StratosAudio, Inc.

Patent Trials and Appeals Board

Nov 12, 2021

IPR2021-00717 (P.T.A.B. Nov. 12, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Entered: November 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

STRATOSAUDIO, INC.,
Patent Owner
____________

IPR2021-00717
Patent 8,200,203 B1
____________

Before JUSTIN T. ARBES, HYUN J. JUNG, and
KEVIN C. TROCK, Administrative Patent Judges.

TROCK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

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I. INTRODUCTION
On April 16, 2021, Petitioner Volkswagen Group of America, Inc.
filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 43,
47, 48, 51, 52, 56, and 62 (the “Challenged Claims”) of U.S. Patent No.
8,200,203 B1 (Ex. 1001, “the ’203 Patent”). On June 17, 2021, Petitioner
requested, by email, leave “to file a corrected Petition and Exhibit 1003 (the
Declaration of Dr. Vijay Madisetti) to correct an inadvertently omitted claim
term in connection with Ground 1 (claim element 43[d]).” Ex. 3001. Patent
Owner did not oppose the request. Id. With our approval, Petitioner filed a
Corrected Petition (Paper 6, “C. Pet.”) and a [Corrected] Declaration of Dr.
Vijay Madisetti (Ex. 1003).1 On August 16, 2021, Patent Owner
StratosAudio, Inc. filed a Preliminary Response to the Corrected Petition.
Paper 9 (“Prelim. Resp.”).
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
unless the information presented in the Petition and any response thereto
shows “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” Taking into
account Patent Owner’s Preliminary Response, we conclude that the Petition
does not establish there is a reasonable likelihood Petitioner would prevail in
establishing at least one of Challenged Claims of the ’203 Patent as
unpatentable under certain grounds presented in the Petition, and that the
remaining asserted grounds should be denied pursuant to our delegated
discretion under 35 U.S.C. § 325(d). Accordingly, we do not institute an
inter partes review as to any of the challenged claims of the ’203 Patent.

1 Citations in this Decision are to the Corrected Petition unless noted
otherwise.
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A. Real Party in Interest
The parties identify themselves as real parties in interest. C. Pet. 1;
Paper 4, 1.
B. Related Matters
The parties identify the following as related matters:
• StratosAudio, Inc. v. Hyundai Motor America, No. 20-cv-
01125-ADA (W.D. Tex.);
• StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 20-cv-
01126-ADA (W.D. Tex.);
• StratosAudio, Inc. v. Subaru of America, Inc., No. 20-cv-01128-
ADA (W.D. Tex.);
• StratosAudio, Inc. v. Volvo Cars USA, LLC, No. 20-cv-01129-
ADA (W.D. Tex.); and
• StratosAudio, Inc. v. Volkswagen Group of America, Inc., No.
6:20-cv-1131 (W.D. Tex.).2
C. Pet. 1; Paper 4, 1.
C. The ’203 Patent
The ’203 Patent relates to a system for broadcast response. Ex. 1001,
1:16–17. The ’203 Patent explains that Radio Data System (“RDS”)
encoders generate a subcarrier that is transmitted along with an FM station
broadcast signal. Id. at 1:36–38. The RDS data signal includes data groups
that have information, such as a country symbol, regional code,
identification information for the transmitting station, and the current

2 Patent Owner identifies this proceeding as StratosAudio, Inc. v.
Volkswagen Group of America, Inc., No. 20-cv-01127-ADA (W.D. Tex.).
Paper 4, 1. The correct case number appears to be 6:20-cv-1131-ADA. C.
Pet. 1.
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program or format being broadcast. Id. at 1:43–44, 1:50–61. Other
information can identify a song or program, identify alternative frequencies
where the same programming can be available, provide in-house station text
messages, or Emergency Alert System messages. Id. at 1:62–2:5. The
’203 Patent explains that users listening to radio or television may desire to
respond to programming or store information about the broadcast, but a
user’s options for data storage and responses are limited. Id. at 2:16–22.
The ’203 Patent states that increased data capture and storage at the user’s
end, in combination with an improved system for transmitting data from the
user, can lead to improved responses to polls, surveys, etc. Id. at 2:22–25.
Figure 1 of the ’203 Patent is reproduced below.

