SDI Technologies, Inc.v.Bose Corporation, a Delaware corporation

Patent Trial and Appeal Board

Jun 11, 2015

11608034 (P.T.A.B. Jun. 11, 2015)

Trials@uspto.gov Paper 32
Tel: 571-272-7822 Entered: June 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SDI TECHNOLOGIES, INC.,
Petitioner,
v.
BOSE CORPORATION,
Patent Owner.
_______________

Case IPR2014-00346
Patent 8,364,295 B2
_______________

Before KARL D. EASTHOM, MICHAEL J. FITZPATRICK,
and DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00346
Patent 8,364,295 B2

2

I. INTRODUCTION
A. Background
SDI Technologies, Inc. (“Petitioner”) filed an Amended Petition
(Paper 6, “Pet.”) requesting inter partes review of claims 25, 26, 51–53, 55–
62, 75, and 76 of U.S. Patent 8,364,295 B2 (Ex. 1001, “the ’295 patent”).
Bose Corporation (“Patent Owner”) filed a Preliminary Response (Paper 12,
“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, in our Decision to Institute,
we instituted this proceeding as to all of the challenged claims of the ’295
patent. Paper 13 (“Dec.”).
After the Decision to Institute, Patent Owner filed a Patent Owner
Response (Paper 16, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 17, “Reply”). A consolidated oral hearing was held
on February 24, 2015, in this matter and SDI Technologies, Inc. v. Bose
Corp., IPR2014-00343 (“IPR-343”). Paper 31 (“Tr.”).
Petitioner relies on the testimony of Andrew B. Lippman, Ph.D.
(Ex. 1017, “Lippman Decl.”) in support of its contentions. Patent Owner
relies on the testimony of Robert L. Stevenson, Ph.D. (Ex. 2120, “Stevenson
Decl.”) in support of its contentions.
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has
demonstrated, by a preponderance of the evidence, that all of the challenged
claims are unpatentable.

IPR2014-00346
Patent 8,364,295 B2

3

B. Related Proceedings
In SDI Technologies, Inc. v. Bose Corp., IPR2013-00465 (“IPR-465”)
we held, in a final written decision (IPR-465, Paper 40, “IPR-465 FWD”),
that claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78 of the
’295 patent are unpatentable. Patent Owner has appealed that decision.
IPR-465, Paper 44.
Petitioner also filed two petitions for inter partes review of U.S.
Patent No. 8,401,682 B2 (“the ’682 patent”), SDI Technologies, Inc. v. Bose
Corp., IPR2013-00350 (“IPR-350”), and IPR-343. Pet. 4; Paper 7, 3.
The ’682 patent matured from a continuation of the application that gave rise
to the ’295 patent. In a final written decision in IPR-350 (IPR-350, Paper
36), we held that claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73,
74, and 76 of the ’682 patent are unpatentable. Patent Owner appealed that
decision. IPR-350, Paper 40. In a final written decision in IPR-343, issued
concurrently with this Decision, we hold that claims 25, 26, 52, 53, 55–61,
and 75 of the ’682 patent are unpatentable.
Patent Owner asserted the ’682 and ’295 patents in Bose Corp. v. SDI
Technologies, Inc., Case No. 13-cv-10277-WGY (D. Mass.), filed on
February 13, 2013. Pet. 4; Paper 7, 2.

C. References Relied Upon
Petitioner relies upon the following prior art references:
Guy Hart-Davis & Rhonda Holmes, MP3!, I DIDN’T KNOW YOU
COULD DO THAT …™ 65–83 (Sybex, Inc. 1999) (Ex. 1009,
“WinAmp”);
IPR2014-00346
Patent 8,364,295 B2

4

Remote control WinAmp and more, downloaded at
web.archive.org/web/19990508121919/http://www.evation.com
/irman/index.html (Ex. 1010, “Irman Web Pages”); and
Altec Lansing Techs., Inc., ADA310W Altec Lansing Computer
Speaker System User Guide (1998) (Ex. 1011, “Altec Lansing
Manual”).

D. The Asserted Ground
We instituted this proceeding based on Petitioner’s ground of
obviousness, under 35 U.S.C. § 103(a), of claims 25, 26, 51–53, 55–62, 75,
and 76 over WinAmp, Irman Web Pages, and Altec Lansing Manual.
Dec. 21.

E. The ’295 Patent
The ’295 patent generally relates to audio systems for reproducing
sound from computer files and computer network radio stations. Ex. 1001,
1:19–22. Figure 1 of the ’295 patent is reproduced below.

IPR2014-00346
Patent 8,364,295 B2

5

Figure 1 shows sound reproduction device 10 (such as a Bose Wave®
radio) that includes AM/FM tuner 12, audio signal processing circuitry 14,
control electronics circuitry 16 for controlling the tuner and the signal
processing circuitry, remote control device 17 for controlling the control
electronics circuitry, and speaker 18. Id. at 3:35–40, 4:53–57. Sound
reproduction device 10 is connected to computer 20 through control
connector 50, which connects control electronics circuitry 16 to the
computer’s bus 22, and through a connector between the audio system’s
analog input terminal 49 and the computer’s stereo jack 48. Id. at 3:59–63.
Stereo jack 48 facilitates connection of the computer’s sound card 33 to the
sound reproduction device’s audio signal processing circuitry 14. Id. at
Fig. 1. The computer includes hard disk drive 30 that can store digital music
files. Id. at 3:46–49, 6:56–7:7. The computer also is connected to a
network, such as the Internet. Id. at 3:54–58. The computer can access web
radio stations through the network. Id. at 6:44–52. Signals from remote
control 17, received by sound reproduction device 10, can control functions
of computer 20. Id. at 10:34–59.
Claim 59, reproduced below, is illustrative of the claimed subject
matter:
59. An audio system configured to connect to a separate
computer that has a plurality of user functions, a subset of the
user functions relating to control of audio information, and is
configured to provide audio information from any one of a
plurality of sources, including digital music files stored on the
computer and a network accessible by the computer, the audio
system comprising:
(A) a sound reproduction device comprising: a housing;
IPR2014-00346
Patent 8,364,295 B2

