Trials@uspto.gov
`571-272-7822
`
`Paper 6
`Entered: January 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATIONand HTC AMERICA,INC.,
`Petitioner,
`
`V.
`
`ADVANCED AUDIO DEVICES, LLC, |
`Patent Owner.
`
`Case IPR2014-01157
`Patent 7,933,171 B2
`
`Before SCOTT A. DANIELS, CHRISTOPHER L. CRUMBLEY,and
`GEORGIANNAW. BRADEN,Administrative Patent Judges.
`
`CRUMBLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 6
`Entered: January 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATIONand HTC AMERICA,INC.,
`Petitioner,
`
`V.
`
`ADVANCED AUDIO DEVICES, LLC, |
`Patent Owner.
`
`Case IPR2014-01157
`Patent 7,933,171 B2
`
`Before SCOTT A. DANIELS, CHRISTOPHER L. CRUMBLEY,and
`GEORGIANNAW. BRADEN,Administrative Patent Judges.
`
`CRUMBLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2014-01157
`Patent 7,933,171 B2
`
`I.
`
`INTRODUCTION
`
`HTC Corporation and HTC America,Inc. (collectively, “HTC’’) filed
`
`a Petition seeking inter partes review of claims 1, 2, 5, 6, 7, 14, 17, 20, 23,
`26, 28, 37, 40, 42, 43 and 45—48 of U.S. Patent No. 7,933,171 B2 (Ex. 1001,
`
`“the °171 patent”). Paper 1, “Pet.” The owner of the ’171 patent, Advanced
`Audio Devices, LLC (“AAD”),filed a Patent Owner’s Preliminary
`
`|
`
`Response. Paper 5, “Prelim. Resp.” Pursuant to 35 U.S.C. § 314(a), we
`may notinstitute an inter partes review “unless the Director! determines that
`
`. shows that
`. . and any response. .
`the information presented in the petition .
`there is a reasonablelikelihoodthat the petitioner would prevail with respect
`
`to at least 1 of the claims challenged inthe petition.”
`
`Uponconsideration of the Petition and Preliminary Response, we
`
`determine that the information presented establishesthat there is a
`
`reasonable likelihood that HTC would prevail with respectto all challenged
`claims ofthe 171 patent. Accordingly, weinstitute an interpartes review
`
`of these claims.
`
`1. Background
`
`A. The ’171 Patent
`
`The ’171 patent discloses an audio recording device that the
`
`specification terms a “music jukebox.” Ex. 1001, 1:16-17. According to
`
`the specification, existing recording devices permitted music to be recorded
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`
`2
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`IPR2014-01157
`Patent 7,933,171 B2
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`onto a compactdisc in real time, but did not provide editing functions, the
`ability to store music on the recorder formaking multiple copies of the disc,
`or the ability to customize easily the order in which tracks are recorded onto
`the disc. Id. at 2:28-62. The described music jukeboxis said to address
`these issues, as well as permit a user to “audition” a stored audio track by
`
`listening to it before recording onto a compactdisc. Jd. at 3:23—39.
`
`Various hardware components of the jukebox are described in the
`specification, including: audio inputs for receiving music in the form of
`analog signals (id. at 7:-47-58); one or moredata storage structures for
`storing and retrieving audio stored in digital form (id. at 9:7—16); and a drive
`for recording stored audio onto compactdiscs(id. at 13:55-57). The audio
`data stored in the memory permits audio tracksto be played backselectively,
`or “auditioned,” prior to recording. Jd. at 4:32-41. The componentsofthe
`
`music jukebox are contained in a housing having a display for providing
`
`information to a user, for example, through a graphical user interface. Id. at
`4:48-5:8. The housing also comprises a plurality of push buttons for
`
`controlling operation of the device. Jd. at 5:9-34.
`
`The specification of the ’171 patent describes the operation of the
`device as permitting a user to create a “session,” which is a group of sound
`tracks selected from a master songlist. Id. at 15:43-45, 16:51-59. A user
`~ also may reorder the songs within a session byselecting songs and moving
`them up or down within the sessionlist. Jd. at 16:18-28. The session then
`
`can be written to a compact disc. Jd. at 15:39-43.
