SDI Technologies, Inc.v.Bose Corporation

Patent Trial and Appeal Board

Nov 7, 2014

11608034 (P.T.A.B. Nov. 7, 2014)

Trials@uspto.gov Paper 40
Tel: 571-272-7822 Entered: November 7, 2014

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

Case IPR2013-00465
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

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I. INTRODUCTION
A. Background
SDI Technologies, Inc. (“Petitioner”) filed a Petition (Paper 5, “Pet.”)
requesting inter partes review of claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–
70, 73, 74, 77, and 78 of U.S. Patent 8,364,295 B2 (Ex. 1001, “the ’295
patent”). Bose Corporation (“Patent Owner”) filed a Preliminary Response
(Paper 13, “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 14 (“Dec.”).
After the Decision to Institute, Patent Owner timely filed a Patent
Owner Response (Paper 24, “PO Resp.”), and Petitioner timely filed a Reply
to the Patent Owner Response (Paper 28, “Reply”). An oral hearing was
held on September 4, 2014. Paper 39 (“Tr.”).
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, claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78,
are unpatentable.

B. Related Proceedings
Patent Owner asserted the ’295 patent and U.S. Patent No. 8,401,682
(“the ’682 patent”) against Petitioner in Bose Corp. v. SDI Technologies,
Inc., Case No. 13-cv-10277-WGY (D. Mass.) (“the ’682/’295 patent
litigation”). Pet. 1. The ’682 patent matured from a continuation of the
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application that gave rise to the ’295 patent. The ’682/’295 patent litigation
has been administratively closed pending the outcome of this inter partes
review. See Bose Corp. v. SDI Techs., Inc., Order for Closure (Jan. 24,
2014) (Ex. 2018).
Petitioner filed a second petition for inter partes review of the ’295
patent, SDI Technologies, Inc. v. Bose Corp., Case IPR2014-00346 (PTAB
Jan. 13, 2014).
Petitioner also filed two petitions for inter partes review of the ’682
patent, SDI Technologies, Inc. v. Bose Corp., Case IPR2013-00350 (PTAB
June 12, 2013), and SDI Technologies, Inc. v. Bose Corp., Case IPR2014-
00343 (PTAB Jan. 10, 2014).

C. References Relied Upon
Petitioner relies upon the following prior art references:
ZS-D7 Personal Audio System Operating Instructions, Sony Corp., 3-
860-694-33(1) (1998) (Ex. 1002, “SMS”);
Creative NOMAD® Digital Audio Player User Guide, On-line
Version, v. 1.0, Creative Tech. Ltd., (June 1999) (Ex. 1005,
“Nomad Manual”);
Guy Hart-Davis & Rhonda Holmes, MP3!, I DIDN’T KNOW YOU
COULD DO THAT …™ 65-83 (Sybex, Inc. 1999) (Ex. 1009,
“WinAmp”);
Remote control WinAmp and more, downloaded at
web.archive.org/web/19990508121919/http://www.evation.com
/irman/index.html (archived May 8, 1999) (Ex. 1010, “Irman
Web Pages”);
ADA310W Altec Lansing Computer Speaker System User Guide,
Altec Lansing Techs., Inc., (1998) (Ex. 1011, “Altec Lansing
Manual”); and
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U.S. Patent No. 5,969,283, issued Oct. 19, 1999 (Ex. 1013,
“Looney”).

D. Grounds of Unpatentability
We instituted this proceeding based on the grounds of unpatentability
set forth in the table below. Dec. 27–28.
References Basis Claims challenged
SMS and Nomad Manual § 103 1–11, 18–21, 24, 27, 29–37,
44–47, 50, 73, and 74
SMS, Nomad Manual, and Looney § 103 12–17, 38–43, 63, 64, 68–
70, 77, and 78
WinAmp, Irman Web Pages, and
Altec Lansing Manual
§ 103 1–11, 18–21, 24, 27, 29–37,
44–47, 50, 73, and 74
WinAmp, Irman Web Pages, Altec
Lansing Manual, and Looney
§ 103 12–17, 38–43, 63, 64, 68–
70, 77, and 78