6

one or more speakers located at least partially within the
housing;
an amplifier located within the housing for powering the
one or more speakers;
control circuitry located within the housing; and
a connector located at least partially within the housing
that is configured to provide a physical and
electrical connection exclusively between the
sound reproduction device and the computer,
wherein the connection includes one or more
signal paths configured to (i) receive audio
information from the computer corresponding to
the digital music files stored on the computer and
audio information from the network via the
computer, (ii) transmit to the computer signals for
controlling the computer, and (iii) receive signals
from the computer; and
(B) a remote control device configured to transmit
signals representing at least a first type of
command from a user and a second type of
command from a user to the sound reproduction
device, wherein the first type of command is a
command to control a user function of the sound
reproduction device and the second type of
command is a command to control a user function
of the computer,
wherein the control circuitry is configured to receive the
signals from the remote control and, in response to
receiving such signals:
(i) control the user function of the sound
reproduction device when the user issues a
command of the first type, and
(ii) transmit to the computer, via a signal path of
the connector, a signal for controlling the
IPR2014-00346
Patent 8,364,295 B2

7

user function of the computer when the user
issues a command of the second type.

II. ANALYSIS
A. Estoppel
As explained above, in IPR-465, we held, inter alia, that independent
claims 1 and 27 are unpatentable as obvious under 35 U.S.C. § 103(a). That
determination was based on the same prior art asserted in the present
proceeding. Claims 25 and 26 depend from claim 1, and claims 51 and 52
depend from claim 27. Independent claims 53 and 59 are similar to claims 1
and 27, respectively. In this proceeding, Patent Owner makes several
arguments regarding the patentability of the challenged claims and the
admissibility of evidence that it previously raised in IPR-465, and which we
did not find persuasive.
At the hearing, Petitioner argued that Patent Owner is estopped, under
37 C.F.R. § 42.73(d)(3), from arguing in this proceeding any patentability or
admissibility issue that was decided in Petitioner’s favor in the Final Written
Decision in IPR-465. Tr. 7:16–8:20. Patent Owner objected to the
application of estoppel and, in the alternative, requested an opportunity to
brief the issue. Id. at 21:1–12. We permitted the parties to submit
simultaneous briefs addressing estoppel. Id. at 76:3–77:13. Petitioner filed
a Brief on the Applicability and Scope of 37 C.F.R. 42.73(d)(3) (Paper 29,
“Pet. Estoppel. Br.”), and Patent Owner filed a Brief on the Applicability
and Scope of Patent Owner Estoppel under 37 C.F.R. § 42.73(d)(3)
(Paper 30, “PO Estoppel Br.”).
IPR2014-00346
Patent 8,364,295 B2

8

According to Rule 42.73(d)(3),
A patent applicant or owner is precluded from taking
action inconsistent with the adverse judgment, including
obtaining in any patent:
(i) A claim that is not patentably distinct from a finally
refused or canceled claim; . . .
Petitioner argues that Rule 42.73(d)(3) should be read in the context of
37 C.F.R. § 42.2, which defines “judgment” as “a final written decision by
the Board, or a termination of a proceeding.” Pet. Estoppel Br. 2–3, 6–7.
Specifically, Petitioner argues that our Final Written Decision in IPR-465 is
an “adverse judgment” and that Patent Owner’s advancement of arguments
rejected in that Final Written Decision is “taking action inconsistent with”
such adverse judgment, as stated in Rule 42.73(d)(3), giving rise to estoppel.
Id.
Petitioner argues that Rule 42.73(d)(3) applies when the requirements
of conventional issue preclusion are satisfied, namely, “(1) identity of the
issues in a prior proceeding; (2) the issues were actually litigated; (3) the
determination of the issues was necessary to the resulting judgment; and,
(4) the party defending against [estoppel] had a full and fair opportunity to
litigate the issues.” Pet. Estoppel Br. 3 (quoting Jet, Inc. v. Sewage Aeration
Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000)). Petitioner presents arguments
as to why those conventional requirements are satisfied in this case. Id. at
3–6.
Nevertheless, we agree with Patent Owner that Rule 42.73(d)(3) does
not apply in this case, at least because Patent Owner’s appeal rights in IPR-
465 have not been exhausted. PO Estoppel Br. 1. As Patent Owner argues
(PO Estoppel Br. 2), the Patent Office has explained in its discussion
IPR2014-00346
Patent 8,364,295 B2

9

accompanying the Final Rule that Rule 42.73(d)(3) applies estoppel against
a party whose claim has been cancelled and not merely held unpatentable:
Section 42.73(d)(3) applies estoppel against a party whose
claim was cancelled . . . . The rule is consistent with 35 U.S.C.
316(a)(4), as amended, and 326(a)(4), which require that the
Office prescribe regulations establishing and governing the
reviews and the relationship of such reviews to other
proceedings under title 35.
Rules of Practice for Trials Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions, Discussion of
Specific Rules, 77 Fed. Reg. 48,612, 48,625 (Aug. 14, 2012) (emphasis
added); see also 77 Fed. Reg. at 48,614 (Differences Between the Final Rule
and the Proposed Rule) (emphasis added):
Further, the final rule tailors the provisions to provide that a
patent applicant or patent owner whose claim is canceled is
precluded from taking action inconsistent with the adverse
judgment, including obtaining in any patent: (1) A claim that is
not patentably distinct from the finally refused or cancelled
claim[.]
As Patent Owner points out (PO Estoppel Br. 2–3), under 35 U.S.C.
§ 318(b), a claim is not cancelled until all appeal rights have terminated.
We are not persuaded by Petitioner’s argument that Rule 42.2
implicitly defines “adverse judgment” to be a final written decision.
“Adverse judgment” is not defined expressly. However, its use in
Rule 42.73(d)(3) (“the adverse judgment”) is best read as a reference to the
earlier use of the term in 37 C.F.R. § 42.73(b), which states
(b) A party may request judgment against itself at any time
during a proceeding. Actions construed to be a request for
adverse judgment include:
(1) Disclaimer of the involved application or patent;
IPR2014-00346
Patent 8,364,295 B2