`
`
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`IPR2014-01157
`Patent 7,933,171 B2
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`2. Illustrative Claim
`
`-Ofthe challenged claims, only claim 1 is independent; all other
`
`challenged claims depend directly or indirectly from claim 1. The
`
`challenged independent claim readsas follows:
`
`1.. A personal digital stereo audio player configured to store
`sound tracks and play the stored sound tracks for personal
`enjoyment, said personaldigital stereo audio player comprising:
`a unitary, integral housing containing at least non-volatile
`memory and a processor connected to the non-volatile
`memory and configured for maintaining and selectively
`accessing and playing sound tracks
`stored in the
`nonvolatile memory,
`the housing further comprising a
`display controlled by the processor, the processor being
`configured to cause the display to display a plurality of
`menusrelating to a library of sound tracks, wherein all of
`the sound tracks in the library and their names are stored
`in the non-volatile memory of the personal digital stereo
`audio player, wherein the menusincludeat least one of a
`list of names of soundtracks anda list of groups of sound
`tracks;
`
`a headphonejackin the housing;
`
`an input in the housing for receiving audio data;
`
`an amplifier operatively connected to the processor and the
`headphone jack and configured to amplify audio output
`signals produced during playing, which are transmitted to
`the headphonejack; and
`in the housing and in
`at least one touch-operable control
`communication with the processor, wherein the processor
`is configured suchthat:
`
`
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`TPR2014-01157
`Patent 7,933,171 B2
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`at least one of the at least one touch-operable control is _
`touchable to allow selection from the menus which
`the processor causesto be displayed onthe display,
`at least one of the at least one touch-operable control is
`touchable to control the volume at which audio is
`played,
`at least one of the at least one touch-operable controlis
`touchable to pause a sound track which is being
`played,
`
`at least one of the at least one touch-operable control is
`touchable to stop a sound track as it is being played
`and play the next sound track in a group of sound —
`tracks,
`
`at least one of the at least one touch-operable control is
`touchable to selectively power the personal digital
`stereo audio player on andoff, and,
`
`at least one of the at least one touch-operable control is
`touchable to select and play at
`least one of an
`individual sound track and a group of sound tracks
`through the headphonejack,
`
`is
`stereo audio player.
`wherein the personal digital
`configured to display on the display at least one of time
`elapsed (ascending) and time remaining (descending) for
`_the sound track being played,
`is
`stereo audio player
`wherein the personal digital
`configured such that the non-volatile memory stores a
`library of sound tracks that is received by the input and
`whichhas beenpre-selected by a user,
`
`wherein the non-volatile memory comprisesat least one of a
`Hard Disk Drive,
`solid state memory, and random
`address memory,
`
`
`
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`IPR2014-01157
`Patent 7,933,171 B2
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`is
`stereo audio player
`wherein the personal digital
`configured to receive audio data through the input of the
`personal digital
`stereo audio player, whereby sound
`tracks become stored in the non-volatile memory as
`digital data; and
`
`is
`stereo audio player
`wherein the personal digital
`configured such that at least one of the at least one touch-
`operable control is touchable to cause the personal digital
`stereo audio player to display on the display at least one .
`of a list of names of soundtracks, andalist of groups of
`soundtracks,
`
`is
`stereo audio player
`wherein the personal digital
`configured such that at least one of the at least one touch-
`operable control is touchable to cause the personaldigital
`stereo audio playerto play at least one of a specific sound
`track and a group of sound tracks through the headphone
`jack, and
`
`is
`stereo audio player
`wherein the personal digital
`configured such that at least one of the at least one touch-.
`operable control
`is touchable to control the volumeat
`which sound tracks are played through the headphone
`jack.
`
`Id. at 20:54—21:67.
`
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`Patent 7,933,171 B2
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`3. Related Proceedings
`
`The *171 patent, and fourother related patents, have been asserted
`against HTC in a co-pendinglitigation in the Northern Districtof Illinois,
`
`captioned Advanced Audio Devices, LLC v. HTC America, Inc., No. 1:13-cv-
`07582. HTC hasfiled four other petitions for interpartes review of the
`related, asserted patents, which have been assigned case numbers IPR2014-
`
`01154, IPR2014-01155, IPR2014-01156, and IPR2014-01158.
`
`B. Prior Art Relied Upon
`
`HTCrelies upon the followingprior art references:
`Hawkins
`US 5,333,116
`Jul. 26, 1994
`Martin
`US 5,355,302
`Oct. 11,1994
`Ozawa
`US 5,870,710
`Jan. 22,1997?