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,
col. 1, ll. 18–21. Figure 1 of the ’295 patent is reproduced below.
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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 col. 3, ll. 35–40; col. 4, ll. 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 col. 3,
ll. 59–63. Stereo jack 48 connects 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 col. 3, ll. 46–49; col. 6, l. 56 – col. 7, l. 7. The computer also is
connected to a network, such as the Internet. Id. at col. 3, ll. 54–58. The
computer can access web radio stations through the network. Id. at col. 6,
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ll. 44–52. Signals from remote control 17, received by sound reproduction
device 10, can control functions of computer 20. Id. at col. 10, ll. 34–59.
The ’295 patent also describes organizing music files into
“assemblages.” Id. at col. 7, ll. 21–46. The assemblages are based on
metadata contained in the music files. Id. “‘Metadata’ values are typically
in file header information of music files in many popular music file formats.
Metadata values may include the artist, the composer, the type of music, and
others.” Id. at col. 7, ll. 23–26.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An audio system configured to connect to 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, the audio system comprising:
(A) a sound reproduction device comprising: a housing;
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
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computer, and (ii) transmit to the computer signals
for controlling 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 user function
of the computer when the user issues a command
of the second type.

II. ANALYSIS
A. Claim Construction
The Board interprets claims using the broadest reasonable
construction. See 37 C.F.R. § 42.100(b). 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).

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1. Claim Terms Previously Construed
In the Petition, Petitioner proposed a construction for the term
“computer,” appearing in independent claims 1, 27, 63, and 78. Pet. 10–11.
Patent Owner, in its Preliminary Response, proposed constructions for the
terms “network,” “configured to provide audio information from any one of
a plurality of sources,” and “audio information from the network via the
computer,” recited in claim 1. Prelim. Resp. 6–17. In the Decision to
Institute (Dec. 8–15, 20–21), we construed claim terms as reproduced in the
table below:
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Claim Phrase Claim Construction in the Decision to
Institute
“computer” (claims 1, 27, 63,
78)
any machine capable of receiving input,
processing, storing, and outputting data
“network” (claim 1) an interactive computer network, such as
the internet
“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” (claim 1)
requires a computer configured to provide
audio information from either one or more
of digital music files stored on a computer,
or one or more of different networks
accessible by a computer, but, does not
preclude providing the information from
both types of sources
“audio information from the
network via the computer”
(claim 1)
audio information received from the
computer that the computer has
downloaded from the network
“a connector . . . between the
sound reproduction system 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” (claim 1)
This claim limitation does not require a
connection that actually receives audio
information from a network. Instead, it
requires a connection that is configured to
do so.

During trial, Patent Owner disputed our constructions of “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 connector . . . between the sound
reproduction system and the computer, wherein the connection includes one
or more signal paths configured to (i) receive audio information from the
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computer corresponding to the digital music files stored on the computer and
audio information from the network via the compute.” PO Resp. 4–9.
Because we do not reach the issue whether SMS and Nomad Manual render
obvious the challenged claims—the only ground in which it is disputed
whether these terms are met by the asserted prior art—we also do not reach
Patent Owner’s challenge to our preliminary constructions of these terms.
Patent Owner also proposed constructions of terms related to
“assemblages” and “metadata,” recited in claims 12–17, 38–43, 63, 64, 68–
70, 77, and 78. Id. at 10–11. Petitioner opposes Patent Owner’s
constructions of these terms. Reply 3.

2. “an assemblage of music files based on a first type of
metadata included in the music files”
1

Claims 12 and 38 recite “an assemblage of music files based on a first
type of metadata included in the music files.” Patent Owner contends that
the court in the ’682/’295 patent litigation construed this limitation to mean