Figure 1, shown above, depicts a high-level overview of a broadcast
response system. Id. at 3:50–51. As shown in Figure 1, broadcast data
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preparation module 102 communicates with broadcast system 104. Id. at
4:32–34. Data preparation module 102 prepares data for broadcast
transmission. Id. at 4:34–35. The data may contain information pertaining
to the main broadcast signal, such as the title of a song, name of an artist, ad
identification, purchase price, purchase location, or a unique identifier. Id.
at 4:35–42. Broadcast system 104 in turn transmits the data using a
subcarrier signal, such as in conformance with a standard. Id. at 4:47–51.
Broadcast reception module 106 receives the transmission from
broadcast system 104 and extracts the transmitted data. Id. at 4:60–62. The
extracted data may be used to display information to a user, such as a song’s
title or artist’s name. Id. at 4:62–64. User response module 108 detects a
response by the user, such as the user pressing a button in response to the
data transmitted by broadcast system 104. Id. at 4:65–5:1. As depicted in
Figure 1, user response module 108 is in communication with data
management module 110, such as via network 112 (e.g., a wide-area
network (WAN)). Id. at 5:9–12. Data management module 110 is also in
communication with broadcast preparation module 102, which allows
synchronization of the user’s responses from user response module 108 with
the data generated from broadcast data preparation module 102. Id. at 5:12–
18.
According to an exemplary embodiment of the ’203 Patent, a radio
station using broadcast system 104 generates programming data in
conjunction with a broadcast signal and communicates the programming
data to broadcast data preparation module 102. Id. at 5:33–38. Broadcast
data preparation module 102 can include a database that contains entries
corresponding to the programming data. Id. at 5:38–40. Broadcast data
preparation module 102 also functions to provide a unique identifier for the
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programming data to the radio station and may also provide additional
information about the program to the radio station, which broadcasts the
unique identifier and any other desired information via a RDS subcarrier.
Id. at 5:43–48.
The ’203 Patent explains that a radio using broadcast data reception
module 106 extracts the unique identifier from the RDS subcarrier. Id. at
5:48–50. When a user presses a button that indicates a desire to obtain
additional information about content corresponding to the broadcast, user
response module 108 communicates the unique identifier and a user
identifier to data management module 110. Id. at 5:50–55. The ’203 Patent
explains that data management module 110 looks up the unique identifier
and user identifier in a database and uses this information to fulfill the order.
Id. at 5:55–57.
D. Challenged Claims
Petitioner challenges claims 43, 47, 48, 51, 52, 56, and 62. Claim 43
is the only independent claim challenged. Claim 43 is reproduced below:
43[pre] A device that enables a response to a data packet
sent in combination with a unique broadcast event, the device
comprising:
43[a] a receiver module that detects a unique broadcast
event and extracts from at least a portion of the data packet
content information corollary to the unique broadcast event,
43[b] wherein the content information is sourced from a
database system that has at a minimum two entries wherein at
least one element of a first entry matches at least one element of
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a second entry, and at least one element of the content
information matches at least one element of the first entry;
43[c] memory for storing at least part of the content
information;
43[d] a communication module for communicating the at
least part of the content information to a user;
43[e] an input control that enables the selection of the at
least part of the content information and enables the generation
of a response; and
43[f] a transmitter that transmits a response packet
corresponding to the response generated using the input control,
the response packet including at a minimum the at least part of
the content information, to a response authentication system.
Ex. 1001, 25:10–33 (bracketed labelling designated by Petitioner; see
C. Pet. 10–18).
E. Evidence
Petitioner relies upon the following evidence:
(1) U.S. Patent No. US 10,062,095 B2, issued August 28, 2018
(“Poltorak”) (Ex. 1004);
(2) International Publication No. WO 02/23773 A2, published March
21, 2002 (“Christensen”) (Ex. 1005);
(3) U.S. Patent No. US 10,819,298 B2, issued October 27, 2020
(“Corts”) (Ex. 1006); and
(4) [Corrected] Declaration of Vijay Madisetti, Ph.D. (Ex. 1003).
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F. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Ground Reference(s) 35 U.S.C. Claims Challenged
1 Poltorak § 102 43, 47, 48, 51, 62
2 Poltorak/Christensen § 103 52
3 Poltorak/Corts § 103 52
4 Christensen § 102 43, 47, 48, 51, 52, 56, 62
5 Christensen § 103 43, 47, 48, 51, 52, 56, 62
6 Corts § 102 43, 47, 48, 51, 52, 56, 62
7 Corts § 103 43, 47, 48, 51, 52, 56, 62

II. ANALYSIS
A. Discretionary Denial under 35 U.S.C. § 325(d)3
Patent Owner requests that we exercise our discretion under 35 U.S.C.
§ 325(d) to deny the Petition because Christensen and U.S. counterparts to
Christensen were previously presented during prosecution of the ’203
Patent. Prelim. Resp. 28–35. Patent Owner further contends there is overlap
between Petitioner’s arguments and arguments made during prosecution,
Petitioner has not pointed out how the Examiner erred in the evaluation of
Christensen, and Petitioner does not present additional evidence or facts that
warrant reconsideration. Id. at 32–35.