10

(2) Cancellation or disclaimer of a claim such that the
party has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the
contested subject matter; and
(4) Abandonment of the contest.
This is consistent with the Office’s comments to Rule 42.73(d)(3), which
explains that a “patent owner whose claim is canceled is precluded from
taking action inconsistent with the adverse judgment.” 77 Fed. Reg. at
48,614. Petitioner has not persuaded us that “adverse judgment” carries a
broader meaning in subsection (d)(3) of Rule 42.73 than subsection (b) of
the same Rule.
Accordingly, Patent Owner is not estopped from raising, in this
proceeding, the patentability and admissibility arguments we rejected in
IPR-465. Nevertheless, as explained below, we reject those arguments for
substantially the same reasons as given in the Final Written Decision in IPR-
465.

B. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude Evidence Pursuant to
37 C.F.R. § 42.64 (Paper 20, “Mot. to Exclude”). Petitioner filed an
Opposition to the Motion to Exclude (Paper 21, “Opp. to Mot. to Exclude”).
Patent Owner filed a Reply to Petitioner’s Opposition to the Motion to
Exclude (Paper 22, “Reply to Mot. to Exclude”).
Patent Owner contends that page seven of the Altec Lansing Manual
(Ex. 1011) should be excluded. Mot. to Exclude 8–9. Petitioner opposes
excluding page seven. Opp. to Mot. to Exclude 2–4. In our Final Written
IPR2014-00346
Patent 8,364,295 B2

11

Decision in IPR-465, we considered substantially the same arguments and
excluded page seven. IPR-465 FWD 16–17. For the same reasons, we
exclude page seven of Exhibit 1011 in this proceeding.
Patent Owner also requests exclusion of paragraphs 39–44 of Exhibit
1017, the Declaration of Dr. Lippman. Mot. to Exclude 9–15. In our Final
Written Decision in IPR-465, we considered substantially the same
arguments directed to exclusion of parallel testimony of Dr. Lippman in that
proceeding and denied the request. IPR-465 FWD 22 & n.5. For the same
reasons, we deny Patent Owner’s request to exclude paragraphs 39–44 of
Exhibit 1017 in this proceeding.
Patent Owner further requests that we exclude Irman Web Pages
(Ex. 1010). Mot. to Exclude 2–8. In our final written decision in IPR-465,
we considered and denied a request from Patent Owner to exclude this
reference in that proceeding under Federal Rules of Evidence 802 and 901.
IPR-465 FWD 13–16. Patent Owner’s argument was essentially the same
for both authenticity and hearsay: the date stamp1 at the lower left corner of
the Irman Web Pages document was not shown to be a reliable indicator of
the date on which the document had been archived by Internet Archive,
either because the statement itself was hearsay introduced by Petitioner for
the truth of the matter asserted (the archive date) or because Petitioner failed
to introduce an authenticating affidavit from Internet Archive showing that
the document was archived on that date. IPR-465 FWD 13–16. As we
explained in the Final Written Decision, at the hearing in IPR-465, Patent

1 The date stamp reads: web.archive.org/web/19990508121919/http://www.
evation.com/irman/index.html
IPR2014-00346
Patent 8,364,295 B2

12

Owner could not articulate any reason to suspect that the date stamp applied
by Internet Archive was unreliable and conceded that obtaining a standard
affidavit from Internet Archive would have been sufficient to overcome an
authentication objection. Id. at 14–16. We then introduced an unsigned
copy of Internet Archive’s standard affidavit, concluding that it would not
have added significantly to the record. Id. at 15.2 We then concluded, based
on the evidence presented, that Irman Web Pages was reliable and authentic.
Id. at 15–16.
In this proceeding, Patent Owner again challenges the Internet
Archive date stamp as either inauthentic or hearsay. Mot. to Exclude 2–8.
Patent Owner does not appear to be arguing that Irman Web Pages was not
available on the Internet. Rather, Patent Owner argues that Petitioner has
not proved that the Internet Archive date stamp is a reliable indicator of the
date on which Irman Web Pages actually was archived and, thus, Petitioner
has not proved that Irman Web Pages is what it purports to be, i.e., a
document archived on May 8, 1999. Id. at 6. As to Internet Archive’s
standard affidavit, Patent Owner now argues that it would not have been
sufficient to authenticate Irman Web Pages. Mot. to Exclude 5–6. Patent
Owner argues that an answer to an Internet Archive frequently asked

2 In its PO Estoppel Brief, at 6, Patent Owner asserts that it did not have a
full and fair opportunity to address Internet Archive’s standard affidavit
because we sua sponte introduced it as an exhibit and expunged Patent
Owner’s objections to the exhibit. Patent Owner neglects to state we
expunged its objections because they were submitted without authorization,
in violation of our rules. IPR-465, Paper 43, 2. Patent Owner did not seek
reconsideration of the IPR-465 Final Written Decision under 37 C.F.R.
§ 42.71(d).
IPR2014-00346
Patent 8,364,295 B2

13

question states that the standard affidavit itself indicates only that it is a true
and correct copy of Internet Archive’s records and does not establish the
date on which a document was available on the Internet. Id. at 6 (citing
Ex. 2121, 1).
According to Federal Rule of Evidence 901(a), “[t]o satisfy the
requirement of authenticating or identifying an item of evidence, the
proponent must produce evidence sufficient to support a finding that the
item is what the proponent claims it is.” We recognize that “Testimony of a
Witness with Knowledge,” such as an Internet Archive standard (or non-
standard) affidavit, is one example of evidence that satisfies the
authentication requirement. See FED. R. EVID. 901(b)(1).
Nevertheless, there are other examples that suffice. Specifically, a
document can be authenticated with evidence of “Distinctive Characteristics
and the Like. The appearance, contents, substance, internal patterns, or
other distinctive characteristics of the item, taken together with all the
circumstances.” Rule 901(b)(4). Petitioner argues that Irman Web Pages
includes such distinctive characteristics, including the Internet Archive logo
and header at the top of the exhibit and an Internet Archive date-stamped
URL affixed to the bottom of the exhibit. Opp. to Mot. to Exclude 5–6.
Patent Owner does not dispute that Irman Web Pages is a true and correct
copy of an Internet Archive record. Petitioner further argues (and we
confirmed) that following the date-stamped Internet Archive URL verifies
that the web page exists on Internet Archive’s servers. Id. at 7. Moreover,
an answer to another Internet Archive frequently asked question explains
how its time stamps correspond to its record keeping:
IPR2014-00346
Patent 8,364,295 B2