1
Claims 63 and 78 each recite a storage device configured to store music
files, “each music file including within the music file at least a first and
second type of metadata that characterizes the music file” and a display with
a user interface to show “a first assemblage of the plurality of music files in
a first set of groups according to the first type of metadata associated with
the music files.” This language is similar to, but not the same as, the
language in claims 12 and 38. Neither Patent Owner nor Petitioner
addresses the particular language of claims 63 and 78 or the differences
between it and the language of claims 12 and 38. See PO Resp. 10; Reply 3,
10–11. We conclude that this language in claims 63 and 78 does not require
express construction. We note, however, that claims 63 and 78 explicitly
require that each music file include metadata. This is consistent with our
construction of “an assemblage of music files based on a first type of
metadata included in the music files.”
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“a first group of music files that is based on a first type of metadata that is
located in the music file, which may be in the file header or elsewhere in the
file” and urges us to adopt that construction here. PO Resp. 10. As Patent
Owner points out (id.), Petitioner agreed to this construction in the ’682/’295
patent litigation. See Ex. 2016, at 34–38.
In the Reply, Petitioner contends that no express construction of this
term is necessary. Reply 3. Nevertheless, Petitioner argues that “[t]he
claims . . . mean that the assemblages are based on types of metadata (for
example, artist, album, genre, etc.), not the metadata (‘The Beatles,’ ‘Abby
Road,’ ‘Here Comes the Sun,’ ‘Rock’) itself.” Id. at 11. In essence,
Petitioner argues that the claims are directed to assemblages of files based
on categories that might be included in metadata, although the files
themselves might not include metadata. Petitioner’s position is contrary to
the plain language of the claims, which recites that an assemblage is “based
on . . . a first type of metadata included in the music files.”
Moreover, consistent with the claim language, the ’295 patent
describes creating assemblages from metadata contained within the files that
store the audio data:
A second type of assemblage includes recorded units with
common identifying characteristics, sometimes referred to as
common “metadata” values. “Metadata” values are typically in
file header information of music files in many popular music
file formats. Metadata values may include the artist, the
composer, the type of music, and others. . . .
For example, if an assemblage contains music files having a
common composer metadata value of “Beethoven”, each time
the assemblage is requested, a computer database program may
search all the music files for the metadata value of “Beethoven”
as the composer. In this manner, each time a new music file is
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recorded with “Beethoven” as the composer, it is automatically
added to the assemblage.
Ex. 1001, col. 7, ll. 21–44.
In light of the claim language and the description in the specification,
and consistent with the district court in the ’682/’295 patent litigation, we
construe “an assemblage of music files based on a first type of metadata
included in the music files” to mean “a first group of music files that is
based on a first type of metadata that is located in the music file, which may
be in the file header or elsewhere in the file.” We recognize the differences
in the claim construction framework employed by district courts, but
nevertheless are persuaded that the district court’s construction is the
broadest reasonable interpretation.

B. 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 Declaration of Andrew B. Lippman (Ex. 1017,
“Lippman Decl.”) ¶ 19, with Declaration of Dr. Robert L. Stevenson (Ex.
2026, “Stevenson Decl.”) ¶ 20.

C. Obviousness Over WinAmp, Irman Web Pages, and Altec Lansing
Manual
Petitioner asserts that claims 1–11, 18–21, 24, 27, 29–37, 44–47, 50,
73, and 74 of the ’295 patent would have been obvious over WinAmp, Irman
Web Pages, and Altec Lansing Manual. Pet. 38–50.
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1. WinAmp
WinAmp describes a software package for playing MP3 digital audio
files on a computer. Ex. 1009, at 12. According to WinAmp, the software
plays MP3 files stored on the computer and also streams music from the
Internet. Id. at 17–19. WinAmp describes storing “ID3” tag information,
such as title, artist, album, and genre, in each MP3 file. Id. at 28.

2. Irman Web Pages
Irman Web Pages describes an infrared receiver that connects to a
computer. Ex. 1010, at 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.