3 Patent Owner argues 35 U.S.C. § 325(d) discretionary denial with respect
to Grounds 4 and 5 only. See Prelim. Resp. 28–35.
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Petitioner acknowledges that “Christensen was listed in a 112-
reference-long [Information Disclosure Statement (IDS)] during
prosecution,” but argues that “Christensen was never cited by the
Examiner.” C. Pet. 9 (citing Ex. 1002, 165–169). Petitioner also argues that
the Board should not exercise its discretion to deny under § 325(d) “because
none of [Poltorak, Christensen, or Corts] was substantively applied in a
rejection against the pending claims.” Id. at 10.
1. Legal Principles
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office]
is permitted, but never compelled, to institute an [inter partes review]
proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to
institute an inter partes review, “the Director may take into account whether,
and reject the petition or request because, the same or substantially the same
prior art or arguments previously were presented to the Office.”
In evaluating the exercise of discretion under § 325(d), the Board uses
the following two-part framework: (1) determining whether the same or
substantially the same art previously was presented to the Office or whether
the same or substantially the same arguments previously were presented to
the Office; and (2) if either condition of the first part of the framework is
satisfied, determining whether the petitioner has demonstrated that the
Office erred in a manner material to the patentability of challenged claims.
Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH,
IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).
In applying the two-part framework, we consider several non-
exclusive factors, including:
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(a) the similarities and material differences between the asserted
art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art
evaluated during examination;
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(d) the extent of the overlap between the arguments made
during examination and the manner in which Petitioner relies
on the prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the
Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented
in the Petition warrant reconsideration of prior art or arguments.
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
first paragraph) (“Becton, Dickinson”); see also Patent Trial and Appeal
Board Consolidated Trial Practice Guide (Nov. 2019) 62–63, available at
https://www.uspto.gov/TrialPracticeGuideConsolidated.
Only if the same or substantially the same art or arguments were
previously presented to the Office do we then consider whether petitioner
has demonstrated a material error by the Office. Advanced Bionics, Paper 6
at 10. “If the petitioner fails to show that the Office erred, the Director may
exercise his discretion not to institute inter partes review.” Id. at 8–9 (“If a
condition in the first part of the framework [i.e., substantially same art or
arguments] is satisfied and the petitioner fails to make a showing of material
error, the Director generally will exercise discretion not to institute inter
partes review.”). “At bottom, this [§ 325(d)] framework reflects a
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commitment to defer to previous Office evaluations of the evidence of
record unless material error is shown.” Id. at 9.
2. Analysis
a) Same or Substantially the Same Art or Arguments
Previously Presented to the Office
As to Becton, Dickinson factor (a), Petitioner acknowledges that
“Christensen was listed in a 112-reference-long IDS during prosecution,”
but argues that “Christensen was never cited by the Examiner.” C. Pet. 9
(citing Ex. 1002, 165–169). Patent Owner argues that Christensen “was
expressly considered on the record by the examiner of the ’203 patent.”
Prelim. Resp. 30 (citing Ex. 1002, 430). Patent Owner also argues that “the
same Christensen reference is the PCT counterpart to four separate U.S.
patents, which were expressly discussed on the record by [the examiner].”
Id. (citing Ex. 1002, 126–128). Patent Owner argues, “[t]he specification of
each of these patents is nearly identical to the disclosure in the Christensen
reference, and all five publications claim the benefit of the same provisional
application.” Id.
Christensen was cited in an IDS during prosecution and appears on
the list of cited references of the ’203 Patent. Ex. 1001, 2; Ex. 1002, 430.
Because the same reference was cited during prosecution, there is no
material difference between Christensen and the prior art involved during
examination. Given these facts, we need not further evaluate factor (b),
whether Christensen is cumulative, nor factor (d), the extent of overlap in
arguments regarding Christensen. Thus, we find that the same reference was
previously presented to the Office, and we move on to the second part of the
Advanced Bionics framework.
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b) Whether the Office Erred in a Manner Material to
Patentability
As to Becton, Dickinson factor (c), the extent to which Christensen
was evaluated during prosecution of the ’203 Patent, Patent Owner argues
“[t]he examiner evaluated the contents in Christensen extensively, and four
separate U.S. counterparts to Christensen were the basis of a rejection during
prosecution of the ’203 patent.” Prelim. Resp. 31. Patent Owner argues,
“the Christensen reference shares a nearly identical specification as the four
U.S. counterparts that were relied upon by [the examiner] to reject the
pending claims of the ’203 patent.” Id.
Patent Owner further argues that in the same office action, the
examiner “specifically indicated that pending claims 2, 14–20, 25–27, and
35–62 would be allowable, despite rejecting other pending claims in view of
Christensen’s U.S. counterparts. . . . Those pending claims that were deemed
allowable issued as claims 1, 13–19, 21–23, and 27–54 of the ’203 patent.”
Id. (citing Ex. 1002, 131).
Although Petitioner notes that Christensen was cited in an IDS,
Petitioner does not address expressly the extent to which Christensen was
evaluated during prosecution of the ’203 Patent. See generally C. Pet. By
specifying the length of the IDS that listed Christensen, Petitioner appears to
imply that Christensen was not considered substantively by the Examiner.
Id. at 9.
As argued by Patent Owner, however, Christensen’s U.S. counterparts
were distinguished during prosecution over allowed claims of the ’203
Patent. See Ex. 1002, 126–131. Based on Patent Owner’s arguments and
the prosecution history, it is reasonable to conclude that the Examiner was
familiar with the essential substance of Christensen because the Examiner
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considered Christensen’s U.S. counterparts and used those references to
reject certain claims and allow others during prosecution of the ’203 Patent.
Id.
Because Patent Owner listed Christensen in an IDS, and Christensen’s
U.S. counterparts were cited in an office action rejecting certain claims and
allowing others during prosecution of the ’203 Patent, the record
demonstrates sufficiently that the Examiner considered the essential
substance of Christensen when examining the ’203 Patent. Factor (c)
therefore weighs in favor of exercise of our discretion to deny institution.
Factor (e) asks whether Petitioner points to error in the Examiner’s
evaluation of Christensen. We agree with Patent Owner that Petitioner does
not point out any error in the Examiner’s evaluation of Christensen. Prelim.
Resp. 34 (citing Pet. 9; Ex. 1002, 131). Thus, factor (e) weighs in favor of
exercise of our discretion to deny institution.
With respect to factor (f), Patent Owner argues that
Petitioner presents no additional evidence or facts that would
warrant reconsideration of Examiner Desir’s conclusion that
none of the issued claims are taught in Christensen. Petitioner
does not even acknowledge that Christensen’s U.S. counterparts
were discussed during prosecution of the ’203 patent, let alone
provide evidence or facts to rebut the examiner’s conclusion.
Prelim. Resp. 34–35.
Relevant to factor (f), however, Petitioner offers the testimony of Dr.
Madisetti (Ex. 1003), which was not available to the Examiner, but is
consistent with the arguments made in the Petition. Patent Owner argues
that Dr. Madisetti’s testimony “is a verbatim copy of the attorney argument
in the Petition and should be accorded no weight.” Prelim. Resp. 35. At this
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stage, however, we cannot say that the testimony should be given no weight,
as argued by Patent Owner. Thus, this factor is, at most, neutral.
c) Conclusion
For the reasons set forth above, we determine that the circumstances
of this case, on the record presented, warrant exercise of our discretion under
§ 325(d) to deny institution of grounds 4 and 5 based on Christensen.
Christensen was cited during prosecution and Petitioner has not shown that
the Examiner materially erred in allowing the claims of the ’203 Patent.
B. Level of Ordinary Skill in the Art
In determining the level of skill in the art, we consider the type of
problems encountered in the art, the prior art solutions to those problems, the
rapidity with which innovations are made, the sophistication of the
technology, and the educational level of active workers in the field. Custom
Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
Petitioner contends that “[a] person of ordinary skill in the art
(‘POSITA’) would have had at least a B.S. in computer science, electrical
engineering, or a related field, and three years of experience working in the
communications- or Internet-related industries” and that “[m]ore education
or skill might make up for less experience, and vice-versa.” C. Pet. 5 (citing
Ex. 1003 ¶ 43). Patent Owner does not dispute this level of skill. See
generally Prelim. Resp.
Petitioner’s description of the level of ordinary skill appears to be
generally consistent with the subject matter of the ’203 Patent. For purposes
of this Decision, we adopt Petitioner’s assessment of the level of ordinary
skill.
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C. Claim Construction
For petitions filed on or after November 13, 2018, a claim shall be
construed using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent. 37 C.F.R. § 42.100 (2020).
Accordingly, we apply the claim construction standard as set forth in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
Under Phillips, claim terms are generally given their ordinary and
customary meaning as would be understood by one with ordinary skill in the
art in the context of the specification, the prosecution history, other claims,
and even extrinsic evidence including expert and inventor testimony,
dictionaries, and learned treatises, although extrinsic evidence is less
significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
the specification is dispositive, as it is the single best guide to the meaning of
a disputed term. Id. at 1315.
Only terms that are in controversy need to be construed, and then only
to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
Petitioner argues that “[t]he terms of the Challenged Claims should be
given their plain and ordinary meaning, except for product-by-process claim
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limitations.” C. Pet. 5. Patent Owner argues that “[t]o the extent the Board
construes these terms, Patent Owner respectfully submits that plain and
ordinary meaning applies.” Prelim. Resp. 38.
1. Asserted Product-by-Process Limitations
As noted above, Petitioner challenges claims 43, 47, 48, 51, 52, 56,
and 62 of the ’203 Patent. Claim 43 is the only independent claim
challenged. All other challenged claims depend from claim 43, except for
claim 56, which depends from unchallenged independent claim 27.4
Petitioner asserts that limitation 43[b] is a “product-by process claim
limitation [that] has no patentable weight.” C. Pet. 5–8, 15. Patent Owner
disagrees. Prelim. Resp. 5–8.
Claim 43 recites in pertinent part:
A device . . . comprising: a receiver module that . . . extracts from
at least a portion of the data packet content information corollary
to the unique broadcast event, wherein the content information
is sourced from a database system that has at a minimum two
entries wherein at least one element of a first entry matches at
least one element of a second entry, and at least one element of
the content information matches at least one element of the first
entry.
Ex. 1001, 25:10–22 (emphasis added).
Petitioner argues that “[t]he ‘wherein’ clauses [of claims 43 and 27]
describe data stored in an unclaimed database, which have no effect on the
structure of the claimed ‘receiver module’ or ‘communication module’
(because, e.g., there is no claim limitation indicating that the ‘module’ must
interact in any particular way with the remote ‘database’).” C. Pet. 6 (citing

