us to. 0V
`Trials
`571-272-7822
`
`Paper6
`Entered: January 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`\
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioner,
`
`V.
`
`ADVANCED AUDIO DEVICES, LLC,
`
`Patent Owner.
`
`Case IPR2014-01158
`
`Patent 8,400,888 B2
`
`Before SCOTT A. DANIELS, CHRISTOPHER L. CRUMBLEY, and
`
`GEORGLANNA W. BRADEN, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION ‘
`
`Institution of Inter Partes Review
`
`37 CFR. § 42.108
`
`
`Trials
`571-272-7822
`
`Paper6
`Entered: January 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`\
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioner,
`
`V.
`
`ADVANCED AUDIO DEVICES, LLC,
`
`Patent Owner.
`
`Case IPR2014-01158
`
`Patent 8,400,888 B2
`
`Before SCOTT A. DANIELS, CHRISTOPHER L. CRUMBLEY, and
`
`GEORGLANNA W. BRADEN, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION ‘
`
`Institution of Inter Partes Review
`
`37 CFR. § 42.108
`
`
`
`IPR2014-01158
`
`Patent 8,400,888 B2
`
`1.
`
`INTRODUCTION
`
`HTC Corporation and HTC America, Inc. (collectively, “HTC”) filed
`
`a Petition seeking inter partes review of claims 1—1 5 of US. Patent No.
`
`8,400,888 (Ex. 1001, “the ’888 patent”). Paper 1, “Pet.” The owner of the
`
`’888 patent, Advanced Audio Devices, LLC (“AAD”), filed a Patent Owner
`
`Preliminary Response. , Paper 5, “Prelim. Resp.” Pursuant to 35 U.S.C.
`
`§ 314(a), we may not institute an inter partes review “unless the Director1
`determines that the information presented in the petition .
`.
`. and any
`
`response .
`
`.
`
`. shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that the information presented establishes that there is a
`
`reasonable likelihood that HTC would prevail with respect to all challenged
`claims of the ’888 patent. Accordingly, we institute an inter partes review
`
`of these claims.
`
`A. The ’888 Patent
`
`1
`
`1. Background .
`
`The ’888 patent discloses an audio recording device that the
`
`specification terms a “music jukebox.” Ex. 1001, 1:21—22. According to
`
`the specification, existing recording devices permitted music to be recorded
`
`1 “The Board institutes the trial on behalf of the Director.” 37 CPR.
`
`§ 42.4(a).
`
`2
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`
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`Patent 8,400,888 B2
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`onto a compact disc in real time, but did not provide editing functions, the
`
`ability to store music on the recorder for making multiple copies of the disc,
`
`or the ability to customize easily the order in which tracks are recorded onto
`
`the disc. Id. at 2:33—67. The described music jukebox is 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 compact disc. Id. at 3:27—43.
`
`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 7:55—61); one or more data storage structures for
`storing and retrieving audio stored in digital form (id. at 9:15—22); and a
`
`drive for recording stored audio onto compact discs (id. at 13:62—64). The
`
`audio data stored in the memory permits audio tracks to be played back
`
`selectively, or “auditioned,” prior to recording. Id. at 4:3 8—47. The
`components of the 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 4:55—5:15. The housing also comprises a plurality of
`
`push buttons for controlling operation of the device. Id. at 5:16-42.
`
`The specification of the ’888 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 song list. Id. at 15:50—52, 16:58—66. A user
`also may reorder the songs within a session by selecting songs and moving '
`
`them up or down within the session list. Id. at 16:25—33. The session then
`
`can be written to a compact disc. Id. at 15:46-50.
`
`
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`IPR2014-01158
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`2. Illustrative Claim
`
`Of the challenged claims, only claim 1 is independent; all other ‘
`
`challenged claims depend directly or indirectly from claim 1. The
`
`challengedindependent claim reads as follows:
`
`An apparatus configured to store sound tracks and play '
`1.