3. Motion to Exclude Irman Web Pages
Patent Owner has moved to exclude Irman Web Pages as hearsay
(under FEDERAL RULE OF EVIDENCE 802) and lacking authentication (under
FEDERAL RULE OF EVIDENCE 901). Patent Owner Bose Corporation’s
Motion to Exclude Evidence (Paper 32, “PO Mot. to Exclude”) 6–9. Irman
Web Pages is a collection of web pages obtained from the Internet Archive,
or Wayback Machine. Patent Owner contends that Petitioner has failed to
authenticate the reference “by one who has relevant knowledge.”
PO Mot. to Exclude 6. According to Patent Owner, at least one district
court, in Novak v. Tucows, Inc., 2007 WL 922306 (E.D.N.Y. Mar. 26, 2007),
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excluded printouts from the Wayback Machine as lacking authentication.
PO Mot. to Exclude 6–7.
Petitioner responds that Irman Web Pages includes distinctive
characteristics, such as a unique Wayback Machine logo, header, and
uniform resource locator (“URL”), indicating that Irman Web Pages is
authentic. Petitioner’s Opposition to Patent Owner’s Motion to Exclude
Evidence (Paper 34, “Pet. Opp. to Mot. to Exclude”) 5–6; see also FED. R.
EVID. 901(b)(4) (“The appearance, contents, substance, internal patterns, or
other distinctive characteristics of the item, taken together with all the
circumstances” is evidence that may satisfy the authentication requirement.).
Petitioner further points to several district court cases in which printouts
from the Wayback Machine have been found admissible. Pet. Opp. to
Mot. to Exclude 8–9 (citing Keystone Retaining Wall Sys., Inc. v. Basalite
Concrete Prods., LLC, 2011 WL 6436210 (D. Minn. Dec. 19, 2011); Web
Tracking Solutions, L.L.C. v. Wexler, 2010 U.S. Dist. LEXIS 143519
(E.D.N.Y. July 27, 2010); Market-Alerts Pty. Ltd. v. Bloomberg Finance
L.P., 922 F. Supp. 2d 486, 494 n.12 (D. Del. 2013)). Petitioner also points
out that “Bose does not argue that Exhibit 1010 does not accurately
represent archive pages . . . captured on May 8, 1999,” and points to indicia
that show that the date is self-authenticating. See Pet. Opp. to Mot. to
Exclude, 6, 7, 8 n.3 (footnote providing a “clickable version” of the
website).
Patent Owner contends that, in those cited cases in which printouts
from the Wayback Machine were found to be authenticated and not hearsay,
the party proffering the printouts also offered proof of its accessibility.
PO Mot. to Exclude 8–9. At the hearing, Patent Owner clarified that a
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standard affidavit from the Internet Archive would have provided sufficient
authentication. See Tr. 87:4–21. The Internet Archive’s standard affidavit,
however, merely attests to the general procedures of the Internet Archive
and the general characteristics of archived web pages on the Wayback
Machine and states that the particular web page is part of its records.
Ex. 3004. As Petitioner points out, however, we can follow the URL
reproduced in Irman Web Pages and verify that Irman Web Pages is part of
the Internet Archive’s records. Pet. Opp. to Mot. to Exclude 8. Thus, Patent
Owner’s argument reduces to the contention that Petitioner has not provided
an affidavit from Internet Archive attesting to its general procedures. As the
Keystone case explains, “[t]he Internet Archive has existed since 1996, and
federal courts have regularly accepted evidence from the Internet Archive.”
2011 WL 6436210, at *9 n.9. At the hearing, counsel for Patent Owner was
asked to explain why we should consider Irman Web Pages unreliable, and,
specifically, why we should consider unreliable the indication that Irman
Web Pages was archived on May 8, 1999. Tr. 81:13–22; 82:21–83:9;
85:13–86:9; see also Fed. R. Evid. 807. Patent Owner did not articulate
anything about the document itself that would indicate unreliability.
Instead, as indicated above, Patent Owner essentially contends that
Petitioner committed a technical violation of the Rules of Evidence by not
obtaining a standard affidavit from Internet Archive to show that “the web
contents [were] available on that particular date.” See Tr. 83:1–2; 85:13–
86:9. Such an affidavit would not have added materially to the record for
the reasons outlined above. Petitioner shows that the date on the Irman Web
Pages facially appears authentic and is authenticated further by accessing the
website. Patent Owner has not carried the burden on its motion to show that
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Irman Web Pages is not authentic. Therefore, we deny Patent Owner’s
Motion to Exclude, with respect to Irman Web Pages.

4. Altec Lansing Manual
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, at 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
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.

5. Motion to Exclude Altec Lansing Manual
Patent Owner moves to exclude page seven of the Altec Lansing
Manual. PO Mot. to Exclude 4–6.
2
While the majority of the Altec Lansing
Manual describes the ADA310W product, page seven describes an ADA104

2
Earlier in the Motion, Patent Owner stated that it “moves to exclude the
Altec Lansing Manual (Ex. 1011) or at least page seven in that exhibit.”
PO Mot. to Exclude 2. Patent Owner’s argument, however, is directed to
excluding page seven only. Id. at 4–6. Patent Owner confirmed at the
hearing that it only seeks to exclude page seven. Tr. 84:17–19.
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product. Id. at 4–5; Ex. 1011, at 7. As Patent Owner points out (PO Mot. to
Exclude 4), page seven is in a landscape orientation while the remaining
pages of the exhibit are in a portrait orientation. Petitioner argues its
declarant, Dr. Lippman, testified that page seven might be a part of the
manual for the ADA310W product because the ADA104 and ADA310W
products might use the same remote control discussed at page 7. Pet. Opp.
to Mot. to Exclude 4 (citing Ex. 2015, 92:8–14; 96:3–9
3
). However, every
indication is that page 7 is from a different document than the remainder of
Exhibit 1011. Petitioner has not offered persuasive evidence to the contrary.
Accordingly, we grant Patent Owner’s Motion to Exclude with respect to
page 7 of Exhibit 1011.