4 Claim 27 is similar to claim 43, but is drafted as a system claim. Claim 27
recites a database system limitation substantially similar to that of limitation
43[b]. See Ex. 1001, 23:53–59.
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Ex. 1003 ¶ 51). Petitioner argues that the claimed modules “do not require a
particular structure for receiving data from a database, let alone a database
having a particular number of elements or entries.” Id. Petitioner also
argues that “the only recited data received by the receiver module is ‘one
element of the content information.’” Id. “The remaining ‘elements’ of the
two database entries,” Petitioner argues, “are not required by the claim to be
received; and one element of the first entry matching one element of the
second entry in the database has nothing to do with any data at the receiver
module.” Id. at 6–7 (citing Ex. 1003 ¶ 51). “Therefore,” Petitioner argues,
“these clauses are product-by-process claim limitations having no patentable
weight.” C. Pet. 7 (citing Purdue Pharma v. Epic Pharma, 811 F.3d 1345,
1354 (Fed. Cir. 2016); L&P Prop. Mgmt. v. Nat’l Prods., IPR2016-00475,
Paper 27 at 30–31 (PTAB July 19, 2017); Hamamatsu Corp. v. SiOnyx,
LLC, IPR2016-01910, Paper 22 at 11–12 (PTAB Mar. 30, 2017).
Patent Owner disagrees, and argues that the recited database system is
not a product-by-process limitation and should be given patentable weight.
Prelim. Resp. 5–8. Patent Owner argues that “[t]he claimed database system
cannot be a product-by-process limitation because there is no claimed
process by which the database system is made.” Id. at 5. Patent Owner
argues that the cases cited by Petitioner do not support Petitioner’s argument
“because each case involves a product claim that recites the steps to make
that product.” Id. at 5–6. “In contrast,” Patent Owner argues, “the
challenged claims at issue do not recite how the database system is made.
Instead, the claims recite how the database is structured and what it
contains.” Id. at 6. Patent Owner concludes that because none of the claim
elements “recite any process, method, or step to make a database system,
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none of the claim elements should be interpreted as a product-by-process
limitation.” Id. at 7.
We are not persuaded by Petitioner that the recited database system
should be given no patentable weight.
The Federal Circuit explains that
[p]roduct-by-process claims are not specifically discussed in the
patent statute. The practice and governing law have developed
in response to the need to enable an applicant to claim an
otherwise patentable product that resists definition by other than
the process by which it is made. For this reason, even though
product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product
itself.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). With respect to
patentability, “[i]f the product in a product-by-process claim is the same as
or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” Id.
The Federal Circuit has clearly stated that “[i]n determining validity
of a product-by-process claim, the focus is on the product and not the
process of making it.” Purdue Pharma, 811 F.3d at 1354 (quoting
Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012)).
“That is because of the . . . longstanding rule that an old product is not
patentable even if it is made by a new process.” Id. Generally, therefore,
the recited process steps in a product-by-process claim are not accorded
patentable weight. See In re Nordt Development Co., LLC, 881 F.3d 1371,
1375 (Fed. Cir. 2018) (“[T]he Board typically will not accord patentable
weight to a process limitation in a product-by-process claim.”) (citing
Thorpe, 777 F.2d at 697).
The Federal Circuit, however, has also pointed out that
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there is an exception to this general rule that the process by which
the product is made is irrelevant. As we recognized in Amgen, if
the process by which a product is made imparts “structural and
functional differences” distinguishing the claimed product from
the prior art, then those differences “are relevant as evidence of
no anticipation” although they “are not explicitly part of the
claim.” Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340,
1370 (Fed. Cir. 2009); see also SmithKline Beecham Corp. v.
Apotex Corp, 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“If those
product-by-process claims produced a different product than that
disclosed by the [prior art], there would be an argument that the
[prior art] did not anticipate.”); In re Garnero, 412 F.2d 276, 279
(CCPA 1969) (finding that certain process limits are “capable of
construction as structural . . . limitations”).
Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir.
2012).
Moreover, Petitioner’s analysis fails to take into consideration the
Federal Circuit’s admonition that “words of limitation that can connote with
equal force a structural characteristic of the product or a process of
manufacture are commonly and by default interpreted in their structural
sense, unless the patentee has demonstrated otherwise.” Nordt
Development, 881 F.3d at 1375–1376 (quoting 3M Innovative Props. Co. v.
Avery Dennison Corp., 350 F.3d 1365, 1371–1372 (Fed. Cir. 2003)). Such
limitations can convey structure even when they also describe a process of
manufacture. See, e.g., Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473,
1479 (Fed. Cir. 1997) (concluding that “chemically engraved” was not a
process term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d
1370, 1372 (Fed. Cir. 2000) (holding that the claim term “integral” describes
a structural requirement, not the particular manufacturing process discussed
in the specification); 3M Innovative Props. Co., 350 F.3d at 1371 (finding
“superimposed” to describe a structural relationship and not a process);
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SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir.
2006) (Newman, J., dissenting) (listing “a molded plastic” as an example of
a process limitation that connotes structure).
Here, the claim language at issue recites “the content information is
sourced from a database system that has at a minimum two entries wherein
at least one element of a first entry matches at least one element of a second
entry, and at least one element of the content information matches at least
one element of the first entry.” Ex. 1001, 25:16–22. Petitioner does not
provide sufficient analysis as to whether this claim language connotes “a
structural characteristic of the product” and whether such language should
be “interpreted [in its] structural sense.” See Nordt Development, 881 F.3d
at 1374–1375 (“If the process limitation connotes specific structure and may
be considered a structural limitation, however, that structure should be
considered.”). The claim language itself describes a structure of the
database system “that has at a minimum two entries wherein at least one
element of a first entry matches at least one element of a second entry, and at
least one element of the content information matches at least one element of
the first entry.” Ex. 1001, 25:17–22.
The ’203 Patent specification also describes the database system in a
structural manner consistent with the claim language. For example, the
’203 Patent specification describes embodiments where “the content
information has a first set of field types, the database has a second set of
field types, and the first set of field types and second set of field types have
at least a first field type in common” (Ex. 1001, 2:53–56), “the broadcast
data packet corresponds to a second entry in the database, wherein none of
the elements of the second entry match any of the elements of the content
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information, but at least one element of the second entry matches at least one
element of the first entry” (id. at 2:63–67), and “a plurality of entries in the
database match with the content information, and the broadcast data packet
is selected randomly from the plurality of matches” (id. at 3:3–5).
The organizational structure and operation of a content database is
also described by the ’203 Patent specification where it indicates that
the broadcast data management module 122 uses a content
database 134 to store information about known content. The
content database may include information such as artist, album,
label, year, track titles, composer, availability, popularity,
amount of air time, or digital storage locations. A new entry may
be created in real time for items not listed in the database.
Id. at 7:36–42. The ’203 Patent specification also describes how broadcast
data management module 122 “control[s] the flow of data to the database.”
Id. at 7:43–45.
These descriptions of the database system in the ’203 Patent
specification, its content, and its operational integration, suggest at a
minimum, that the recited database system is integral to the claimed
invention and connote structural characteristics of the claimed product that
should be afforded some patentable weight, contrary to Petitioner’s
arguments. Based on the record before us, we determine that Petitioner has
not provided sufficient evidence or analysis to demonstrate that the recited
database system should be given no patentable weight.
D. Patentability Challenges
As indicated above, Petitioner presents seven grounds challenging the
patentability of claims 43, 47, 48, 51, 52, 56, and 62 of the ’203 Patent under
35 U.S.C. §§ 102, 103. Petitioner challenges claims 43, 47, 48, 51, and 62
as anticipated by Poltorak (Ground 1); claim 52 as obvious over Poltorak
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and Christensen (Ground 2); claim 52 as obvious over Poltorak and Corts
(Ground 3); claims 43, 47, 48, 51, 52, 56, and 62 as anticipated by
Christensen (Ground 4); claims 43, 47, 48, 51, 52, 56, and 62 as obvious
over Christensen (Ground 5); claims 43, 47, 48, 51, 52, 56, and 62 as
anticipated by Corts (Ground 6); and claims 43, 47, 48, 51, 52, 56, and 62 as
obvious over Corts (Ground 7). C. Pet. 3.
1. Principles of Law on Anticipation
To anticipate a claim under 35 U.S.C. § 102, “a single prior art
reference must expressly or inherently disclose each claim limitation.”
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir.
2008). Accordingly, “the dispositive question regarding anticipation [i]s
whether one skilled in the art would reasonably understand or infer from
the [prior art reference’s] teaching” that every claim element was
disclosed in that single reference. Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).
2. Principles of Law on Obviousness
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966).
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
Whether a patent claiming the combination of prior art elements would have
been obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. Reaching this conclusion, however, requires more than a mere
showing that the prior art includes separate references covering each
separate limitation in a claim under examination. Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
requires the additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed
invention. Id.
3. Relevant Prior Art
a. Poltorak (Ex. 1004)
Poltorak is a U.S. Patent that issued on August 28, 2018 and claims
priority to an earlier U.S. patent application having a filing date that is
earlier than the earliest priority date of the ’203 Patent. Ex. 1001, code (60),
(63); Ex. 1004, code (45), (65). Petitioner asserts that Poltorak is prior art
under pre-AIA 35 U.S.C. § 102(e). C. Pet. 8.
Poltorak “pertains to an apparatus and method for facilitating a
purchase using information provided on a media playing device” and “to an
apparatus and method for facilitating a purchase by utilizing information
provided concerning media content which is broadcast to a media playing
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device and/or by utilizing information concerning media content which is
being played on a media playing device.” Ex. 1004, 1:63–2:3. Poltorak
discloses that a listener may desire to purchase a song that is playing on a
radio or television station but normally the listener would have to obtain
information about the song, the performer, or other information regarding
the song and only then be able to purchase a copy. Id. at 2:7–8, 2:14–27.
According to Poltorak, an individual’s desire to purchase a copy is stronger
at the time the individual is listening to a song or album, but the individual
may not be able to act on their impulse at that time and producers or
distributors may be deprived of sales that could have been made. Id. at
2:28–35. Poltorak describes similar situations for when an individual is
watching a television show, program, or movie and wishes to purchase it and
when an individual is listening to or watching a radio or television
advertisement and wishes to purchase the object of the advertisement. Id. at
2:36–55.
Figure 1 of Poltorak is reproduced below.