`- the stored sound tracks for personallenjoyment, said apparatus
`comprising:
`
`the housing
`a housing containing non-volatile memory,
`further comprising at
`least one touch-operable control
`and a touch screen display configured to be operated to
`cause the touch screen display to display at least one
`menu relating 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 apparatus, wherein the
`at least one menu includes at least one of a list of names
`
`of sound tracks stored in the non-volatile memory of the
`apparatus and a list of groups of sound tracks stored in
`the non-volatile memory of the apparatus;
`
`an input in the housing for receiving audio data; -
`
`audio output structure located at least partially within the
`housing for outputting audio signals;
`
`wherein the at least one. touch-operable control and touch
`screen display is configured such that at least one of the
`touch-operable control and the touch screen display is
`touchable to allow selection from the at least one menu ,
`
`displayed on the touch screen display;
`
`wherein the apparatus is configured to receive audio data
`through the input of the apparatus, whereby sound tracks
`become stored in the non-volatile memory as digital data;
`
`
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`IPR2014-01158
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`Patent 8,400,888 B2
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`wherein the apparatus is configured for maintaining and
`selectively accessing and playing sound tracks stored in
`the non-volatile memory;
`'
`
`wherein the apparatus is configured such that at least one of
`the at
`least one touch-operable control and the touch
`screen display is touchable to cause the apparatus to
`display on the touch screen display at least one of a list of
`names of sound tracks and a list of groups of sound
`tracks wherein all of the sound tracks in the list of names
`
`of sound tracks displayed on the touch screen display are
`stored in the non-volatile memory of the apparatus, and
`wherein all of the sound tracks in the list of groups of
`sound tracks displayed on the touch screen display are
`stored in the non-volatile memory of the apparatus; and
`
`wherein the apparatus is configured such that at least one of
`the at
`least one touch-operable control and the touch
`screen display is touchable to cause the apparatus to play
`through the audio output structure at
`least one of a
`specific sound track displayed on the touch screen
`display and a group of sound tracks displayed on. the
`touch screen display, said apparatus being configured to
`display said list of names of sound tracks stored in the
`- non-volatile memory of
`the
`apparatus without
`the
`apparatus having to be connected to a network service
`center containing the names.
`
`Id. at 2122-52.
`
`3. Related Proceedings
`
`The ’888 patent, and four other related patents, have been asserted
`
`against HTC in a co-pending litigation in the Northern District of Illinois,
`
`captioned Advanced Audio Devices, LLC v. HTC America, Inc. , No. 1:13-cv-
`
`07582. HTC has filed four other petitions for inter partes review of the
`
`5
`
`
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`IPR2014-01158
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`Patent 8,400,888 B2
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`related, asserted patents, which have been assigned case numbers IPR2014-
`
`01154, IPR2014-01155, IPR2014-01156, and IPR2014-01157.
`
`B. Prior Art Relied Upon
`
`HTC relies upon the following prior art references:
`
`Martin
`Ozawa
`Keller
`
`US 5,355,302 _
`US 5,870,710
`- US 7,289,393
`
`Oct. 11, 1994
`Jan. 27, 19972
`Oct. 30, 1997
`
`(Ex. 1003)
`(Ex. 1008)
`(Ex. 1002)
`
`Lucente
`Nathan ’259
`Nathan ’25
`
`EU 0598547 A2
`W0 96/12259
`wo 96/12255
`
`May 25, 1994
`Apr. 25, 1996
`Apr. 25, 1996
`
`(Ex. 1007)
`(Ex. 1004)
`(Ex. 1005)
`
`HTC also relies on the Sound Blaster 16 User Reference Manual (Ex.
`
`1006, “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. 1006 1] 13.
`
`HTC contends that all asserted references, save Ozawa, are prior artto
`
`the ’888 patent under 35 U.S.C. § 102(b). Pet. 16—18. Ozawa is said to be
`
`prior art to the ’888 patent under 35 U.S.C. § 102(e). Id. AAD challenges
`
`the prior art status of Sound Blaster and Keller (Prelim. Resp. 7—17, 28—32),
`
`but does not otherwise dispute, at this stage of the proceeding, the prior art
`
`status of the other cited references.
`
`2 We provide the filing date of Ozawa, as HTC claims Ozawa is prior art
`under 35 U.S.C. § 102(e).