`
`(Ex. 1008)
`(Ex. 1007)
`(Ex. 1006)
`
`Lucente
`Nathan 7259
`Nathan 7255
`
`EP 0598547 A2
`WO 96/12259
`WO 96/12255
`
`May 25,1994
`Apr. 25,1996
`Apr. 25,1996
`
`(Ex. 1005)
`(Ex. 1002)
`(Ex. 1003)
`
`HTCalsorelies on the Sound Blaster 16 User Reference Manual (Ex.
`
`1004, “Sound Blaster’) as prior art. With Sound Blaster, HTC submits the
`
`Declaration of Kyle A. Miller, which states that Sound Blaster was publicly
`available “no later than the early spring of 1995.” Ex. 1004 { 13.
`HTC contendsthatall asserted references save Ozawaare priorart to
`the ’171 patent under 35 U.S.C. § 102(b). Pet. 14-15. Ozawais said to be
`
`prior art to the °171 patent under 35 U.S.C. § 102(e). Id. AAD challenges
`
`> Weprovidethe filing date of Ozawa, as HTCclaims Ozawais prior art
`under 35 U.S.C. § 102(e).
`
`7
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`Patent 7,933,171 B2
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`the prior art status of Sound Blaster, but does not otherwise dispute, at this
`
`stage of the proceeding, the priorart status of the other cited references.
`
`C. The Asserted Grounds
`
`HTCpresents the following grounds of unpatentability:
`
`
`
`
`
`
`
`
`
`
`
`
`Basis
`
`
`Se POUfee ebee ee
`,
`17,
`20,
`23,
`Nathan ’259 and Nathan ’255
`26, 28, 37, 40, 42, 43, 45—48
`
`1, 2,5, 6, 7, 14, 17, 20, 26 § 103|Sound Blaster, Lucente, Ozawa, and
`28, 37, 40, 42, 43, 45-48
`Hawkins
`
`
`
`
`
`23 § 103|Sound Blaster, Lucente, Ozawa,
`
`
`Hawkins, and Martin
`
`I
`
`ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review,“[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
`
`construe claim terms using “the broadest reasonable meaning of the words in
`
`their ordinary usage as they would be understood by oneofordinary skill in
`the art, taking into account whateverenlightenment by way ofdefinitions or
`otherwise that may be afforded by the written description containedin the
`
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`
`1997). We presumethat claim terms have their ordinary and customary
`
`meaning. See In re Translogic Tech., Inc., 504 F.3d:1249, 1257 (Fed.Cir.
`2007) (“The ordinary and customary meaningis the meaningthat the term
`
`8
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`IPR2014-01157
`Patent 7,933,171 B2
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`would have to a person of ordinary skill in the art in question.”) (internal
`
`quotation marks omitted). A patentee may rebut this presumption, however,
`
`by acting as his own lexicographer, providing a definition of the term in the
`
`specification with “reasonable clarity, deliberateness, and precision.” Jn re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`HTCproffers constructions for the following claim terms: 1) unitary,
`integral housing; 2) a display; and 3) at least one of. Pet. 11-12. AAD
`
`addresses these constructions, and also asks that we construe the terms: 1)
`
`soundtracks; 2) selectively accessing, and 3) specific. Prelim. Resp. 2-5.
`
`Wehave considered the parties’ proposed constructions, taking into account
`
`the plain meaning of the terms and their usagein the specification.
`
`1. Undisputed Constructions
`
`HTCasks that we construe unitary, integral housing accordingtoits
`
`customary and ordinary meaning,but doesnot set forth specifically what
`
`this meaning is. Pet. 11. AAD does not dispute this construction. Prelim.
`
`Resp. 2. AAD also notes that HTC’s declarant, Christopher Schmandt,
`interprets sound tracks as “digital or analog signals” or “audio data,” and
`does not dispute this construction. /d. at 4 (citing Ex. 1009 78). Upon
`
`review,the constructions are thé broadest reasonable consistent with their
`
`usagein the specification, thus, we adopt them for purposesofthis decision.
`
`2. Selectively Accessing .