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Figure 1, shown above, depicts a block diagram of Poltorak’s
apparatus 100. Id. at 9:37–38, 12:26–27. Apparatus 100 includes
broadcasting system 10 that can be associated with one or more of a radio
broadcaster, a television broadcaster, a radio station, a television station, or
other media provider. Id. at 12:28–36. Apparatus 100 further includes
media playing device 20, which can receive a broadcast from broadcasting
system 10 and be associated with one or more users of apparatus 100. Id. at
12:37–42. Poltorak discloses that apparatus 100 also includes central
processing facility computer 30 that can process purchase orders or purchase
requests received from users of media playing device 20. Id. at 12:56–60.
Figure 3 of Poltorak is reproduced below.

Figure 3, shown above, depicts media playing device 20 that includes
media device playing equipment 20A, central processing computer 20B,
input device 20C for inputting information and/or commands into media
playing device 20, display device 20D for displaying information provided
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by apparatus 100, receiver 20E for receiving data and/or information
transmitted to media playing device 20 from broadcasting system 10 and/or
central processing facility computer 30, and transmitter 20F for transmitting
data and/or information to broadcasting system 10 and/or central processing
facility computer 30. Id. at 9:41–42, 14:27–28, 14:38–40, 14:50–53, 14:57–
59, 15:8–18.
Poltorak describes using apparatus 100 to provide broadcasts of audio
information, such as a radio broadcast, along with information. Id. at 16:16–
21. For instance, Poltorak describes apparatus 100 providing information
about the name of a song, performer of a song, composer of a song, producer
of a song, the song’s album, the song’s price, the album’s price, an
identification number for the song, order information for the song, and/or
other pertinent information for the song. Id. at 16:23–33. Poltorak states
that the information provided with the song can be used to allow an
individual to place a purchase order and/or to place a purchase order for any
good or service via media playing device 20. Id. at 16:35–39.
b) Christensen (Ex. 1005)
Christensen is an International Application that published on March
21, 2002, which is less than one year before the earliest priority date of the
’203 Patent. Ex. 1001, code (60), (63); Ex. 1005, code (43). Petitioner
asserts that Christensen is prior art under pre-AIA 35 U.S.C. § 102(a).
C. Pet. 9.
Christensen “relates to electronic purchasing systems, and more
particularly to providing electronic purchasing in response to AM/FM radio
broadcast.” Ex. 1005, 1:4–5. Christensen explains that stations have
included ancillary signals, such as background music or reading services for
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the blind, along with a main carrier signal, with the most current and widely
used data transmission standard being the United States Radio Broadcast
Data Systems (RBDS) standard. Id. at 1:7–11. The RBDS standard
includes a system for transmitting station identification, location
information, time, traffic, and other information. Id. at 1:15–16.
Christensen states that current users listening to radio or watching television
may like a song or program they would like to purchase but the RBDS
standard does not allow users to respond to broadcast information. Id. at
2:11–13.
Figure 2 of Christensen is reproduced below.