`
`6
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`IPR2014—01158
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`Patent 8,400,888 B2
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`C. The-Asserted Grounds
`
`HTC presents the following grounds of unpatentability:
`
`
`
`
`
`
`—Keller and Martin“ i
`
`§103
`
`Nathan ’259 and Nathan ’255
`
`w I
`
`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 one of ordinary skill in
`
`the art, taking into account whatever enlightenment by way ofdefinitions or
`
`otherwise that may be afforded by the written description contained in the
`
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`
`1997). We presume that 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 meaning is the meaning that the term
`
`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
`
`
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`IPR2014—01 158
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`Patent 8,400,888 B2
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`specification with “reasonable clarity, deliberateness, and precision.” In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`HTC proffers constructions for the claim terms a display and at least
`
`one of. Pet. 14—15. AAD addresses these constructions, and also asks that
`
`we construe the terms: 1) sound tracks; 2) selectively accessing; and 3)
`
`specific. Prelim. Resp. 3—5. We have considered the parties’ proposed
`
`constructions, taking into account the plain meaning of the terms and their
`
`usage in the specification, andconstrue the terms as follows.
`
`1 . Selectively Accessing
`
`Claim 1 specifies that the apparatus “is configured for maintaining .
`
`and selectively accessing and playing sound tracks stored in the non-volatile
`memory.” Ex. 1001, 21:28—30 (emphasis added). HTC does not proffer a
`
`construction for selectively accessing. AAD contends that the plain and
`
`ordinary meaning of the term is “obtaining from a number or group by
`
`fitness or preference.” Prelim. Resp. 4—5 (citing Ex. 2002 (general
`
`dictionary definition of “selectively”); Ex. 2003 (general dictionary
`
`’ definition of “selection”); Ex. 2004 (specialized dictionary definition of
`
`“access”)).
`AAD does not cite any usage of selectively accessing in the
`
`specification of the ’888 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 sound tracks can be stored therein and
`
`selectively played back.” Ex. 1001, 4:39—40 (emphasis added). Moreover, a
`
`
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`IPR2014-01158
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`Patent 8,400,888 B2
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`“user can review archived sound tracksby accessing the data storage” (id. at
`
`13:50—51 (emphasis added» and sound tracks are contained in a “master
`
`song list which is accessed by pressing [a] push-button” (id. at 16:38—39
`
`(emphasis added)). On this record, MD’S proffered construction, therefore,
`
`is consistent with the usage of the individual terms in the specification, and
`
`we adopt it for the purposes of this decision.
`
`2. Remaining Claim Terms
`
`We decline to 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
`
`consider the proffered construction to provide any clarity over the term
`
`itself.
`
`B. Priority Date of the ’888 Patent
`
`The ’888 patent claims priority, through intervening continuation
`applications, to Application Serial No. 09/111,989 (“the ’989 application”),
`
`filed July 8, 1998, which in turns claims priority to Provisional Application
`
`Serial No. 60/051,999 (“the ’999 provisional”), filed July 9, 1997. Ex. 1001.
`
`In a chain of continuation applications, a claim in a patent receives the
`benefit of the filing date of an earlier application in the chain, if the claim is
`
`supported by the written description of the earlier application. 35 U.S.C.
`
`§§ 112, 120. “[E]ntitlement to priority is decided on a claim-by-claim basis,
`
`and various claims may be entitled to different priority dates.” X2Y
`
`9
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`IPR2014401158
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`Patent 8,400,888 B2
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`Attenuators, LLC v. Int ’1 Trade Comm ’n, 757 F.3d 1358, 1366 (Fed. Cir.
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`2014). Thus, absent a claim of priority, parent applications in a chain of
`
`continuations may be used as prior art to claims in a later-filed child
`
`application, but only for claims that incorporate new matter. See Santarus,
`Inc. v. Par Pharm., Inc, 694 F.3d 1344, 1352 (Fed. Cir. 2012).
`V
`When faced with a prior art challenge to a claim, the burden of
`
`production—altematively called the burden of going forward—is on the
`
`Patent Owner to show that the claim is entitled to a filing date prior to the
`
`date of the alleged prior art. See Tech. Licensing Corp. v. Videotek, Inc, 545
`F.3d 1316, 1327 (Fed. Cir. 2008). In other words, the PatentOwner must
`
`come forward with evidence and argument—either in its Preliminary
`
`Response or, if trial is instituted, in its Response+showing why the
`
`challenged claim is supported by the written description of the priority
`
`~ application.
