) signal
`accompanying first media signal 111 when the latter is in the form of a radio
`signal. Id. at 25:9–11. Lower panel 452 displays advertisement media
`signal 113 (not shown in Fig. 3), which may comprise any form of media
`content. Id. at 12:47–49, 19:59–60.
`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 15:18–21. For example, the signals from primary device 4
`can be responses to interactive media signals. Id. at 15:21–23. 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 15:29–36. The ’405 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 15:36–43.
`
`D. Challenged Claims
`
`Petitioner challenges claims 12–16. Claim 12 is the only independent
`claim challenged. Claim 12 is set out below:
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`12[pre] A method for combining multiple media obtained
`from a broadcast stream, the method comprising:
`12[a] receiving, using an electronic receiving device, at
`least a first media content from a broadcast stream;
`12[b] receiving, using the electronic receiving device, at
`least a second media content,
`12[c] the second media content received discretely from
`the first media content;
`12[d] determining uniquely identifying data specific to at
`least the second media content;
`12[e] determining a location of the electronic receiving
`device utilizing at least one of the following to
`determine the location of the electronic receiving
`device: a GPS system, a triangulation system, a
`geographic location system;
`12[f] presenting concurrently the first media content and
`the second media content using an electronic output
`device;
`12[g] detecting at least a response input responsive to the
`second media content; and
`12[h] transmitting electronically to a computer server a
`response message comprising at least the uniquely
`identifying data specific to at least the second media
`content and the location of the electronic receiving
`device.
`Ex. 1001, 36:12–32 (reproduced with added labelling with “12” and
`bracketing as designated by Petitioner; see Pet. 21–46).
`E. Evidence
`Petitioner relies upon the following evidence:
`(1) U.S. Patent No. US 6,374,177 B1, issued April 16, 2002 (“Lee”)
`(Ex. 1004);
`(2) U.S. Patent Application Publication No. 2003/0220835 A1,
`published November 27, 2003 (“Barnes”) (Ex. 1005);
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`(3) United States RBDS Standard, Radio Broadcast Data System
`(RBDS) Subcommittee of the National Radio Systems Committee (NRSC)
`(Apr. 9, 1998) (“RBDS Standard”) (Ex. 1006); and
`(4) Declarations of Tim Williams, Ph.D. (Exs. 1003, 1017).
`Patent Owner relies on the declaration of Todd Moon, Ph.D.
`(Ex. 2019).
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Reference(s)
`
`Lee
`Lee
`Barnes
`Barnes
`Barnes, RBDS Standard
`
`Basis
`
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`12–16
`12–16
`12, 15, 16
`12, 15, 16
`13, 14
`
`
`
`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.
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`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
`less experience, and vice-versa; for example, a POSITA could have a
`master’s degree with no industry experience.” Pet. 7 (citing Ex. 1003 ¶ 34).
`Patent Owner does not object to the level of skill proposed by Petitioner.
`PO Resp. 18.
`Petitioner’s description of the level of ordinary skill is generally
`consistent with the subject matter of the ’405 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
`
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`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.
`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”
`The term “media content” appears in claims 12–16. Pet. 8. Petitioner
`asserts that the ’405 patent defines “media content” as:
`[a] broad term[] that comprise[s] 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.
`Id. (quoting Ex. 1001, 5:28–35). Petitioner’s declarant, Dr. Williams,
`supports this view. See Ex. 1003 ¶¶ 40–41. Patent Owner does not dispute
`Petitioner’s proposed construction. PO Resp. 18.
`
`While the ’405 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, 5:28–29. The ’405 patent also provides a number of different
`examples of media or media content, such as “graphics, videos, sounds, text,
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`text messages . . . television and/or radio programming, podcasts, movies,
`songs, games, telephone conversations, speeches, news, information,
`advertisements, polls votes, [and] personal messages.” Id. at 5:30–35.
`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
`the determination of the meaning of this claim term is necessary, we use its
`ordinary and customary meaning.
`2. “presenting . . . media content”
`Petitioner argues the term “presenting . . . media content,” which
`appears in claim 12, “should be construed to mean ‘providing an output,
`related to a media content, that can be sensed by the user,’ for example,
`display, audio, and vibration.” Pet. 9 (citing Ex. 1001, 5:29–35, 5:42–46,
`19:1–20:3; Ex. 1003 ¶¶ 43–46). Patent Owner does not dispute Petitioner’s
`proposed construction. PO Resp. 19.
`Petitioner points out that the ’405 patent explains that media content
`can be presented in various ways. The ’405 patent states 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, 5:42–46; Ex. 1003
`¶ 44).