Figure 2, above, shows technology enabled radio 200 that includes
automatic purchase system module 202. Id. at 7:1–2, 7:7. Christensen
describes automatic purchase system module 202 as being configured to
store identifier data 204, to provide security functions, and to assist in
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routing a user’s selection (e.g., those made via a voice command to voice
recognition technology 214 or via button 212). Id. at 7:7–10.
Christensen discloses that audio content can be tagged for purchase at
a later time by scrolling through playlist 208 stored in module 202 and
presented on external display 210. Id. at 7:13–15. A user can then select
one or more items presented on display 210 for purchase and the selected
items are transmitted via wireless transmitter 218. Id. at 7:15–17. In
another embodiment, playlist 208 is stored on removable memory 220 that is
readable by personal computer 240, which can be used to access a private
web account for downloading content to personal computer 240. Id. at
7:17–19.
Christensen describes using this system to respond to a live broadcast
for coupons, premiums, or rewards, to support pledge drives for public radio
stations, and for listener polls. Id. at 8:18–22. Christensen further discloses
that a user can receive offers or hyperlinks posted on a website that presents
premiums, suggestions for purchasing related artists, music genres, record
company club offerings, or other premiums. Id. at 8:25–27.
c. Corts (Ex. 1006)
Corts is a U.S. Patent that issued on October 27, 2020 and claims
priority to an earlier U.S. patent application having a filing date that is
earlier than the earliest priority date of the ’203 Patent. Ex. 1001, code (60),
(63); Ex. 1006, code (45), (60). Petitioner asserts that Corts is prior art
under pre-AIA 35 U.S.C. § 102(e). C. Pet. 9.
Corts “is directed generally to multiplex communications, and more
particularly to communicating messages over free space (i.e. a radio
frequency sideband or frequency mask) for reception at multiple
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destinations.” Ex. 1006, 1:32–35. Corts explains that In-Band On Channel
(IBOC) is a Digital Audio Broadcasting (DAB) technology that enables
radio broadcasters to transmit digital data over their analog transmission
frequencies. Id. at 1:39–43. According to Corts, IBOC technology can
create a hybrid signal that can simultaneously send analog and digital data,
which can be digitally compressed analog data, instructions for rendering
visual components on an IBOC DAB receiver, or information for other data-
specific services. Id. at 1:44–50. For example, the digital data could render
text and images describing artist/song title information, news headlines,
digital audio traffic reports, or other information. Id. at 1:50–54. Corts
states that its invention relates to creating advertisements for a specific
medium and the development of intelligent tools to efficiently and
strategically place advertisements. Id. at 1:56–60.
Corts describes a method for entering into a commercial transaction
that uses a digital data receiver that presents supplemental data. Id. at 3:48–
50. The method includes receiving broadcast data over a radio frequency via
a digital receiver, receiving supplemental digital data with the broadcast data
that includes advertising data, and transmitting via the digital data receiver
an indication to purchase an item that corresponds to the advertising data.
Id. at 3:50–55.
E. Anticipation by Poltorak (Ground 1)
1. Independent Claim 43
As noted above, claim 43 is the only independent claim among the
Challenged Claims. Petitioner asserts that independent claim 43 is
anticipated by Poltorak. C. Pet. 10–21.
Claim 43 recites in pertinent part:
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A device . . . comprising[] a receiver module that . . . extracts
from at least a portion of the data packet content information
corollary to the unique broadcast event, [43b] wherein the
content information is sourced from a database system that has
at a minimum two entries wherein at least one element of a first
entry matches at least one element of a second entry, and at least
one element of the content information matches at least one
element of the first entry.
Ex. 1001, 25:10–22 (bracketed labelling designated by Petitioner).
As we determine in our discussion of claim construction in Section
II.C.1 above, Petitioner does not provide sufficient evidence or analysis to
demonstrate that the database system recited in limitation 43[b] should be
given no patentable weight. The Petition does not map limitation 43[b] to
Poltorak. C. Pet. 15.
Because the Petition does not map limitation 43[b] to the asserted
prior art, Petitioner has not shown sufficiently for purposes of institution that
Poltorak discloses all the limitations of independent claim 43. We are,
therefore, not persuaded that Petitioner has demonstrated a reasonable
likelihood that it would prevail in showing that independent claim 43 is
anticipated by Poltorak.
2. Dependent Claims 47, 48, 51, and 62
Petitioner asserts that Poltorak discloses the limitations of dependent
claims 47, 48, 51, and 62. See C. Pet. 21–22 (claim 47), 22 (claim 48), and
23 (claims 51 and 62).
Because these dependent claims incorporate all the limitations of
independent claim 43, Petitioner’s arguments and evidence presented with
respect to these dependent claims do not remedy the deficiencies with
respect to independent claim 43 discussed above.
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We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that dependent claims
47, 48, 51, and 62 are anticipated by Poltorak.
F. Obviousness Based on Poltorak and Christensen (Ground 2)
Petitioner asserts claim 52 is unpatentable as obvious under 35 U.S.C.
§ 103 over Poltorak and Christensen. C. Pet. 24–25. Claim 52 depends
from independent claim 43. Petitioner’s obviousness analysis does not
address the deficiencies of independent claim 43, discussed above in Section
II.C.1 with respect to limitation 43[b]. Because dependent claim 52
incorporates all the limitations of independent claim 43, Petitioner’s
arguments and evidence presented with respect to claim 52 do not remedy
the deficiencies with respect to independent claim 43 discussed above.
We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that dependent claim
52 is obvious over Poltorak and Christensen.
G. Obviousness Based on Poltorak and Cort (Ground 3)
Petitioner asserts claim 52 is unpatentable as obvious under 35 U.S.C.
§ 103 over Poltorak and Corts. C. Pet. 24–25. Claim 52 depends from
independent claim 43. Petitioner’s obviousness analysis does not address
the deficiencies of independent claim 43, discussed above in Section II.C.1
with respect to limitation 43[b]. Because dependent claim 52 incorporates
all the limitations of independent claim 43, Petitioner’s arguments and
evidence presented with respect to claim 52 do not remedy the deficiencies
with respect to independent claim 43 discussed above.
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We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that dependent claim
52 is obvious over Poltorak and Corts.
H. Anticipation Based on Christensen (Ground 4)
Petitioner asserts claims 43, 47, 48, 51, 52, 56, and 62 are anticipated
by Christensen under 35 U.S.C. § 102. C. Pet. 9, 26–49.
For the reasons discussed above in Section II.A, we determine that the
circumstances of this case warrant exercise of our discretion under 35 U.S.C.
§ 325(d) to deny institution of Ground 4 based on anticipation by
Christensen.
I. Obviousness Based on Christensen (Ground 5)
Petitioner asserts claims 43, 47, 48, 51, 52, 56, and 62 are
unpatentable as obvious under 35 U.S.C. § 103 over Christensen. C. Pet.
49–52.
For the reasons discussed above in Section II.A, we determine that the
circumstances of this case warrant exercise of our discretion under 35 U.S.C.
§ 325(d) to deny institution of Ground 5 based on obviousness over
Christensen.
J. Anticipation Based on Corts (Ground 6)
Petitioner asserts claims 43, 47, 48, 51, 52, 56, and 62 are anticipated
by Corts under 35 U.S.C. § 102. C. Pet. 9, 52–70.
1. Independent Claim 43
As noted above, claim 43 is the only independent claim among the
Challenged Claims. Petitioner asserts that independent claim 43 is
anticipated by Corts. C. Pet. 52–63.
Claim 43 recites in pertinent part:
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A device . . . comprising[] a receiver module that . . . extracts
from at least a portion of the data packet content information
corollary to the unique broadcast event, [43b] wherein the
content information is sourced from a database system that has