`
`The ultimate burden of persuasion in an inter partes review, however,
`
`remains on the Petitioner to prove unpatentability by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e); see Tech. Licensing, 545 F.3d at 1329
`
`(“ultimate burden never shifts, however much the burden of going forward
`may jump from one party to another as the issues in the case are raised and
`
`developed”). Therefore, once a Patent Owner satisfies its burden of
`
`production, the burden is on Petitioner to convince the Board that the claim 5
`
`is not entitled to the benefit of the earlier filing date. See Tech. Licensing,
`
`545 F.3d at 1328. When determining whether to institute an inter partes
`
`review, we must determine whether there is a reasonable likelihood that
`
`10
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`vIPR2014-01158
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`Patent 8,400,888 B2
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`Petitioner will meet its burden. 35 U.S.C. § 314(a).
`
`HTC raises two arguments regarding the priority date to which the
`
`’888 patent is entitled.
`
`1. Priority Date: July 8, 1998
`
`First, HTC argues that the ’888 patent is not entitled to claim priority
`
`to the filing date of the ’999 provisional, because a “significant portion” of
`the specification of the ’888 patent was added at the time the ’989
`I
`
`application was filed. Pet. 4. As such, HTC contends that the earliest
`
`priority date to which the ’888 patent is entitled is July 8, 1998, the filing
`
`date of the ’989 application. Id. at 5.
`
`HTC does not explain, however, why this issue is material to our
`
`decision to institute trial in this case. As noted above, all references cited by
`
`HTC in its Petition—save Keller, which we address below—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 ’888 patent
`regardless of whether we determine that the patent is entitled to a 1997 or
`
`1998 priority date. For this reason, we need not address HTC’s argument
`
`regarding the priority date of the ’888 patent.
`
`2. Priority Date." April 25, 2011
`
`Second, HTC argues that AAD added new matter to the claims of the
`
`’888 patent during prosecution, in an amendment dated December 6, 2012.
`
`Pet. 5. HTC identifies as new matter a limitation of claim 1: “said apparatus
`
`being configured to display said list of names of sound tracks stored in the
`
`11.
`
`
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`lPR2014-01 158
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`Patent 8,400,888 B2
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`non—volatile memory of the apparatus without the apparatus having to be
`connected to a network-service center containing the names.” Id. HTC
`
`points to the fact that the specification of the ’888 patent as originally filed
`
`does not use the phrase “network service center,” and speculates that the
`
`term was taken from Ozawa and added as a negative limitation during
`
`prosecution to overcome a prior art rejection over Ozawa. Id. at 5—6. As
`such, HTC contends that the claims lack written description support in the
`
`parent applications, and therefore, the earliest priority date to which these
`claims could be entitled is April 25, 2011, the filing date of the application
`
`which matured into the ’888 patent. Id. at 7.
`
`AAD responds by first challenging the jurisdiction of the Board to
`
`review whether the claims at issue have written description support in the
`
`parent applications. Prelim. Resp. 8. AAD notes that inter partes review
`
`proceedings are limited to challenges based on patents or printed
`
`publications. Id; see 35 U.S.C. § 311(b). This argument has been addressed,
`
`and rejected, in previous decisions of the Board. See, e. g., SAP Am, Inc. v.
`
`Pi—Net Int ’1, Inc, Case IPR2014-00414, slip op. 12—13 (PTAB Aug. 18,
`
`2014) (Paper 11) (noting “the difference between compliance with the
`
`requirements of 35 U.S.C. § 112 and asseSsing the earliest priority date for a
`
`claim”). HTC does not challenge the patentability of claims 1—15 for failure
`
`to comply with the written description requirement of 35 U.S.C. § 112—
`
`which would be outside the scope of an inter partes review—but instead
`makes a proper challenge to priority as part ‘of a ground of unpatentability
`
`based on 35 U.S.C. § 102.