6. Claims 1–11, 18–21, 24, 27, 29–37, 44–47, 50, 73, and 74
Would Have Been Obvious Over WinAmp, Irman Web
Pages, and Altec Lansing Manual
According to Petitioner, the Altec Lansing ADA310W speaker system
could be connected to a computer equipped with WinAmp software. Pet. 6–
8. The ADA310W, then, would receive, process, and play audio
information from the computer, such as stored MP3 files and music
streamed from the Internet. Id. Petitioner further argues that the computer
could be equipped with an Irman receiver, which would convert remote
control signals into commands that would control the WinAmp software. Id.
This would result in a system with two remote controls: one for the

3
Pages 92 and 96 are not included in the excerpts of Dr. Lippman’s
deposition comprising Exhibit 2015. Petitioner did not supplement the
record with the portions of testimony it cites.
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computer, through the Irman receiver, and one for the ADA310W. Id.
Petitioner proposes that a person of ordinary skill in the art would
consolidate the functions of the two remote controls into one remote control,
which would interface with the ADA310W. Id. at 39, 45. According to
Petitioner, a person of ordinary skill would do this “in order to, for example,
reduce clutter and duplication.” Id. Petitioner’s proposed combination is
supported by the testimony of Dr. Lippman. Ex. 1017 ¶¶ 38–41.
Regarding claims 1 and 27, in addition to findings elsewhere, we
make the following findings: Altec Lansing Manual’s speaker system is an
audio system that is configured to be connected to a computer. Ex. 1011,
at 4. This speaker system is a sound reproduction system that includes a
housing. Id. at 6. The housing includes speakers, a connector configured to
provide a physical and electrical connection to the computer, control
circuitry (the IR receiver and corresponding circuitry that converts the IR
signals into computer commands), and an amplifier. Id. Altec Lansing
Manual also describes a receiver for receiving information from a remote
control device. Id. Irman Web Pages describes controlling user functions of
music reproduction software on a computer, such as that described in
WinAmp, using a remote control. Ex. 1010, at 1.
We conclude that receiving a remote control signal at a receiver
located in a speaker system, as taught in Altec Lansing Manual, transmitting
that signal to an attached computer, and controlling a function of sound
reproduction software (such as WinAmp) on the computer, as taught in
Irman Web Pages, would have been no more than an obvious rearrangement
of old elements, used for their intended purposes, yielding no more than
predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416–17
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(2007). For these reasons, we conclude that Petitioner has proved by a
preponderance of the evidence that claims 1 and 28 would have been
obvious over WinAmp, Irman Web Pages, and Altec Lansing Manual.
Claims 2–11, 18–21, 24, and 73 depend from claim 1. Claims 29–37,
44–47, 50, and 74 depend from claim 27. Having reviewed Petitioner’s
evidence of unpatentability for these dependent claims,
4
we conclude that
Petitioner also has proved by a preponderance of the evidence that claims 2–
11, 18–21, 24, 29–37, 44–47, 50, 73, and 74 would have been obvious over
WinAmp, Irman Web Pages, and Altec Lansing Manual. See Pet. 41–50.

a. The references do not teach away from Petitioner’s
proposed combination
Patent Owner contends that the references teach away from
Petitioner’s proposed combination by teaching two other combinations of
the references that are not within the scope of the claims. PO Resp. 30–38.
With respect to the first alternative combination, Patent Owner argues that
Altec Lansing Manual teaches that a computer can control all functions of a
speaker system and that Irman Web Pages teaches that it could be extended
to support other remote control devices (presumably including the one
described in Altec Lansing Manual). Id. at 32. According to Patent Owner,
these teachings would lead a person of ordinary skill in the art to configure
the computer to accept the remote control signal (using an Irman receiver)
and use the remote control to control all functions of the ADA310W
speakers through the computer (per Altec Lansing Manual). Id. at 32–33. In