at a minimum two entries wherein at least one element of a first
entry matches at least one element of a second entry, and at least
one element of the content information matches at least one
element of the first entry.
Ex. 1001, 25:10–22 (bracketed labelling designated by Petitioner).
As we determine in our discussion of claim construction in Section
II.C.1 above, Petitioner does not provide sufficient evidence or analysis to
demonstrate that the database system recited in limitation 43[b] should be
given no patentable weight. The Petition does not map limitation 43[b] to
Corts. C. Pet. 57.
Because the Petition does not map limitation 43[b] to the asserted
prior art, Petitioner has not shown sufficiently for purposes of institution that
Corts discloses all the limitations of independent claim 43. We are,
therefore, not persuaded that Petitioner has demonstrated a reasonable
likelihood that it would prevail in showing that independent claim 43 is
anticipated by Corts.
2. Dependent Claims 47, 48, 51, 52, and 62
Petitioner argues that Christensen discloses the recited limitations of
dependent claims 47, 48, 51, 52, and 62. See C. Pet. 63 (claim 47), 64
(claim 48), 64–65 (claim 51), 65 (claim 52), and 70 (claim 62).
Because these dependent claims incorporate all the limitations of
independent claim 43, Petitioner’s arguments and evidence presented with
respect to these dependent claims do not remedy the deficiencies with
respect to independent claim 43 discussed above in Section II.C.1.
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We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that dependent claims
47, 48, 51, 52, and 62 are anticipated by Corts.
3. Dependent Claim 56
Dependent claim 56 depends from independent claim 27, which is not
one of the Challenged Claims. Independent claim 27 is similar to
independent claim 43, but is drafted as a system claim. Claim 27 recites a
database system limitation, 27[d], that is substantially similar to that of
limitation 43[b]. See Ex. 1001, 23:53–59. Petitioner does not map
limitation 27[d] to the prior art, arguing instead that “[t]his product-by-
process claim limitation has no patentable weight.” C. Pet. 68 (citing id.
§ IV.C.1).
Because dependent claim 56 incorporates all the limitations of
independent claim 27, Petitioner’s arguments and evidence presented with
respect to claim 56 do not remedy the deficiencies with respect to the
unmapped database system limitation, which is discussed above with respect
to limitation 43[b] in Section II.C.1.
We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that dependent claim
56 is anticipated by Corts.
K. Obviousness Based on Corts (Ground 7)
Petitioner contends that claims 43, 47, 48, 51, 52, 56, and 62 are
unpatentable as obvious under 35 U.S.C. § 103 over Corts. C. Pet. 70–73.
Petitioner asserts that “[i]f the Board were to accord the product-by-
process limitations of limitations 43[b], 27[d], and 62 patentable weight, a
[person of ordinary skill in the art] would have found claim 43, the claims
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that depend from claim 43 (including 62), and claim 56 obvious.” Id. at 71
(citing Ex. 1003 ¶ 290).
Petitioner argues that “Corts discloses a database,” and that a person
of ordinary skill in the art “would have understood that Corts’ ‘data
repository’ refers to the same thing as the ‘proprietary database of SKUs,
prices, and product descriptions’ disclosed in [Corts’] figure 2.” C. Pet. 71–
72 (citing Ex. 1003 ¶¶ 291–292; Ex. 1006, 9:30–40, Fig. 2).
Petitioner also argues that a person of ordinary skill in the art “would
have understood that the ‘IR Data (SKU, price, description, etc.)’ that is
broadcast to the user (items 4 and 5 in [Corts’] figure 1), is sourced from the
‘proprietary database’ of [Corts’] figure 2.” C. Pet. 72 (citing Ex. 1003
¶ 293; Ex. 1006, Fig. 1 items 4, 5, Fig. 2).
Petitioner further argues that a person of ordinary skill in the art
“would have understood that each song would correspond to an entry in
Corts’ proprietary database, and that there would be multiple elements
associated with each song entry—e.g., ‘the name of an artist and a song,’
‘SKU’ and ‘price’—each constituting elements for a particular song entry.”
C. Pet. 72 (citing Ex. 1006, 5:14–20; Ex. 1003 ¶ 294).
Petitioner concedes, however, that Corts “does not explicitly disclose
that at least one element of two of its song entries ‘match.’” C. Pet. 72
(citing Ex. 1003 ¶ 295). “Notwithstanding,” Petitioner argues, “it would
have been common for at least one element of a first song entry in Corts’
‘proprietary database’ to match at least one element of a second song entry
because, if multiple songs from one album or by one artist were in the
database, at least the album or artist elements (and likely ‘price’) would
match for those songs.” C. Pet. 72–73 (Ex. 1003 ¶ 296).
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Petitioner concludes that a person of ordinary skill in the art would
have therefore found it obvious:
that the “name of an artist and a song” in the “IR Data” included
in the broadcast correspond to the claimed “content
information”; that the name of an artist and song is sourced from
Corts’ “proprietary database” that has multiple song entries
(where it would have been obvious for multiple songs to have at
least matching album, artist, and/or price entries); and that at
least the song title and artist elements from the first entry would
match with the song title and artist elements of the content
information.
C. Pet. 73 (citing Ex. 1003 ¶ 297).
Patent Owner argues that Petitioner fails to provide a sufficient case
for obviousness over Corts because Dr. Madisetti’s declaration “is largely
attorney argument and should be disregarded.” Prelim. Resp. 21. Patent
Owner provides a table comparing the language in the Petition to the
language of Dr. Madisetti’s declaration, which appears to identify numerous
passages in the two documents that are substantially similar, if not virtually
identical. See id. at 22–27. Patent Owner asserts that “the Board has denied
institution when the petitioner’s expert declaration contains arguments
identical to arguments set forth in the petition, because the declaration did
not give any argument enhanced probative value.” Id. at 27 (citing Kinetic
Techs., Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 at 15
(PTAB Sept. 23, 2014).
A comparison of the arguments in the Petition that a person of
ordinary skill in the art would have found limitations 43[b] and 27[d]
obvious based on Corts, with paragraphs 290–297 of Dr. Madisetti’s
declaration, shows virtual identity between the two documents on this score.
Dr. Madisetti’s declaration provides little, if any, additional testimony,
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explanation, illustration, or support for what is already set out in the Petition.
Compare C. Pet. 71–73, with Ex. 1003 ¶¶ 290–297. While we recognize the
necessary evidentiary basis Dr. Madisetti’s testimony provides, we also
recognize that Dr. Madisetti’s declaration on this point provides little
additional probative value.
The evidentiary problem this creates for Petitioner, in our view, is that
after conceding that Corts “does not explicitly disclose that at least one
element of two of its song entries ‘match,’” Dr. Madisetti provides only his
opinion for the assertion that it “would have been common for at least one
element of a first song entry in Corts’ ‘proprietary database’ to match at least
one element of a second song entry because, if multiple songs from one
album or by one artist were in the database, at least the album or artist
elements (and likely ‘price’) would match for those songs.” Ex. 1003
¶¶ 295, 296. Dr. Madisetti does not support this opinion with any discussion
or analysis of Corts’ specification or its teachings. See Ex. 1003 ¶¶ 290–
298. Nor does Dr. Madisetti discuss the state of knowledge of those of
ordinary skill in this field of art at the time of the claimed invention to
establish that such a database structure “would have been common.” Id.
With respect to Petitioner’s arguments concerning claim construction,
however, Dr. Madisetti does direct our attention to a “December 29, 2002
playlist from ‘The Dr. Demento’ radio show” as “a real-world example
where two elements (here, the ‘artist’ element) match.” Ex. 1003 ¶ 55
(citing Ex. 1007). Dr. Madisetti, however, provides insufficient explanation
as to how the cited “playlist” relates to the recited database system, let alone
demonstrates that the relationships among the elements of the database
entries recited in independent claim 43 “would have been common” at the
time of the claimed invention. Ex. 1003 ¶¶ 55, 296.
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Patent 8,200,203 B1
38