14

The Internet Archive assigns a URL to each archived page on
its site in the format http://web.archive.org/web/[Year in
yyyy][Month in mm][Day in dd][Time code in
hh:mm:ss]/[Archived URL]. Thus, the Internet Archive URL
http://web.archive.org/web/19970126045828/http://www.archiv
e.org/ would be the URL for the record of the Internet Archive
home page (http://www.archive.org/) archived on January 26,
1997, at 4:58 a.m. and 28 seconds (1997/01/26 at 04:58:28).
Ex. 2121, 4 (brackets in original). Unless Internet Archive deviated from its
normal practice in archiving Irman Web Pages, Irman Web Pages
presumably was archived on May 8, 1999, the date indicated by the time
stamp. Ex. 1010, 1. The archived document itself bears a 1998 copyright
logo purportedly affixed by Evation.com, which is consistent with the time
stamp added by Internet Archive. Id. at 3.
Patent Owner does not dispute that Irman Web Pages is an authentic
copy of an Evation.com web site archived, at some point, by Internet
Archive. The issue is whether it was archived on May 8, 1999 (and prior to
the filing date of the ’295 patent). Consistent with our finding in the IPR-
465 Final Written Decision, at 14–16, we find that the distinctive
characteristics on Irman Web Pages, including the logo and time stamp from
Internet Archive, in light of Internet Archive’s explanation of its record
keeping, constitute evidence sufficient, under Rule 901(b)(4), to support a
finding that Irman Web Pages is a copy of an Evation.com web page
archived by Internet Archive on May 8, 1999. The fact that the Evation.com
copyright date closely predates the Internet Archive time stamp is further
evidence showing Irman Web Pages’ authenticity. Moreover, we find the
evidence to be sufficient under Rule 901(b)(4) even in the absence of an
affidavit under Rule 901(b)(1).
IPR2014-00346
Patent 8,364,295 B2

15

Regarding hearsay, we conclude that the date-stamp in the Internet
Archive URL is reliable. The reasoning in In re Epstein, 32 F.3d 1559 (Fed.
Cir. 1994), is instructive. In that case, the Federal Circuit analyzed whether
certain abstracts of software containing statements of “release” and “first
installation” dates, statements that constituted hearsay, evidenced dates of
public use. Id. at 1565. The Federal Circuit acknowledged that the Board,
in an ex parte appeal, is not bound by the Federal Rules of Evidence. Id. at
1565–66. Nevertheless, the Federal Circuit took a common-sense approach
to evaluating whether the statements in the abstracts were reliable and
trustworthy, the issue at the root of Patent Owner’s concerns regarding
authenticity and hearsay. Id. Specifically, the Federal Circuit explained that
“nothing on the face of the documents . . . suggests the information has been
altered in any way,” and that to find the documents unreliable would be to
assume that the authors had engaged in false or misleading advertising, an
assumption that the Epstein court would not make. Id. at 1566. Rather,
“because the abstracts appear on their face to be accurate and reliable, and
because appellant has failed to proffer any evidence to support his arguments
to the contrary, [the Federal Circuit] assume[d] the truthfulness of the
various assertions in the abstracts.” Id.
The facts introduced in this proceeding, considered as a whole,
similarly indicate reliability. For example, as explained above, an answer to
an Internet Archive frequently asked question shows that, according to
Internet Archive’s regular business practices, the date stamp on an archived
web page indicates the date and time on which such document was archived.
Ex. 2121, 4. Patent Owner argued at length at the hearing that because
Internet Archive relies on third-party web crawlers to collect documents to
IPR2014-00346
Patent 8,364,295 B2

16

be archived, we cannot trust the date stamp applied by Internet Archive.
See, e.g., Tr. 27:12–30:19. Patent Owner, however, has pointed to no
evidence to suggest that third party web crawlers manipulate or misrepresent
the dates on which they collect documents for archiving. Moreover, the
archived Irman Web Pages document itself includes a copyright date of
1998. Ex. 1010, 3. This evidence is consistent with the subsequent date
stamp applied by Internet Archive, giving us additional confidence that
Internet Archive’s time stamp is reliable. As explained in the IPR-465 Final
Written Decision, at 15, Patent Owner admits that nothing about Irman Web
Pages itself suggests that the Internet Archive date stamp is unreliable.
Patent Owner has echoed that admission in this proceeding. Tr. 37:15–23.
In other words, there is no evidence that either Evation.com, the author of
Irman Web pages, or a web crawler acting for Internet Archive
misrepresented dates.
After weighing all of the evidence, we find, by a preponderance of the
evidence, that Irman Web Pages is sufficiently reliable to satisfy the residual
exception to hearsay articulated in Federal Rule of Evidence 807. To qualify
for the residual exception under Rule 807, four requirements must be met:
(1) the statement has equivalent circumstantial guarantees of
trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more
probative on the point for which it is offered than any other evidence that the
proponent can obtain through reasonable efforts; and (4) admitting it will
best serve the purposes of these rules and the interests of justice. FED. R.
EVID. 807(a). As explained above, the Internet Archive’s date stamp, in
light of the Evation.com copyright notice, has circumstantial guarantees of
trustworthiness. The date stamp is offered as evidence of a material fact,
IPR2014-00346
Patent 8,364,295 B2

17

i.e., a date on which Irman Web Pages was publicly available. The Internet
Archive’s answers to frequently asked questions evidence Internet Archive’s
practice of affixing a date stamp on each archived page indicating the date
on which the page was archived. As explained in the IPR-465 Final Written
Decision, a standard affidavit from Internet Archive likely would not have
added materially to this information, confirming only that Irman Web Pages
is one of its records, an issue not in dispute. Thus, the date stamp and other
corroborating evidence likely are more probative on the point for which they
are offered than any other evidence that the proponent could have obtained
through reasonable efforts. Finally, in consideration of the evidence
showing reliability, and the lack of any evidence suggesting otherwise, we
are persuaded that admitting Irman Web pages, and the Internet Archive date
stamp, will best serve the purposes of the Federal Rules of Evidence and the
interests of justice. Patent Owner’s request to exclude Irman Web Pages is
denied.

C. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1279–81 (Fed. Cir. 2015). Claim terms generally are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
IPR2014-00346
Patent 8,364,295 B2

18

In the Decision to Institute, we preliminarily construed claim terms as
reproduced in the table below:
Claim Phrase Claim Construction in the Decision to
Institute
“computer” (claims 1, 27, 53,
59)
any machine capable of receiving input,
processing, storing, and outputting data
“network” (claim 1, 59) an interactive computer network, such as
the internet
“audio information from the
network via the computer”
(claim 1, 59)
audio information received from the
computer that the computer has
downloaded from the network
“configured to respond to
signals received from the
computer” (claims 25, 51)
configured to take an action as a result of
signals received from a computer

During trial, Patent Owner disputed our construction of “configured to
respond to signals received from the computer.” PO Resp. 6–18. Patent
Owner contends that we should construe “configured to respond to signals
received from the computer,” recited in claims 25 and 51, to mean
“configured to answer or reply to the computer, i.e., send a responsive
communication back to the computer.” PO Resp. 7.
We start with the ordinary meaning of “respond.” In the Decision on
Institution, at 9, we considered a dictionary definition advanced by Patent
Owner (cited to again in the PO Resp., at 12). According to WEBSTER’S
THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE 1935
(unabridged 1993) (Ex. 2103), “respond” means, inter alia, “2 : to say
something in return : make an answer” and “3 : to show some reaction to a
force or stimulus . . . : react in response.” Patent Owner only cited to
definition 2, “to say something in return : make an answer.” As the
IPR2014-00346
Patent 8,364,295 B2

19

dictionary shows, however, the ordinary meaning also is broad enough to
encompass definition 3, “to show some reaction to a force or stimulus . . . :
react in response,” which corresponds to our preliminary construction.
We next look to the Specification of the ’295 patent to discern
whether the patentee intended a more narrow meaning of “respond,” keeping
in mind the Federal Circuit’s “caution[] against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). Patent Owner points us to two passages in the Specification. In
the first, Ex. 1001, 1:63–2:5, the Specification states that if a computer
system “responds” to a control signal from a sound reproduction system, the
sound reproduction system determines that the computer system is in a
responsive state. Patent Owner infers from this description that the
computer system must be sending an answer or reply; otherwise the sound
reproduction system would not be able to determine that the computer
system is in a responsive state. PO Resp. 10–11. Patent Owner argues that
this is the only use of the word “respond” in the Specification; thus, it is a
“valuable guidepost” for understanding how a skilled artisan would have
understood the claim language “configured to respond.” Id. at 11–12.
In the second passage cited by Patent Owner, the Specification
describes a computer program that directs AM/FM tuner 12 (shown in
Figure 1, above, as part of the sound reproduction system) to identify the
strongest radio signals, which the computer program assigns as presets.
Ex. 1001, 9:24–51. Patent Owner argues that this passage describes an
IPR2014-00346
Patent 8,364,295 B2

20

answer or reply from the sound reproduction system to the computer.
PO Resp. 12–13.
Neither of these passages suggests that “respond” should be construed
narrowly. The first passage does not describe the behavior at issue in the
claim, a sound reproduction device responding to a computer. Rather, it
describes a computer responding to a sound reproduction device. To the
extent that it implicitly describes an answer or reply (a matter of debate), it
nevertheless gives no indication that the term “respond” should be limited to
such usage. Rather, it describes an example. As to the second passage, it
does not use the word “respond”; thus, it is of limited value in ascertaining
how the patentee intended the word “respond” to be understood. Moreover,
the second passage, like the first, carries with it no indication that the
example it describes was intended to be limiting. At most, Patent Owner’s
evidence shows that “respond” can be read broadly enough to encompass its
interpretation. Patent Owner has introduced no persuasive evidence,
however, suggesting that “respond” is limited to its interpretation.
Patent Owner also argues that, under the doctrine of claim
differentiation, “respond” should be construed more narrowly to avoid
claims 25 and 51 having the same scope as claims 1 and 27, respectively.
PO Resp. 8–9. Claim 1 recites “one or more speakers located at least
partially within the housing.” Claim 27 recites “an amplifier located within
the housing for powering the one or more speakers.” Patent Owner argues
that this language in claims 1 and 27 already requires a sound reproduction
device configured to take an action (playing audio received from a
computer) as a result of signals received from a computer. Id. at 9.
IPR2014-00346
Patent 8,364,295 B2