`
`Claim 1 recites “a processor connected to the non-volatile memory
`
`and configured for maintaining and selectively accessing and playing sound
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`tracks stored in the non-volatile memory.” Ex. 1001, 20:61—64 (emphasis
`added). HTC doesnot proffer a construction for selectively accessing.
`
`AAD contendsthat the plain and ordinary meaningofthe term is “obtaining
`from a numberor groupbyfitness or preference.” Prelim. Resp. 4-5 (citing
`~ Ex. 2002 (generaldictionary definition of “selectively”); Ex. 2003 (general
`dictionary definition of“selection’”); Ex. 2004 (specialized dictionary
`definition of “‘access’’)).
`|
`AAD doesnotcite any usage ofselectively accessing in the
`specification of the °171 patent, and the phrase does not appear to be used
`
`anywhere but in the claims. The specification, however, does disclose that
`
`the music jukebox “has memory so soundtracks can be stored therein and
`selectively played back.” Ex. 1001, 4:33-34 (emphasis added). Moreover, a
`“user can review archived soundtracks by accessing the data storage”(id. at
`
`13:43-44 (emphasis added)) and soundtracks are contained in a “master
`
`song list which is accessed by pressing [a] push-button”(id. at 16:31—32).
`- AAD’s proffered construction,therefore, is consistent with the usage of the
`
`individual terms in the specification, and we adopt it for the purposesofthis
`
`decision.
`
`3. Remaining Claim Terms
`
`Wedeclineto provide explicit constructions for the remaining claim
`
`terms disputed by the parties. In some cases, the constructions are
`immaterial to our Decision to Institute, as the parties do not dispute that
`certain elements are disclosed by the prior art. For other terms, we do not
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`IPR2014-01157
`Patent 7,933,171 B2
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`consider the proffered construction to provide any clarity over the term
`
`itself.
`
`B. Priority Date ofthe ’171 Patent
`
`The ’171 patent claimspriority, through intervening continuation
`
`applications, to Application Serial No. 09/111,989 (“the ’989 application”),
`filed July 8, 1998. The ’989 application, in turn, claimspriority to —
`
`Provisional Application Serial No. 60/051,999 (“the ’999 provisional’), filed
`
`July 9, 1997. Ex. 1001. HTC arguesthat the ’171 patent is not entitled to
`
`claim priority to the filing date of the °999 provisional, because a
`“significant portion” ofthe specification ofthe 7171 patent was added at the
`time the 989 application wasfiled. Pet. 4. As such, HTC contendsthat the
`
`earliest priority date to which the ’171 patentis entitled is July 8, 1998, the
`
`filing date of the ’989 application. Jd. at 4-5.
`
`HTC doesnot explain, however, why this issue is material to our
`
`decision to institute trial in this case. As noted above,all references cited by
`
`HTCinits Petition have publication dates more than one year before, or
`filing dates prior to, July 9, 1997. Thus, all cited references qualify as prior
`art to the ’171 patent regardless of whetherwedeterminethatthe patentis
`
`entitled to a 1997 or 1998 priority date. For this reason, we need not address
`
`HTC’s argument regarding the priority date of the ’171 patent.
`
`C. Obviousness over Nathan 259 and Nathan. ’255
`
`HTCasserts that claims 1, 2, 5, 6, 7, 14, 17, 20, 23, 26, 28, 37, 40, 42,
`
`- 43, and 45-48 are unpatentable under 35 U.S.C. § 103 over the combined
`
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`IPR2014-01157
`Patent 7,933,171 B2
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`disclosures of Nathan ’259 (Ex. 1002) and Nathan ’255 (Ex. 1003). Pet. 15-
`
`36. HTC cites Nathan ’259 as describing a system that permits a user to
`
`download audiovisual content such as music over a modem,andstore the
`
`music locally for playback. /d. at 16. According to HTC,the Nathan ’259
`system discloses an LCD display, control buttons, data storage memory,
`
`audio outputs, and other structural features required by the challenged
`
`claims. Jd. at 16-18. Once downloaded, the system of Nathan ’259 is said
`
`to permit a user to place one or more selected songs into a queue for
`
`playback. Id. at 27. HTC providescitations to the portions of Nathan ’259
`
`that are asserted to disclose each element of the challenged claims. /d. at
`
`- 18-33.