`Petitioner also points out that the ’405 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.” Id. (citing Ex. 1001, 19:66–20:3; see also
`id. at 19:1–66; Ex. 1003 ¶ 45).
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`For purposes of this Decision, we do not find it necessary to expressly
`construe the term “presenting . . . media content.” To the extent that the
`determination of the meaning of this claim term is necessary, we use its
`ordinary and customary meaning.
`C. Patentability Challenges
`As indicated above, Petitioner presents five grounds challenging the
`patentability of particular claims of the ’405 patent under 35 U.S.C.
`§§ 102, 103. Petitioner challenges (1) claims 12–16 as anticipated by Lee,
`(2) claims 12–16 as obvious over Lee, (3) claims 12, 15, and 16 as
`anticipated by Barnes, (4) claims 12, 15, and 16 as obvious over Barnes, and
`(5) claims 13 and 14 as obvious over the combined teachings of Barnes and
`RBDS Standard. Pet. 3.
`1. Principles of Law on Anticipation
`To anticipate a claim under 35 U.S.C. § 102, “a single prior art
`reference must expressly or inherently disclose each claim limitation.”
`Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
`Accordingly, “the dispositive question regarding anticipation [i]s whether
`one skilled in the art would reasonably understand or infer from the [prior
`art reference’s] teaching” that every claim element was disclosed in that
`single reference. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d
`1358, 1368 (Fed. Cir. 2003).
`2. Relevant Prior Art
`a. Lee (Ex. 1004)
`
`Lee is a U.S. Patent that issued on April 16, 2002, more than one year
`before the earliest priority date of the ’405 patent. Ex. 1001, code (60), (63);
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`Ex. 1004, code (45). Petitioner asserts that Lee is prior art under pre-AIA
`35 U.S.C. § 102(b). Pet. 10.
`Lee relates to an internet radio such as for providing navigational
`services to a user in an automobile via a wireless communication device.
`Ex. 1004, code (57). Lee discloses that customized information is also
`communicated to the radio, such as stock quotes, travel information,
`advertising, and email. Id.
`Figure 1 of Lee is reproduced below.
`
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`Lee’s Figure 1, shown above, depicts a block diagram of a computer
`controlled multimedia entertainment and information system 10. Id. at 5:31,
`5:44–47. System 10 includes microcomputer controlled multimedia device
`20 in a vehicle with a wireless IP address for Internet access and Internet
`gateway network 30 that provides programming, information, and Internet
`access to multimedia device 20 and one or more remote programming
`devices 40. Id. at 5:52–59. Multimedia device 20 includes computer 50,
`storage devices 92 to contain and run an operating system, and applications
`to control and communicate with onboard receivers. Id. at 8:26–30. Lee
`describes the receivers as multi-band AM, FM, TV audio, and digital audio
`broadcast receiver 100; GPS receiver 110 that continuously reports the
`vehicle’s longitude, latitude, and altitude; one or more high-speed, narrow
`band wireless transceivers 120 for fast transmission and reception of large
`amounts of data from accommodated devices; and wide band wireless
`Internet addressable gateway transceiver 130. Id. at 8:30–41.
`Lee discloses that Internet gateway 30 maintains a database
`management system to control system databases, such as a broadcaster
`relational database that contains information about AM, FM, and TV analog
`audio broadcasts that can be received within a host nation. Id. at 11:1–8.
`Lee further describes advertising databases that provide information about
`advertisements that are inserted into real-time radio broadcasts and into
`digital personalized broadcasts. Id. at 11:16–19. In addition, user profile
`databases contain information about a user’s system preferences, billing
`information, and a purchasing interest profile. Id. at 11:34–36. Lee explains
`that information in advertising databases can be compared with a user’s
`purchasing interest profile so advertisements inserted into personalized
`digital broadcasts mesh with the user’s buying interests. Id. at 11:36–41.
`
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`Figure 2 of Lee is reproduced below.
`
`
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`Lee’s Figure 2, shown above, shows a block diagram of multimedia
`device 20. Id. at 5:32–33. Lee discloses that multimedia device 20 includes
`industry standard amplifier 150 and speakers to output sound. Id. at 8:47–
`48. Multimedia device 20 further includes a LCD, LED, or similar suitable
`display screen 160 to present information to a user and to control multimedia
`device 20. Id. at 8:62–65. For instance, action buttons 172 can be used to
`save information on something that is being broadcast, to call a phone
`number from an advertisement, to navigate to an address from an electronic
`address book, or to purchase an item currently being advertised. Id. at
`10:24–29.