As such, we find Dr. Madisetti’s opinion insufficient to establish that
the relationships among the elements of the database system entries recited
by independent claim 43 “would have been common” at the time of the
claimed invention.
We are, therefore, not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in showing that independent
claim 43, and dependent claims 47, 48, 51, 52, 56, and 62, would have been
obvious under 35 U.S.C. § 103 over Corts.
III. CONCLUSION
For the reasons set forth above, we determine Petitioner has not
demonstrated a reasonable likelihood of prevailing in showing that any one
of the challenged claims is unpatentable on asserted Grounds 1–3, 6, and 7.
We also exercise delegated discretion under 35 U.S.C. § 325(d) not to
institute review with respect to Grounds 4 and 5. Accordingly, we do not
institute inter partes review.
IV. ORDER
Therefore, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’203 Patent and no trial is instituted.

IPR2021-00717
Patent 8,200,203 B1
39

FOR PETITIONER:
Eric S. Lucas
David J. Cooperberg
SHEARMAN & STERLING LLP
eric.lucas@shearman.com
david.cooperberg@shearman.com

FOR PATENT OWNER:

John Scheibeler
Jonathan Lamberson
Ashley T. Brzezinski
WHITE & CASE LLP
jscheibeler@whitecase.com
jonathan.lamberson@whitecase.com
ashley.brzezinski@whitecase.com