`
`Nathan ’255—-whichallegedly discloses different details of the same
`
`audiovisual system as Nathan ’259—is relied upon for many of the same
`
`teachings as Nathan ’259, but adds a touchscreen for controlling the system.
`
`Id. at 16-17. HTC contends that, because the Nathan referencesshare the
`
`same inventors and both describe music jukeboxes that can download and
`
`play back music, a person of ordinary skill in the art would have had reason
`
`to combinethe teachings of the references. /d. at 17. HTC alsoasserts that
`
`a person ofordinary skill would have had reason to incorporate the
`
`touchscreen of Nathan ’255 in place of the LCD screen of Nathan ’259, and
`supports this assertion with the declaration of Christopher Schmandt. Id. at
`
`25 (citing Ex. 1009 F¥ 98-101).
`
`AAD interprets the disclosure of Nathan ’259 differently. According
`
`to AAD, the system of Nathan ’259 is a “commercial jukebox”in which “the
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`user buys or purchasesthe right to play a song once.” Prelim. Resp. 8.
`
`Furthermore, AAD contendsthat songs are added to Nathan ’259’s queue in
`
`the order that they are downloaded, cannotbe reordered, and are deleted
`once played. Jd. at 8-9. AAD also points out that the system ofNathan
`°259 “stresses the advantage of being able to use a hometelevision screen.”
`
`Id. at 9.
`
`Upon review ofthe disclosures of Nathan ’259 and Nathan ’255, the
`
`declaration of Mr. Schmandt, and the arguments presented in the Petition
`
`and Preliminary Response, we are persuaded that HTC has provided
`
`evidencesufficient to establish a reasonable likelihood that the combined
`
`disclosures of Nathan ’259 and Nathan ’255 teach or suggestall elements of
`
`the challenged claims, save claim 23 which wediscuss separately below.
`Furthermore, we are satisfied that HTC hasset forth sufficient articulated
`reasoning with factual underpinning to support a reason to combine the
`references.
`
`AAD arguesthat the Nathan references do not teach a unitary,
`
`integral housing, as recited in claim 1. Prelim. Resp. 12-13. According to
`AAD,Nathan 7259 contemplates using its device in connection with a
`
`television and stereo system, which are external to the housing of the device.
`Id. Furthermore, AAD points out that Nathan ’255 describes a “chassis or
`
`frame with external customizablefittings.” Jd.
`| On this record, we are not persuaded, however, that the modifiers
`unitary and integral necessarily exclude devices that may be attachedto
`
`other devices. Indeed, the ’393 patent discloses that its music jukebox may
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`be connected to external sources such as tape decks, as well as external
`
`outputs such as speakers. Ex. 1001, 6:28-31, 7:7-10. Furthermore, we note
`
`that Nathan ’259 does not require that its device be attached to these external
`
`devices, and may be used without them. Ex. 1002 J 46 (describing a “case
`
`in which the user does not connect a TV screen’).
`Nor are we persuaded by AAD’s argumentthat the Nathan references
`
`.
`
`fail to teach a display that can display a plurality ofmenus, as required by
`
`claim 1. AAD argues that the LCD display of Nathan ’259 is a “minimum
`
`display” that cannot display the menusintendedto be displayed on a
`
`connected television. Prelim. Resp. 17. We note, however, that Nathan
`°259 does not specify in what respect the LCD display is “minimum.” Nor
`does Nathan ’259’s description ofits various graphics screens, such as the
`
`selection graphics screen,state that it is displayed only whenthe deviceis
`
`connected to a television. Ex. 1002 4 74. Furthermore, HTC’s proposed
`ground of unpatentability is based on obviousness over the combination of
`
`- the Nathan references, and Nathan ’255 discloses a touch screen display that
`“allows display of various selection data.” Ex. 1003 q 24.
`Finally, AAD advances several related arguments based on the theory
`
`that the Nathan references fail to “teach giving the user a choice of
`selectively accessing and playing sound tracks.” Prelim. Resp. 13. At the
`outset, we note that these arguments are based on characterizations of the
`
`Nathan references that are not supported in AAD’s Preliminary Response by
`
`citation to the record. Therefore, we find it unpersuasive that, as AAD
`
`argues, the user of Nathan ’259 merely “purchases a single performance” of
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`a song (id. at 8), and soundtracks can only be playedin the order they were
`purchased, or randomly. /d. at 10. On the current record, AAD has not
`provided the Board with a factual basis to draw such conclusionsatthis
`
`time.