`
`12
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`AAD also contends that the “same exact argument was presented
`
`previously and found meritless by the Patent Office.” Prelim. Resp. 8—9. To
`
`‘ support this argument, AAD provides two Information Disclosure
`
`Statements, submitted during prosecution, which provided the Office with
`
`papers filed in related litigations in which the defendants were challenging
`
`the priority date of the ’888 patent. Exs. 2006, 2010. Citing 35 U.S.C.
`
`‘
`
`§ 325(d), AAD argues that we should reject HTC’s priority argument
`
`because the same or substantially similar argument previously was presented
`to the Office. Prelim Resp. 12—14.
`
`Having reviewed the District Court filings provided to the Office in
`
`the Information Disclosure Statements (Exs. 2007, 2008), we do not
`
`consider HTC’s arguments in this inter partes review to have been presented
`
`previously to the Office. While. the defendants in the litigations challenged
`
`the priority date to which a parent of the ’888 patent was entitled, these
`
`arguments did not raise the “network service center” limitation that HTC
`
`contends lacks written description support. Nor could the defendants have
`presented such an argument, as the ’888 patent which contains the limitation
`
`had not yet issued, and therefore, could not have been at issue in an
`
`infringement suit. For these reasons, we are not persuaded that we should .
`exercise our discretion to deny institution pursuant to § 325(d).
`
`Turning to the merits of the priority issue, on this record, we are not
`
`convinced that AAD has met its burden of production regarding the priority
`
`date of the ’888 patent claims. At this stage of the proceeding, AAD has not
`
`come forward with evidence showing that the claims are supported in the
`
`13
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`priority applications; indeed, no parent application has been entered into the
`
`record of this case by either party. The argument on the merits contained in
`
`AAD’s Preliminary Response is limited to one paragraph that contains no
`citation to the record, and simply asserts that “[i]t is clear from the instant
`
`specification that the device recited in the claims is a stand-alone device.
`
`One of ordinary skill in the art would understand that stand-alone devices
`
`are not connected to network service centers.” Prelim. Resp. 16. Even if
`
`supported by citations to evidence, this argument is inapposite. The relevant
`
`consideration is whether the disclosure of the parent application to which
`
`priority is claimed provides written description support, not the “instant
`
`Specification” that AAD cites.
`
`On this record, AAD has not met its burden of production to show that
`
`the claims of the ’888 patent are entitled to a priority date earlier than the
`
`filing date of instant application: April 25, 2011. During trial, AAD may
`
`present evidence to support its claim of priority, at which time the ultimate
`
`burden of persuasion will be on HTC to establish, by a preponderance of the
`
`evidence, that the claims are not entitled to priority.
`
`C. .Obviousness over Keller and Martin
`
`HTC asserts that claims 1—15 are unpatentable under 35 U.S.C. § 103
`
`over the combined disclosures of Keller (Ex. 1002) and Martin (Ex. 1003).
`Pet. 18—27. Keller, issued October 30, 2007, is a parent patent of the ’8-88
`
`patent, and contains a specification that is substantially similar to that of the
`
`’888 patent. HTC contends that all limitations of the challenged claims are
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`14
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`disclosed in Keller, except the limitation of claim 1 that recites “said
`
`apparatus being configured to display said list of names of sound tracks
`
`stored in the non-volatile memory of the apparatus without the apparatus
`
`having to be connected to a network service center containing the names.”
`
`Id. at 19. To provide this missing limitation, HTC relies on the disclosure of
`
`Martin, which is said to teach a system for managing a plurality of
`
`jukeboxes from a central station. Id. According to HTC, the system of
`
`Martin includes local jukeboxes, which store the titles of songs stored in the
`
`central mass storage unit, regardless of whether the jukebox is currently
`
`connected to the central station. Id. at 20.
`
`HTC asserts that a person of ordinary skill in the art would have had
`
`reason to combine the disclosures of Keller and Martin. Id. Both references
`
`are said to relate to music jukeboxes, and Keller cites Martin as a prior art
`
`reference. Id. HTC asserts that Martin discloses an improvement—
`
`“downloading songs over a network but keeping those songs in memory
`
`after the network connection has been terminated”—which would also
`
`_
`improve the similar music, jukebox of Keller. Id. at 21.