`In one of Lee’s embodiments, a user can press a “BUY” or “INFO”
`button on multimedia device 20 when they wish to purchase a product or
`obtain more information about a product. Id. at 11:19–23. This transmits
`the location of the user’s vehicle to Internet gateway 30, the date and time of
`the button press, and the channel selected. Id. at 11:23–26. The advertised
`item is then found in the advertising database and the user is charged for the
`item’s delivery or information about the product is sent to the user. Id.
`at 11:26–28. Lee also describes a user obtaining map locations and
`navigation guidance for locations related to recent advertisements via
`Internet gateway 30 and the advertising database. Id. at 11:52–62.
`D. Anticipation by Lee
`Petitioner asserts claims 12–16 are anticipated by Lee under 35 U.S.C.
`§ 102(b). Pet. 21–53. Claim 12 is the only independent claim of the
`challenged claims.
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`1. Independent Claim 12
`12[pre] A method for combining multiple media obtained
`i.
`from a broadcast stream, the method comprising:
`Petitioner asserts that “Lee discloses a ‘multimedia device 20,’ for use
`in a ‘vehicle 184.’” Pet. 21 (citing Ex. 1004, 5:60–6:20; Ex. 1003 ¶ 75).
`According to Petitioner, Lee’s multimedia device 20 “combines ‘audio
`broadcasts,’ such as ‘AM, FM, TV, digital, Internet audio broadcasts,’ (and
`data about the audio broadcasts) with ‘advertisement’ data obtained from
`‘Internet gateway network 30.’” Id. (citing Ex. 1004, 5:60–6:20, 10:44–48;
`Ex. 1003 ¶ 76).
`In particular, Petitioner argues that “Lee’s ‘multimedia device 20’
`combines the ‘audio broadcasts,’ data about the audio broadcasts (e.g.,
`‘station call letters, format, frequency, and other programming
`information’), and textual/graphical information representative of the
`‘advertisements’ by presenting all of this media content concurrently, e.g.,
`by playing back the audio broadcast via ‘speakers 152’ and displaying on a
`‘display screen 160’ the textual data about the audio broadcasts and the
`‘advertising logos’ and ‘action button labels 174’ representative of the
`‘advertisements.’” Pet. 22 (citing Ex. 1004, Fig. 2; Ex. 1003 ¶ 79).
`Petitioner argues that “Lee’s ‘audio broadcasts,’ RDS/RBDS [Radio
`Broadcast Data System] data about the audio broadcasts, and
`graphical/textual representation of the ‘advertisements’ correspond to the
`claimed ‘multiple media obtained from a broadcast stream.’” Pet. 23
`(citing Ex. 1003 ¶ 81). Petitioner’s evidence is supported by the testimony
`of Dr. Williams. See Ex. 1003 ¶¶ 74–82.
`
`20
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`Patent Owner does not respond specifically to Petitioner’s arguments
`or evidence with respect to Lee’s disclosure of what is recited by the
`preamble of claim 12. See PO Resp. 37–44.
`Based on the record, we are persuaded that Petitioner has
`demonstrated that Lee discloses “a method for combining multiple media
`obtained from a broadcast stream,” as recited in the preamble. 2
`12[a] receiving, using an electronic receiving device, at
`ii.
`least a first media content from a broadcast stream
`Petitioner asserts that “Lee discloses that ‘multimedia device 20’
`includes a ‘multi-band AM, FM, TV audio and digital audio broadcast
`receiver 100,’ which receives ‘audio broadcasts’ such as ‘AM, FM, TV,
`digital, [and] Internet audio broadcasts.’” Pet. 24 (citing Ex. 1004, 8:25–32,
`5:60–67; Ex. 1003 ¶ 84). Petitioner explains that “[t]he audio broadcasts
`include, for example, ‘music,’ ‘talk’ radio programs, and advertisements.”
`Pet. 24 (citing Ex. 1004, 9:18–20, 11:16–19, 6:9–20, Fig. 5; Ex. 1003 ¶ 84).
`Petitioner argues that Lee’s multimedia device 20 “corresponds to the
`claimed ‘electronic receiving device,’ [that] performs the claimed step of
`‘receiving . . . at least a first media content from a broadcast stream.’”
`Pet. 26 (citing Ex. 1003 ¶ 88). Petitioner argues that the “audio
`advertisement broadcasted by the radio station corresponds to the claimed
`‘first media content from a broadcast stream.’” Pet. 26 (citing Ex. 1003
`¶ 89).