`
`Rather, it appears that Nathan ’259 discloses deleting songs from the
`
`queue once they are played, not from the musiclibrary altogether. Ex. 1002
`
`{| 86 (“[w]hen the selection has been reproducedinits entirety,it is removed
`
`from the queuefile’) (emphasis added). The reference discloses a “new
`selections acquisition mode” (“NSAM”)for ordering and downloading on
`new music onto the jukebox. Jd. at J§ 64-73. A different “selection
`
`graphics screen” then permits the adding of these newly acquired songs to a
`queue for playback. Jd. | 74. Onthe present record, Nathan ’259, thus,
`appears to describe a master song list to which songs are added via the
`
`NSAM,in addition to a queue of songs selected from the library using the
`
`selection graphics screen. If the queue is empty, then the songis
`
`immediately played. /d. For the purposesofthis decision, we are persuaded
`
`that Nathan ’259 discloses selectively accessing andplaying sound tracks
`
`stored in the non-volatile memory.
`
`For similar reasons, we are not convinced by AAD’s argumentthat
`
`the Nathan references fail to disclose a touch-operable control .
`.
`. touchable
`... to play at least one ofa specific sound track and a group ofsound
`tracks, as required by claim 1. Prelim. Resp. 15. Nathan ’259 discloses a
`
`“{b]utton [that] allows validation of the selection or selections for initiating
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`their introduction into the queue or their immediate and successive
`
`performanceif the queue is empty.” Ex. 1002 § 74.
`
`1. Dependent Claim 26
`
`AAD argues dependentclaim 26 separately. Prelim. Resp. 19. Claim
`26 depends from claim 1, and further recites that “the housing does not
`articulate.” AAD does not specify, however, why the housing described in
`
`the Nathan referencesarticulates, or cite any portion of the reference to
`
`support its contention.
`
`Neither party proposes a construction for articulate, and the
`
`specification of the ’171 patent does not appear to use the term. The
`
`ordinary and customary meaning of articulate, when used as an intransitive
`
`verb,is “to be jointed or form a joint.” COLLINS ENGLISH DICTIONARY
`(2000) (Ex. 3001). According to HTC, Nathan ’259 states that its system 1s
`
`housed in a “box,” (Ex. 1002 § 46) whereas Nathan ’255 discloses a “steel
`chassis or frame with external customizable fittings.” (Ex. 1003 9 34). Pet.
`18-19. We discern no reason to conclude from these disclosuresthat the
`
`housingsare jointed, and AAD directs us to no evidenceto the contrary. For
`this reason, we are persuaded that the Nathan referencesdisclose a housing
`that does notarticulate, as required by claim 26.
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`IPR2014-01157
`Patent 7,933,171 B2
`
`2. Dependent Claim 23
`AAD also argues that the additional limitation of claim 23?is not
`disclosed by the Nathan references. Prelim. Resp. 18-19. According to
`
`AAD,Nathan discloses sorting soundtracks on the remote server, but claim
`
`23 requires the ability to “sort a list of sound tracks .
`
`.
`
`. wherein all of the
`
`- soundtracksin the list and their namesare stored in the non-volatile
`
`memory of the personal digital stereo audio player.” Jd. at 18. It is this
`
`ability to sort sound tracks that is missing from the disclosures of the Nathan
`references, AADcontends. Id.
`
`To meetclaim 23’s sort limitation, HTC directs our attention to
`
`Nathan °259’s disclosure of the ability to sort sound tracks by,“for example,
`
`the artist name, album name, and date of release of that group of songs.”
`Pet. 32 (citing Ex. 1002 ff 71, 90-94). The cited portion ofNathan’259,
`however,lists these criteria as types of information stored in a database, that
`
`“make[] it possible to notify the user of the costs and particulars for each of
`
`the artists or groupsof artists whose songs and videosare being performed.”
`Ex. 1002 7 94. HTC does not direct us to any disclosure that the system of
`Nathan ’259 permits sorting of sound tracks according to these criteria.