`AAD does not address the merits of HTC’s proposed ground, but
`
`rather challenges the ground on the basis that Keller is not prior art to the
`
`’888 patent. As noted above, Keller is a parent of the ’888 patent.
`
`Therefore, if the ’888 patent is entitled to claim priority to Keller or one of
`
`the preceding applications in the priority chain, then Keller is not prior art.
`
`As we stated above, however, at this time, AAD has not met its burden of
`
`production that the ’888 patent is entitled to a priority date earlier than its
`
`15
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`filing date. On this record, therefore, we conclude that Keller is prior art to
`
`the ’888 patent.
`
`Upon review of thearguments presented in the Petition and
`
`Preliminary Response, the disclosures of Keller and Martin, and the
`
`declaration of Christopher Schmandt (Ex. 1009), we are persuaded that HTC
`
`has provided sufficient evidence that the combined disclosures teach or
`
`suggest all elements of the challenged claims. Furthermore, we are satisfied '
`
`that HTC has set forth sufficient articulated reasoning with factual
`underpinning to support a reason to combine the references. For these
`reasons, we conclude that HTC has established a reasonable likelihood that.
`claims 1—1 5 would have been obvious over the combined disclosures of
`
`Keller and Martin.
`
`D. Obviousness over Nathan ’259 and Nathan ’255
`
`HTC asserts that claims 1—15 are unpatentable under 35 U.S.C. § 103
`
`over the combined disclosures of Nathan ’259 (Ex. 1004) and Nathan ’255
`
`(Ex. 1005). Pet. 27—41. HTC cites Nathan ’259 as describing a system that
`
`permits a user to download audiovisual content such as music over a
`
`modem, and store the music locally for playback. Id. at 27—28. 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. Id. at 27—29. 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 33—34. HTC provides citations to the portions
`
`16
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`
`
`IPR2014-01158
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`Patent 8,400,888 B2
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`of Nathan ’259 that are asserted to disclose each element of the challenged
`
`claims.
`
`Nathan ’255—which allegedly 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 29. HTC contends that, because the Nathan references share 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
`
`combine the teachings of the references. Id. HTC also asserts that a person
`
`of ordinary 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 Mr. Schmandt. Id. at 32 (citing Ex. 1009 11
`128).
`'
`'
`
`AAD interprets the disclosure of Nathan ’259 differently. According
`
`to AAD, the system of Nathan ’259 is a “commercial jukebox” in which “the
`
`user buys or purchases the right to play a song once.” Prelim. Resp. 17.
`
`Furthermore, AAD contends that songs are added to Nathan ’259’5 queue in
`
`the order that they are downloaded, cannot be reordered, and are deleted
`
`once played. Id. AAD also points out that the system of Nathan ’259
`f‘stresses the advantage of being able to use a home television screen.” Id. at
`
`18.
`
`Upon review of the disclosures ofNathan ’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
`
`17
`
`
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`IPR2014-01158
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`Patent 8,400,888 B2
`
`evidence sufficient to establish a reasonable likelihood that the combined
`
`disclosures of Nathan ’259 and Nathan ’255 teach or suggest all elements of
`the challenged claims. Furthermore, we are satisfied that HTC has set forth
`
`sufficient articulated reasoning with factual underpinning to support a reason
`
`to combine the references. For the following reasons, we do not find AAD’s
`
`arguments to the contrary persuasive at this stage of the proceeding.
`
`AAD argues that the Nathan references do not teach a display that can
`
`display at least one menu relating to a library ofsound tracks, as required
`
`by claim 1. AAD argues that the LCD display of Nathan ’259 is a
`
`“minimum display” that cannot display the menus intended to be displayed
`
`on a connected television. Prelim. Resp. 24. We note, hOwever, that Nathan
`
`’259 does not specify in what respect the LCD display is “minimum.” Nor
`
`does Nathan ’259’5 description of its various graphics screens, such as the
`
`selection graphics screen, state that it is displayed only when the device is .
`
`connected to a television. Ex. 1004 1] 74. Furthermore, HTC’s pr0posed
`
`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. 1005 11 24.