`Petitioner’s evidence is supported by the testimony of Dr. Williams.
`See Ex. 1003 ¶¶ 84–89. Lee’s Figures 1 and 2 are shown below.
`
`
`2 Regardless of whether the preamble of claim 12 is limiting, Petitioner has
`shown that Lee satisfies the recitation in the preamble.
`
`21
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`IPR2021-00720
`Patent 9,355,405 B2
`
`
`
`Lee’s Figure 1, above left, shows a block diagram of a system
`overview and Lee’s Figure 2, above right, shows a block diagram of a
`vehicle multimedia receiver. Ex. 1004, 5:31–33. Dr. Williams explains that
`“Lee provides a block diagram of a system 10 (in which multimedia device
`20 operates) in figure 1, and a block diagram of multimedia device 20 in
`figure 2.” Ex. 1003 ¶ 86. Dr. Williams explains that “Lee further discloses
`that ‘multimedia device 20’ receives information about the audio broadcast,
`such as ‘station call letters, format, frequency, and other programming
`information,’ Ex. 1004, Fig. 2, and that this information can be transmitted
`via ‘RDS/RBDS,’ Ex. 1004, Fig. 1 . . . or from ‘Internet gateway 30.’”
`Ex. 1003 ¶ 87 (citing Ex. 1004, 6:9–20).
`
`22
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`IPR2021-00720
`Patent 9,355,405 B2
`Patent Owner does not respond specifically to Petitioner’s arguments
`or evidence with respect to this limitation. See PO Resp. 37–44.
`Based on this record, including the testimony of Dr. Williams, which
`we credit, we are persuaded that Petitioner has demonstrated that Lee’s
`description of multimedia device 20 receiving an audio advertisement
`broadcast from a radio station discloses the recited limitation “receiving,
`using an electronic receiving device, at least a first media content from a
`broadcast stream” of claim 12.
`iii. 12[b] receiving, using the electronic receiving device, at
`least a second media content
`Petitioner asserts that “Lee discloses that ‘Internet gateway
`network 30 is designed to transmit and receive critical information to and
`from a multimedia device 20 in the vehicle 184.’” Pet. 26 (citing Ex. 1004,
`6:9–12). Petitioner argues that the “advertisement-related data sent by
`‘Internet gateway 30’—represented by ‘action button labels’ and/or
`‘advertising logos’ on the display of Lee’s ‘multimedia device 20’—
`correspond to the claimed ‘second media content.’” Pet. 29 (citing Ex. 1003
`¶ 96).
`Petitioner further argues that “Lee’s ‘multimedia device 20,’ which
`corresponds to the claimed ‘electronic receiving device,’ performs the
`claimed step of ‘receiving . . . at least a second media content’; and the data
`related to the ‘advertisements’ correspond to the claimed ‘second media
`content.’” Pet. 29 (citing Ex. 1003 ¶ 97).
`Petitioner’s evidence is supported by the testimony of Dr. Williams.
`See Ex. 1003 ¶¶ 90–97. Dr Williams testifies that
`Lee discloses that “Internet gateway network 30 is designed to
`transmit and receive critical information to and from a
`multimedia device 20 in the vehicle 184 . . . .” Ex. 1004 at 6:9–
`
`23
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`IPR2021-00720
`Patent 9,355,405 B2
`12. Specifically, Lee explains that that “gateway 30 is designed
`to provide wireless Internet access to the multimedia device 20
`in the vehicle 184, enhance regular audio broadcasts with
`extended information, and provide personalized broadcast,
`information and applications to the vehicle 184.”
`Id. ¶ 90 (citing Ex. 1004, 10:44–48). A portion of Lee’s Figure 2 is
`shown below.
`
`
`
`The portion of Lee’s Figure 2, above, depicts vehicle multimedia
`receiver 160, displaying a series of soft action button labels 174, two of
`which are annotated by Petitioner in red as “BUY” and “INFO” buttons.
`Dr. Williams describes how “Lee explains that the information that ‘Internet
`Gateway 30’ sends to multimedia device 20 is represented by the appearance
`on the display screen of ‘action label buttons.’” Ex. 1003 ¶ 91.
`Dr. Williams testifies that “data are sent by Lee’s ‘Internet gateway 30’
`
`24
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`IPR2021-00720
`Patent 9,355,405 B2
`which inform the ‘multimedia device 20’ as to when (and what) ‘action
`button labels 174’ to display, so that the display screen is in sync with the
`audio broadcasts—such as displaying the ‘BUY’ action button label when a
`product is currently being advertised.” Id
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