`
`While Nathan ’259 discloses that a user may search for sound tracks
`accordingtotitle, artist, release date, or other criteria, this is in the context of —
`
`* In the header of the section discussing claim 23, AAD alsoincludes claims
`24, 25 and 35. Prelim. Resp. 18. While these claims include the “sort”
`limitation found in claim 23, they are not includedin the claims challenged
`by HTC in the Petition. We therefore do not consider AAD’s arguments
`with respect to claims 24, 25, and 35.
`
`17
`
`
`
`IPR2014-01157
`Patent 7,933,171 B2
`
`the system’s “acquisition screen,” meaning the soundtracks have yetto be
`
`purchased and downloaded to the local system. /d. at ¢ 103. Claim 23
`
`requires sorting of soundtracks “stored in the non-volatile memory ofthe
`
`personaldigital stereo audio player.”
`
`Norare we persuaded by HTC’s argumentthat “when acquiringtitles
`
`of musical selections, a manager of Nathan 255’s jukebox cansort thelist of
`
`songs alphabetically in a new selections acquisition mode module.” Pet. 32
`
`(citing Ex. 1003 J] 92-97). Again,the list being sorted is of songs prior to
`
`acquisition, meaning the songsare notyet stored in the memory ofthe audio
`
`player.
`
`Forthese reasons, weare satisfied that HTC has established a
`
`reasonable likelihood that claims 1, 2, 5, 6, 7, 14, 17, 20, 26, 28, 37, 40, 42,
`
`43, and 45-48 would have been obvious over the combined disclosures of
`Nathan ’259 and Nathan °255. Weare not persuadedthat claim 23 would
`have been obvious over the Nathan references.
`
`D. Obviousness over Sound Blaster, Lucente, Ozawa, and Hawkins
`
`HTCcontendsthat claims 1, 2, 5, 6, 7, 14, 17, 20, 26, 28, 37, 40, 42,
`
`43, and 45-48are unpatentable under 35 U.S.C. § 103 over the combined
`
`teachings of Sound Blaster (Ex. 1004), Lucente (Ex. 1005), Ozawa (Ex.
`
`1006), and Hawkins (Ex. 1008). Pet. 36-56. Sound Blasteris cited as.
`
`' disclosing audio software with a graphical user interface designedfor
`
`organizing and playing back audiofiles. Jd. at37. HTC also notesthat
`
`Sound Blaster discloses the ability to group soundtracksinto playlists. Jd.
`
`18
`
`
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`IPR2014-01157
`Patent 7,933,171 B2
`
`HTCrelies on Lucente as disclosing a tablet-style computer with an
`
`integrated touch screen. Jd. at 37-38. The housing of Lucente includes an
`
`audio input and output, processor, and memory. /d. According to HTC, the
`
`hardware of Lucente is capable of running the Sound Blaster software. Id. at
`
`38.
`
`.
`Ozawais said to disclose a portable audio device that can download
`
`music from a network service center and save audio files to a hard drive in
`
`the device. Jd. at 39-40. HTCasserts that the Ozawa device has push-
`
`button controls on its face for controlling the operation of the device, such as
`
`playing and pausing music. /d.
`
`Hawkinsis cited as disclosing “a touch-operable control to selectively
`
`poweron andoffits combination device of a laptop and pad computer.” Jd.
`at 51. HTC contendsthat a person of ordinary skill in the art would
`recognize the benefit of having an on/off control to save battery life. Id. at
`42.
`|
`HTC contends that a person of ordinary skill in the art would have had
`
`reason to combine Sound Blaster, Lucente, Ozawa, and Hawkins. First, the
`
`referencesare said to pertain to personal computing devices with similar
`hardware, for similar purposes of reproducing audio. Jd. at 41. In addition,
`the devices of Lucente and Ozawaaresaid to be directed to portable devices,
`and HTCasserts that a person of ordinary skill in the art would have
`combinedthe software of Sound Blaster with these devices to “improv{e]
`multimedia user experience.” Id. at 41-42.
`AAD doesnot dispute the alleged disclosures of the cited references,
`
`19
`
`
`
`-IPR2014-01157
`Patent 7,933,171 B2
`
`or contend that the disclosures—if combined in the manner HTC contends—
`
`would not teach all elements of the challenged claims. Rather, AAD
`disputes that HTC has established that Sound Blaster is prior art to the ’171
`patent, and argues that a person ofordinary skill in the art would not have
`
`had reason to combinethe references. We discuss these arguments in turn
`
`below. |
`
`1. Sound Blaster as Prior Art
`
`Asdiscussed above, HTC relies on the testimony of Mr. Miller to
`
`establish that Sound Blaster was publicly available “no later than the early
`
`spring of 1995.” Ex. 1004 4 13. AAD contends that Sound Blaster “‘is not
`
`properly authenticated”andis not a prior art printed publication. Prelim.