4
Patent Owner did not challenge Petitioner’s assertion of unpatentability
with regard to the additional limitations found in these claims.
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this first Patent Owner-proposed combination, contrary to the claims, the
speaker system would not control the computer.
With respect to the second of its proposed combinations, Patent
Owner contends that a skilled artisan would use a single universal remote
control that would have communicated with both the Irman receiver and the
receiver on the Altec Lansing satellite speaker. Id. at 33–34. In this
combination, Patent Owner argues, no modifications to software or circuitry
would have been required. Id. In this combination, also, the speaker system
would not control the computer.
According to Patent Owner, by leading a skilled artisan to one of
these two combinations, the references as a whole would have led the skilled
artisan in a direction divergent from the claims and, thus, would have taught
away from them. Id. at 34. Patent Owner further argues that Petitioner’s
proposed combination would be counterintuitive because the simpler device
(the speaker system) would control the more complex device (the computer).
id. at 38.
As the United States Court of Appeals for the Federal Circuit has
counseled:
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner has not
persuaded us that a skilled artisan would have been discouraged from using
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the remote control from Altec Lansing Manual’s speaker system rather than
a remote control interfacing with a computer connected to the speaker
system, nor has Patent Owner persuaded us that such a combination would
have been unlikely to be productive of the result achieved by the claims.
We also are not persuaded that the prior art would have led a skilled
artisan in a direction divergent from that of the ’295 patent. Rather, Patent
Owner’s evidence suggests that a skilled artisan may have had reasons to
pursue one or the other of its two proposed combinations in certain
circumstances. However, “the ‘mere disclosure of alternative designs does
not teach away.’” In re Mouttet, 686 F.3d 1332, 1334 (Fed. Cir. 2013)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). We are not
persuaded that the prior art implicitly teaches that Patent Owner’s proposed
combinations would have been superior to that proposed by Petitioner.
Cf. Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1343 (Fed. Cir. 2011)
(a jury was permitted to find that “prior Swiss-style machines taught away
from embracing vibrations to improve cutting accuracy because all prior
machines improved accuracy by dampening vibrations”). Moreover, even if
the combinations proposed by Patent Owner would have been preferable to
that proposed by Petitioner, “just because better alternatives exist in the prior
art does not mean that an inferior combination is inapt for obviousness
purposes.” Mouttet, 686 F.3d. at 1334. Thus, we are not persuaded that
WinAmp, Irman Web Pages, and Altec Lansing Manual teach away from a
combination in which the remote control interfaces with a speaker system
and controls a function of a computer.
Patent Owner further contends that Dr. Lippman’s testimony was
driven by hindsight because it did not include descriptions of the two
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combinations proposed by Patent Owner. Id. at 34–38. Indeed, Patent
Owner moves to exclude ¶¶ 39–44 of Dr. Lippman’s testimony because he
does not specifically address Patent Owner’s proposed combinations.
PO Mot. to Exclude 9–15.
5
Dr. Lippman testified in deposition that he did
not opine about Patent Owner’s combinations because, as combinations that
would not render the claims obvious, they were not relevant to the case.
Ex. 2015, 157:6–159:15. Patent Owner has not shown that focusing one’s
testimony on an allegedly invalidating combination to the exclusion of other,
non-invalidating combinations, evidences hindsight bias. Rather,
[t]o reach a non-hindsight driven conclusion as to whether a
person having ordinary skill in the art at the time of the
invention would have viewed the subject matter as a whole to
have been obvious in view of multiple references, the Board
must provide some rationale, articulation, or reasoned basis to
explain why the conclusion of obviousness is correct.
In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Thus, the issue is not
whether Dr. Lippman described combinations of the references that would
not have rendered the claims obvious; instead, the issue is whether
Dr. Lippman provided a reason, with rational underpinning, for combining
the references in the way he proposes. Cf. id at 988 (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).