`
`AAD also advances arguments based on “user’s choice,” summarized
`
`as “[n]either Nathan reference allows the user any choice regarding play
`
`back order, except random or in the order purchased.” Prelim. Resp. 23. 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
`
`18
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`
`
`IPR2014-01158
`
`Patent 8,400,888 B2
`
`argues, the user of Nathan ’259 merely “purchases a single performance” of
`
`a song (id. at 17), and sound tracks can only be played in the order they were
`
`purchased, or randomly. Id. at 22. On the current record, AAD has not
`
`provided the Board with a factual basis to draw such conclusions at this
`
`time.
`
`, Rather, it appears that Nathan ’259 discloses deleting songs from the
`
`queue once they are played, not from the music library altogether. Ex. 1004
`
`1] 86 (“[w]hen the selection has been reproduced in its 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. Id. at 111] 64—73. A different “selection
`
`graphics screen” then permits the adding of these newly acquired songs to a
`
`queue for playback. Id. 1! 74. On the 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 song is
`
`immediately played. Id. For the purposes of this decision, we are persuaded
`
`that Nathan ’259 discloses maintaining and selectively accessing and
`
`playing sound tracks stored in the non-volatile memory.
`
`For similar reasons, we are not convinced by AAD’S argument that
`
`the Nathan references fail to disclose a touch-operable control .
`.
`. touchable
`to cause the apparatus to play. .
`. at least one ofa specific sound track. .
`.
`
`and a group ofsound tracks, as required by claim 1. Prelim. Resp. 23.
`
`Nathan ’259 discloses a “[b]utton [that] allows validation'of the selection or
`
`19
`
`
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`IPR2014-01158
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`Patent 8,400,888 B2
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`selections for initiating their introduction into the queue or their immediate
`
`and successive performance if the queue is empty.” Ex. 1004 11 74.
`
`For these reasons, we are satisfied that HTC has established a
`
`reasonable likelihood that claims 1—15 would have been obvious over the
`
`combined disclosures of Nathan ’259 and Nathan ’255.
`
`E. Obviousness over Sound Blaster, Lucente, and Ozawa
`
`HTC contends that claims 1—1 5 are unpatentable under 35 U.S.C.
`
`§ 103 over the combined teachings of Sound Blaster (Ex. 1006), Lucente
`
`(Ex. 1007), and Ozawa (Ex. 1008). Pet. 41—60. Sound Blaster is cited as
`
`disclosing audio software with a graphical user interface designed for
`
`organizing and playing back audio files. Id. at 42. HTC also notes that
`
`Sound Blaster discloses the ability to group sound tracks into playlists. Id.
`
`at 44.
`
`'
`
`HTC relies on Lucente as disclosing a tablet-style computer with an
`
`integrated touch screen. Id. at 42—43. The housing of Lucente includes an
`
`audio input and output, processor, and memory. Id. at 43. According to
`
`HTC, the hardware of Lucente is capable of running the Sound Blaster
`
`software. Id.
`
`Ozawa is 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. Id. at 45. HTC asserts that the Ozawa device has push—button
`
`controls on its face for controlling the operation of the device, such as
`
`playing and pausing music. Id.
`
`20
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`
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`IPR2014-01158
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`Patent 8,400,888 B2
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`HTC contends that a person of ordinary skill in the art would have had
`reason to combine Sound Blaster, Lucente, and Ozawa. First, the references
`
`- are said to pertain to personal computing devices with similar hardware, for
`
`similar purposes of reproducing audio. Id. at 46. In addition, the devices of
`
`Lucente and Ozawa are said to be directed to portable devices, and HTC
`
`asserts that a person of ordinary skill in the art would have combined the
`
`software of Sound Blaster with these devices to “improv[e] multimedia user
`
`experience.” Id. at 46—47.
`
`AAD does not dispute the alleged disclosures of the cited references,
`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 ’888
`patent, and argues that a person of ordinary skill in the art would not have
`
`had reason to combine the references. We discuss these arguments in turn
`
`below.
`
`1. Sound Blaster as Prior Art
`
`As discussed 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. 1006 1] 13. AAD contends that Sound Blaster “is not
`
`properly authenticated” and is not a prior art printed publication. Prelim.
`
`Resp. 28. At the outset, we note that these are two di
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