`
`Resp. 23. At the outset, we note that these are two distinct challenges to
`Sound Blaster. Lack of authentication is an evidentiary issue which,
`pursuant to our Rules, must be objected to within ten business daysofthe
`institution of trial and then preserved in a Motion to Exclude. 37 C.F.R.
`
`§ 42.64. Availability of a reference as a prior art printed publication,
`however, is a foundational issue upon whichourstatutory authority in an
`interpartes review is based. 35 U.S.C. § 311(b).
`In his Declaration, Mr. Miller testifies that Sound Blaster is a copy of
`
`a Sound Blaster 16 User Reference Manualhe received during the course of
`
`his employmentat Creative Labs, “no later than the early spring of 1995.”
`
`Ex. 1004 4 19. According to Mr. Miller, his employer provided him with
`
`commercial versions of Creative Labs’ most popular products, including the
`
`20
`
`
`
`IPR2014-01157
`Patent 7,933,171 B2
`
`Sound Blaster 16 Audio Card. Jd. at § 12. Mr. Miller testifies that the
`
`product he received included the User’s Manual, and would have been the
`
`same documentation provided to a commercial purchaserof the product. /d.
`
`at | 14.
`
`In the Preliminary Response, AAD argues that the contents of Sound
`_ Blaster are hearsay to Mr. Miller. Prelim. Resp. 24. The contents of the
`reference, however, are not relevant to the question of whether the document
`was publicly available. In any event, the contents of Sound Blaster are not
`being offered for the truth of the matter asserted, but rather for the fact that
`
`the contents were publicly known. See, e.g., Joy Techs., Inc. v. Manbeck,
`
`751 F. Supp. 225, 233 n.2 (D.D.C. 1990), judgment aff'd, 959 F.2d 226
`
`(Fed. Cir. 1992) (“A prior art document submitted as a ‘printed publication’
`
`... 1s offered simply as evidence of whatit describes, not for proving the
`
`truth of the matters addressed in the document. Therefore,it is not hearsay
`
`under Fed.R.Evid. 801(c).”)
`Second, AAD arguesthat there is insufficient chain of custody ofthe
`copy of Sound Blaster that Mr. Miller provided. Prelim. Resp. 26. Chain of
`
`custody for a piece of evidenceis an issue that goesto its weight, notits
`
`admissibility, and every person who handled evidence neednottestify in
`
`orderto establish a sufficient chain of custody. See Melendez-Diazv.
`
`Massachusetts, 557 U.S. 305, 336 (2009) (citing U.S. v. Lott, 854 F.2d 244,
`
`250 (7th Cir. 1988)). Further, to the extent this is an evidentiary objection,
`we again considerthe objection premature. In any event, Mr. Miller testifies
`
`that his copy of Sound Blaster wasstored at his parents’ farm in Oklahoma
`
`2]
`
`
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`IPR2014-01157
`Patent 7,933,171 B2
`
`between 1995, when he movedto California, and 2014, when counselfor
`
`HTCrequested that he retrieve the manual. Ex. 1004 4 16. In the absence
`
`of any evidence to the contrary, we conclude that HTC hasestablished a
`sufficient chain of custody at this stage of the proceeding to consider Sound -
`Blaster.
`|
`Finally, AAD disputes that the Sound Blaster version provided by Mr.
`Miller is the same as the version that was included with the commercially
`available product. Prelim. Resp. 25. According to AAD,“[iJt is just as
`likely that the copy of the manual that Mr. Miller produced was,in fact, an
`internal draft that was neverreleasedto the public or was released to the
`public after the filing date of the 7171 patent.” Jd. This assertion is merely
`
`attorney argument, however. The only evidence in the recordat this stage of
`
`the proceeding is Mr. Miller’s testimony, which states that the copy of
`
`Sound Blaster Mr. Miller received was the sameas that providedto the
`public. Ex. 1004 14.
`|
`The evidence of record at this stage of the proce
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