5
For the reasons stated below, we disagree with Patent Owner’s argument.
Moreover, Patent Owner has not persuaded us that testimony suffering from
hindsight bias should be excluded as inadmissible. Rather, that would go to
the weight we give to the testimony. Thus, we deny Patent Owner’s Motion
to Exclude with respect to ¶¶ 39–44 of Dr. Lippman’s testimony.
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Dr. Lippman testified that a skilled artisan would have made the
proposed combination “in order to reduce duplication and clutter, such that
one remote would control both the speaker and the computer and using the
IR receiver positioned in the speaker.” Ex. 1017 ¶ 41. We conclude that
this reason has rational underpinning. Moreover, as explained in the
Decision to Institute (Dec. 24–25), adding Patent Owner’s proposed
combinations to Petitioner’s proposed combination renders the latter no
more than an obvious selection from a finite number (here, three) of
predictable solutions. The Federal Circuit has distinguished between
circumstances where the challenger of a patent “merely throws metaphorical
darts at a board filled with combinatorial prior art possibilities,” which is
vulnerable to hindsight bias, and circumstances “where a skilled artisan
merely pursues ‘known options’ from a ‘finite number of identified,
predictable solutions,’” which evidences obviousness. In re Kubin, 561 F.3d
1351, 1359 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 421). We conclude
that this case falls into the latter category. Patent Owner’s two combinations
and Petitioner’s combination together constitute three rearrangements of the
same elements, where each of those combinations is a predictable use of the
elements for their intended purposes. Precisely how to arrange these known
elements would have been an obvious matter of design choice. See also
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir.
2009) (“As the Supreme Court explained, if trying such a limited number of
solutions ‘leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.’” (quoting KSR, 550
U.S. at 421)).

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b. Altec Lansing Manual teaches an amplifier located
within the housing
Patent Owner argues that Altec Lansing Manual does not describe an
amplifier located within the same housing as control circuitry for receiving
control commands. PO Resp. 38–40. Petitioner contends that the speakers
described in Altec Lansing Manual included amplifiers located in the
satellite speakers and the subwoofer for processing audio signals. Pet. 39.
Petitioner also contends that the IR receiver shown at page 6 of Altec
Lansing Manual constitutes “control circuitry . . . for receiving control
commands.” Id.
Patent Owner argues that Altec Lansing Manual’s control circuitry
would have been located in a satellite speaker while the amplifiers more
likely would have been located only in the subwoofer. PO Resp. 38–39.
Thus, Patent Owner argues, in Petitioner’s proposed combination, the audio
signal processing circuitry and the control circuitry would not have been
included in the same housing. Id.
In response, Petitioner argues that “[t]he ‘control circuitry,’ however,
extends from the satellite th[r]ough the cable that connects to the subwoofer,
and into the subwoofer, which is the only way that the remote control signals
received by the IR receiver can get to the amplifier that Bose says is in the
subwoofer.” Reply 13. Petitioner further argues that the claimed housing
can include each of the three speakers (the two satellites and the subwoofer
described in Altec Lansing Manual). Id. Finally, Petitioner argues that
where to locate the control circuitry and audio signal processing circuitry
simply would have been a matter of design choice. Id.
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We agree with Petitioner that the control circuitry taught in 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).
We also are persuaded by Petitioner that where to locate the particular
circuitry would have been a predictable matter of design choice, with the
circuitry performing the same intended function regardless of whether it is
located in the subwoofer or a satellite speaker. See also Mouttet, 686 F.3d at
1332 (“It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.”).
Patent Owner argues that page seven of Altec Lansing Manual does
not describe the same product as the remainder of the reference. PO Resp.
39–40. Accordingly, Patent Owner argues, Petitioner cannot rely on page
seven to show an amplifier. Id. As explained above, we agree that page
seven does not belong with the remainder of Altec Lansing Manual.
Nevertheless, we agree with Petitioner (see Reply 13) that pages 4–6 show
amplification and the ability to control the speaker system with a remote
control. Thus, the reference as a whole supports Petitioner’s argument even
without page seven.