21

Petitioner argues that claims 1 and 27 do not require a computer and,
specifically, do not require that the speakers play music from a computer.
Reply 3. Petitioner contends that the audio signal processing circuitry could
be configured to process audio signals from sources other than a computer
and still be consistent with the language of claims 1 and 27. Id. at 4. We
agree with Petitioner. Claims 1 and 27, by their terms, do not require an
amplifier or speakers for playing music from a computer. Patent Owner
concedes that “[t]he computer is not an element of [claim 1].” Tr. 52:19–20.
Thus, even under our preliminary construction, claims 1 and 27 are broader
than claims 25 and 51, respectively. Thus, the doctrine of claim
differentiation does not compel the narrow construction advanced by patent
owner.
Moreover, claim differentiation “is not a rigid rule but rather is one of
several claim construction tools.” ICU Med., Inc. v. Alaris Med. Sys., Inc.,
558 F.3d 1368, 1376 (Fed. Cir. 2009); accord ERBE Elektromedizin GmbH
v. Canady Tech. LLC, 629 F.3d 1278, 1286 (Fed. Cir. 2010) (“Claim
differentiation may be helpful in some cases, but it is just one of many tools
used by courts in the analysis of claim terms.”). As explained above, the
plain meaning of the claims and the Specification, two other tools we must
use, make clear that “respond” is not limited to sending an answer or reply to
the computer. Cf. Autogiro Co. of Am. v. United States, 384 F.2d 391, 404
(Ct. Cl. 1967) (“If a claim will bear only one interpretation, similarity will
have to be tolerated.”).
Patent Owner further argues that other claims use the term “in
response to” when referring to taking an action as a result of signals received
and that, by implication, “respond” must mean something different. PO
IPR2014-00346
Patent 8,364,295 B2

22

Resp. 14–18. For example, according to Patent Owner, “to respond” is an
infinitive verb phrase while “in response to” is a complex prepositional
phrase—two different parts of speech. Id. at 14–15 n.3. We agree with
Petitioner, however, that “respond” and “in response to” are the same term,
expressed as different parts of speech according to how the term fits with the
words around it. Reply 8. Patent Owner admits that “in response to” is used
broadly to include taking an action as a result of signals received from a
computer. PO Resp. 15. The broad use of substantially the same term, “in
response to,” is further evidence that “configured to respond” should be
construed broadly as well. See Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (“[T]he context in which a term is used in the asserted claim
can be highly instructive.”).
In sum, based on our consideration of the full record, we maintain our
construction of “configured to respond to signals received from the
computer,” namely “configured to take an action as a result of signals
received from a computer.”
The parties do not dispute our other preliminary constructions. We
adopt those constructions based on the full record.

D. Obviousness over WinAmp, Irman Web Pages, and Altec Lansing
Manual
Petitioner asserts that claims 25, 26, 51–53, 55–62, 75, and 76 of the
’295 patent would have been obvious over WinAmp, Irman Web Pages, and
Altec Lansing Manual. Pet. 16–33.

IPR2014-00346
Patent 8,364,295 B2

23

1. The Level of Ordinary Skill in the Art
The declarants for Petitioner and Patent Owner essentially agree that a
person of ordinary skill in the art would have had a bachelor’s degree in
electrical engineering and several years (e.g., three years) of experience with
audio systems. Compare Lippman Decl., Ex. 1017 ¶ 19, with Stevenson
Decl., Ex. 2120 ¶ 21.

2. Overview of WinAmp, Irman Web Pages, and Altec Lansing
Manual
WinAmp describes a software package for playing MP3 digital audio
files on a computer. Ex. 1009, 12. According to WinAmp, the WinAmp
software plays MP3 files stored on the computer and also streams music
from the Internet. Id. at 17–19.
Irman Web Pages describes an infrared receiver that connects to a
computer. Ex. 1010, 1. The receiver receives signals from various remote
controls and converts the signals into computer commands for controlling
software executing on the computer. Id. Irman Web Pages lists the
WinAmp software package as an example of software that can be controlled
by a remote control through the receiver. Id.
Altec Lansing Manual describes a powered speaker system, the
ADA310W, that is plugged into an audio card of a personal computer, either
through a universal serial bus (“USB”) cable or through a stereo audio cable
connecting the computer’s analog output to the speaker system’s analog
input. Ex. 1011, 3–5. According to Altec Lansing Manual, the speaker
system accepts digital and analog audio data. Id. at 6. If the computer and
the ADA310W are connected using a USB cable, the computer can control
IPR2014-00346
Patent 8,364,295 B2

24

all of the speaker functions. Id. at 3. The ADA310W includes a subwoofer
and two separate satellite speakers. Id. at 4–5. The computer connects to
the subwoofer, which connects to the satellite speakers. Id. The speaker
system also includes a remote control. Id. at 6. The signal from the remote
control is received at an IR receiver on one of the satellite speakers. Id.
Petitioner generally contends that the Altec Lansing ADA310W
speaker system could have been connected to a computer equipped with
WinAmp software and an Irman receiver and, in this configuration, the
WinAmp software on the computer could have been controlled by a remote
control through the Irman receiver. Pet. 14–15. This would result in a
system with two remote controls: one for the computer, through the Irman
receiver, and one for the ADA310W. Id. Petitioner proposes that, “in order
to, for example, reduce clutter and duplication,” it would have been obvious
for a person of ordinary skill in the art to combine the functions of the two
remote controls into one remote control, which would have interfaced with
the ADA310W. Id.

3. Disposition of Claims 1 and 27 in IPR-465
As explained above, in IPR-465, we held that independent claims 1
and 27 are unpatentable as obvious over WinAmp, Irman Web Pages, and
Altec Lansing Manual. While claims 1 and 27 are not challenged in this
proceeding, each of claims 25, 26, 51, and 52 depends from one of these
independent claims. Several of the arguments for patentability raised by
Patent Owner as to the challenged claims are directed to the alleged failure
of Petitioner to prove the unpatentability of the underlying independent
IPR2014-00346
Patent 8,364,295 B2

25

claims. These arguments are substantially the same as the arguments raised,
and found to be unpersuasive, in IPR-465.
Petitioner advances substantially the same evidence in this proceeding
to show that the underlying limitations of claims 1 and 27 would have been
obvious over WinAmp, Irman Web Pages, and Altec Lansing Manual.
Pet. 14–18, 19–22. Based on that evidence, in the IPR-465 Final Written
Decision, we found that each limitation of claims 1 and 27 is taught in one
or more of WinAmp, Irman Web Pages, and Altec Lansing Manual and
concluded that a skilled artisan would have combined those references to
arrive at claims 1 and 27. IPR-465 FWD 17–19. For the same reasons, we
find, in this proceeding, that each limitation of claims 1 and 27 is taught in
one or more of WinAmp, Irman Web Pages, and Altec Lansing Manual and
conclude that a skilled artisan would have combined them to arrive at claims
1 and 27.
Patent Owner argues that WinAmp, Irman Web Pages, and Altec
Lansing Manual teach away from Petitioner’s proposed combination and
that Dr. Lippman’s testimony to the contrary was driven by admitted
hindsight. PO Resp. 21–32 (citing Exs. 2104, 2120 ¶¶ 45–54). Patent
Owner made these same arguments with respect to claims 1 and 27 in IPR-
465, citing to substantially the same evidence. See IPR-465, Paper 24, 30–
38 (citing to Exs. 2015, 2026 ¶¶ 64–723). We considered these arguments in

3 IPR-465, Exhibit 2015 is the transcript of the deposition of Dr. Lippman in
IPR-465. Exhibit 2104, relied upon by Patent Owner in this proceeding, is
the same deposition transcript. IPR-465, Exhibit 2026 ¶¶ 64–72 is
declaration testimony of Dr. Stevenson that includes testimony substantially
the same as Exhibit 2120 ¶¶ 45–54 in this proceeding.
IPR2014-00346
Patent 8,364,295 B2

26

detail in IPR-465 and concluded that they were unpersuasive. IPR-465
FWD 19–23. We conclude that Patent Owner’s arguments in this
proceeding are unpersuasive for the same reasons given in IPR-465.
Claims 1 and 27 each recite “an amplifier located within the housing”
and “control circuitry located within the housing.” Patent Owner argues that
it would not have been obvious to locate amplifiers and control circuitry
within the same housing in light of Altec Lansing Manual’s teachings.
PO Resp. 35–38. We considered, and rejected, this argument based on
substantially the same evidence in IPR-465. IPR-465 FWD 24–25. We
remain unpersuaded by these arguments for the same reasons.
Patent Owner argues that page seven of Altec Lansing Manual does
not correspond to the same system as the rest of the manual. PO Resp. 37–
38. As explained in Section II.B above, we exclude page seven.
Nevertheless, as explained in the IPR-465 Final Written Decision, at 25
(addressing substantially the same argument), pages 4–6 of Altec Lansing
Manual also show audio processing circuitry and the ability to control the
speaker system with a remote control. Thus, Patent Owner’s argument is not
persuasive.
Regarding “a connector located at least partially within the housing,”
recited in claims 1 and 27, Patent Owner argues that the control circuitry
described in Altec Lansing Manual would have been located in the
subwoofer while the connector identified by Petitioner would have been
located within a satellite speaker, which would be in a different housing.
PO Resp. 38–40. We are not persuaded. As we explained in the IPR-465
Final Written Decision, at 25 (addressing whether the amplifier and the
control circuitry are in the same housing), the control circuitry taught in
IPR2014-00346
Patent 8,364,295 B2

27

Altec Lansing Manual is not limited to the IR receiver positioned on the
satellite speaker, but rather includes circuitry in the subwoofer that receives
commands from the remote control via the IR receiver (e.g., circuitry that
receives a signal from the remote to control the volume of the subwoofer).
Moreover, as we explained in the IPR-465 Final Written Decision, the
location of the particular circuitry would have been a predictable design
choice, with the circuitry performing the same intended function regardless
of whether it is located in the subwoofer or a satellite speaker. Id.
In sum, in IPR-465, we held that claims 1 and 27 would have been
obvious over WinAmp, Irman Web Pages, and Altec Lansing Manual. We
considered substantially the same evidence and arguments in this proceeding
regarding the limitations of claims 1 and 27 in evaluating the patentability of
dependent claims 25, 26, 51, and 52. For the reasons stated in the IPR-465
Final Written Decision, we find that each limitation of claims 1 and 27 is
taught in one or more of WinAmp, Irman Web Pages, and Altec Lansing
Manual, and conclude that a skilled artisan would have combined those
references to arrive at claims 1 and 27.

4. Claims 53 and 59
Independent claim 53 is substantially the same, in most respects, as
claim 1. However, where claim 1 recites a connection that includes signal
paths configured to “(i) receive audio information from the computer
corresponding to the digital music files stored on the computer and audio
information from the network via the computer, and (ii) transmit to the
computer signals for controlling the computer,” claim 53 omits
“corresponding to the digital music files stored on the computer and audio
IPR2014-00346
Patent 8,364,295 B2

28

information from the network via the computer,” and adds “(iii) receive
signals from the computer.” Also, claim 1 recites a separate computer “that
is configured to provide audio information from any one of a plurality of
sources, including digital music files stored on the computer and a network
accessible by the computer,” a recitation that claim 53 omits.
Independent claim 59 is substantially the same, in most respects, as
claim 27. However, where claim 27 recites a connection that includes signal
paths configured to “(i) receive audio information from the computer, and
(ii) transmit to the computer signals for controlling the computer,” claim 59
adds “corresponding to the digital music files stored on the computer and
audio information from the network via the computer,” and “(iii) receive
signals from the computer.” Claim 59 also recites a separate computer “that
is configured to provide audio information from any one of a plurality of
sources, including digital music files stored on the computer and a network
accessible by the computer,” and recites that the connection is configured to
receive audio information from the computer “corresponding to the digital
music files stored on the computer and audio information from the network
via the computer,” a recitation that claim 27 omits.
For the limitations of claims 53 and 59 that overlap with those of
claims 1 and 27, Petitioner cites substantially the same evidence. Pet. 23–
26, 28–31. The PO Response applies the arguments addressed above for
claims 1 and 27 (teaching away, lack of an amplifier “located within the
housing,” applicability of page seven of Altec Lansing Manual, and
“connector located at least partially within the housing”) to the
commensurate language in claims 53 and 59. PO Resp. 19, 22, 35, 38.
IPR2014-00346
Patent 8,364,295 B2

29

Those arguments are unpersuasive when applied to claims 53 and 59 for the
same reasons.
Regarding a connection that includes signal paths configured to
“(iii) receive signals from the computer,” Petitioner introduces evidence that
the speaker described in Altec Lansing Manual is connected to a computer
with a USB cable and that the speaker is controlled by the computer using
signals received from the computer over the USB cable. Pet. 25, 30.
Petitioner’s evidence further shows that the speaker automatically turns on
in response to the receipt of an audio signal from the computer, and, thus,
the connection is configured to receive signals from the computer. Id.
Regarding claim 59’s recitation of a separate computer that “is
configured to provide audio information from any one of a plurality of
sources, including digital music files stored on the computer and a network
accessible by the computer,” and a connection that is configured to receive
audio information from the computer “corresponding to the digital music
files stored on the computer and audio information from the network via the
computer,” we found these two limitations to be disclosed in connection
with claim 1. IPR-465 FWD 17–19.
In view of the foregoing, we find that each limitation of claims 53 and
59 is taught in one or more of WinAmp, Irman Web Pages, and Altec
Lansing Manual. We have considered Petitioner’s evidence of a reason to
combine these references as well as Patent Owner’s responsive evidence.
That evidence is summarized above for claims 1 and 27. Upon
consideration of all of the evidence, we conclude that a skilled artisan would
have combined WinAmp, Irman Web Pages, and Altec Lansing Manual in a
manner that results in claims 53 and 59 for the same reason. Accordingly,
IPR2014-00346
Patent 8,364,295 B2

30

Petitioner has shown, by a preponderance of the evidence, that claims 53 and
59 would have been obvious over WinAmp, Irman Web Pages, and Altec
Lansing Manual.

5. Claims 25, 26, 51, and 52
Claim 25 depends from claim 1. Claim 51 depends from claim 27.
Both claims 25 and 51 recite “wherein the sound reproduction device is
configured to respond to signals received from the computer.”
Petitioner introduces evidence that Altec Lansing Manual describes a
speaker that automatically turns on when it receives a music signal from an
attached computer. Pet. 15, 19, 22. Petitioner also introduces evidence that
the speaker can adjust a function, such as volume, in response to a command
over a USB connection. Id. Petitioner contends that this disclosure teaches
a speaker configured to respond (automatically turn on or adjust a function)
to signals (music signals or USB signals) received from the computer. Id.
Relying on its proposed construction of “configured to respond to
signals received from the computer,” Patent Owner argues that Altec
Lansing Manual does not teach that the speakers reply or answer back to the
computer in response to receiving a control or music signal. PO Resp. 33–
34.
In Section II.C above, we construed “configured to respond to signals
received from the computer” to mean “configured to take an action as a
result of signals received from a computer.” As explained above, the term
does not require that the sound reproduction device be configured to answer
or reply to the computer, or to send a responsive communication back to the
computer.
IPR2014-00346
Patent 8,364,295 B2

31

Based on our claim construction, we find that a sound reproduction
device configured to turn on when it receives an audio signal is a sound
reproduction device configured to take an action as a result of signals
received from a computer. Likewise, a sound reproduction device
configured to adjust a function, such as volume, when it receives a signal
received over a USB connection is a sound reproduction device configured
to take an action as a result of signals received from a computer. In either
case, we find that Altec Lansing Manual teaches a “sound reproduction
device [that] is configured to respond to signals received from the
computer.”
Claims 26 and 52 depend from claims 25 and 51, respectively. We
have considered Petitioner’s evidence and arguments for claims 26 and 52,
see Pet. 19, 23, and find that the additional limitations of these claims are
taught in WinAmp, Irman Web Pages, and Altec Lansing Manual for the
reasons stated in the Petition. Patent Owner does not direct arguments to
claims 26 and 52 specifically.
We conclude that a skilled artisan would have combined WinAmp,
Irman Web Pages, and Altec Lansing Manual for the reasons given for
claims 1 and 27, above.
For the foregoing reasons, after consideration of the full record, we
conclude that Petitioner has shown, by a preponderance of the evidence, that
claims 25, 26, 51, and 52 would have been obvious over WinAmp, Irman
Web Pages, and Altec Lansing Manual.

IPR2014-00346
Patent 8,364,295 B2

32

6. Claims 55–58, 60–62, 75, and 76
Claims 55–58 and 75 depend from claim 53. Claims 60–62 and 76
depend from claim 59. We have considered Petitioner’s evidence and
argument for claims 55–58, 60–62, 75, and 76, see Pet. 49–50, 53–54, and
find that their limitations are taught in one or more of WinAmp, Irman Web
Pages, and Altec Lansing Manual for the reasons stated in the Petition. We
conclude that a skilled artisan would have combined WinAmp, Irman Web
Pages, and Altec Lansing Manual for the reasons given for claims 53 and 59.
Patent Owner does not direct arguments to claims 55–58, 60–62, 75, and 76
specifically. Accordingly, on the full record, Petitioner has shown, by a
preponderance of the evidence, that claims 55–58, 60–62, 75, and 76 would
have been obvious over WinAmp, Irman Web Pages, and Altec Lansing
Manual.
III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 25, 26, 51–53, 55–62, 75, and 76 are unpatentable as obvious over
WinAmp, Irman Web Pages, and Altec Lansing Manual.

IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, claims
25, 26, 51–53, 55–62, 75, and 76 of U.S. Patent No. 8,364,295 B2 are
unpatentable;
IPR2014-00346
Patent 8,364,295 B2

33

FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted-in-part; page seven of Exhibit 1011 is excluded; Patent Owner’s
Motion to Exclude otherwise is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of it must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00346
Patent 8,364,295 B2

34

PETITIONER:
SDI Technologies, Inc.
C/O
Matthew B. Lowrie
Aaron W. Moore
James C. De Vellis
FOLEY & LARDNER LLP
111 Huntington Avenue,
Boston, MA 02199
mlowrie-PTAB@foley.com
amoore-PTAB@foley.com

PATENT OWNER:
Bose Corporation
C/O
Dorothy P. Whelan
W. Karl Renner
Mark J. Hebert
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
whelan@fr.com
axf@fr.com
hebert@fr.com