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7. Claims 5, 6, 9, 20, 21, 32, 33, 35, 46, and 47 Would Have
Been Obvious Over WinAmp, Irman Web Pages, and Altec
Lansing Manual
Each of claims 5, 6, 9, 20, 21, 32, 33, 35, 46, and 47 recites an audio
system that includes an AM/FM tuner located at least partially within the
housing. Petitioner, through its declarant, contends that the notion of an
AM/FM radio tuner incorporated within a speaker system was well-known
and, by contrast, that it was uncommon to place an AM/FM tuner in a
computer. Ex. 1017 ¶ 44. According to Dr. Lippman, it would have been an
obvious engineering combination, with no undue design challenges, to place
an AM/FM tuner in the housing of the speaker system of Altec Lansing
Manual, and a person of ordinary skill in the art would have added a tuner to
give users the advantage of listening to the radio without using computer
resources. Id.
Patent Owner concedes that coupling an AM/FM tuner with a speaker
is “very old,” but, nevertheless, argues that Petitioner has failed to provide a
reason to combine a tuner within the housing of the Altec Lansing Manual
speaker system. PO Resp. 45. Patent Owner argues that a skilled artisan
would have added a tuner using an input on the back of the speaker system
rather than incorporating it within the housing of a satellite speaker. Id. at
41–42 (citing Stevenson Decl., Ex. 2026 ¶ 73). According to Patent Owner,
incorporating a tuner into a satellite speaker would require more
interconnections and would lead to interference, as the satellite speakers are
meant to be placed near the computer. Id. at 42.
Petitioner replies that such interconnections would have been well
within the abilities of a skilled artisan and that interference was a common
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issue that a skilled artisan would have known to alleviate by shielding.
Reply 14. We agree with Petitioner. The record shows that adding an
AM/FM tuner within the Altec Lansing Manual speaker system housing
would have been little more than re-locating or adding a well-known and
desirable feature, for its intended purpose, with predictable results. See KSR,
550 U.S. at 416–17; Lippman Decl., Ex. 1017 ¶ 44.
Regarding claims 21 and 47, Patent Owner argues that a skilled
artisan would not have added control buttons on an Altec Lansing Manual
satellite speaker to control a function of the computer because software on
the computer (e.g., WinAmp software) already could control the computer
function. PO Resp. 42. Petitioner responds that the control buttons on the
satellite speaker would be redundant of those on the remote control and that
it would have been desirable if the remote control were to fail. Reply 14.
We are persuaded that Petitioner’s proposed reason has rational
underpinning.
In sum, Petitioner has proved, by a preponderance of the evidence,
that claims 5, 6, 9, 20, 21, 32, 33, 35, 46, and 47 would have been obvious
over WinAmp, Irman Web Pages, and Altec Lansing Manual.

D. Obviousness of Claims 12–17, 38–43, 63, 64, 68–70, 77, and 78
Over WinAmp, Irman Web Pages, Altec Lansing Manual, and
Looney
Petitioner asserts that claims 12–17, 38–43, 63, 64, 68–70, 77, and 78
would have been obvious over WinAmp, Irman Web Pages, and Altec
Lansing Manual, and Looney. See Pet. 51–60.
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Looney describes compressing music into MPEG3 (also referred to as
MP3) files and storing those files in a database along with data indicating
categories to which the MP3 files are assigned. Ex. 1013, col. 2, ll. 27–50.
The MP3 files are stored in the database separately from the category
information. Id. at col. 6, ll. 14–17 (“These categories are carried in a
database, along with the raw digital music data, and allow the user to
playback each of the individual selections based upon specific categories in
a random or ordered manner.”). The music files can be organized into such
categories as “title, artist, date, main music category, sub-main music
category,” etc. Id. at col. 6, ll. 51–63.
According to Petitioner, Looney discloses sorting digital music files
based on metadata. Pet. 51. Petitioner’s proposed reason to combine
Looney with WinAmp, Irman Web Pages, and Altec Lansing Manual is to
allow the users to navigate their music collections in a conventional way.
Pet. 51–52 (citing Lippman Decl., Ex. 1017 ¶ 48). Dr. Lippman’s opinion,
offered on behalf of Petitioner, assumes “that ‘the music files’ would include
the database of [Looney] that includes the metadata.” Ex. 1017 ¶ 48. In the
alternative, Dr. Lippman states that the location of the data used to perform
the sorting simply would have been a matter of design choice. Id.
Patent Owner argues that Looney does not describe an assemblage of
music files based on “metadata included in the music file.” PO Resp. 43.
Instead, Patent Owner argues, Looney describes organizing music files using
metadata stored separately in a database. Id. at 25–26. As explained in
Section II.A.2, we agree that claims 12–17 and 38–43 require a remote
configured to transmit a signal representing a command for causing the
computer to select a first group of music files that is based on a first type of
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metadata that is located in the music file, which may be in the file header or
elsewhere in the file. Nevertheless, the evidence of record supports the
conclusion of obviousness.
While Looney describes organizing music files based on metadata
stored separately from the music files (see, e.g., Ex. 1013, col. 6, ll. 14–17),
the ’295 patent, itself, admits that “‘[m]etadata’ values are typically included
in file header information of music files in many popular music file
formats.” Ex. 1001, col. 7, ll. 22–25. Indeed, WinAmp discloses that each
MP3 file can store “ID3 Tag” information, which includes metadata such as
“Title,” “Artist,” “Album,” and “Genre.” Ex. 1009, at 28; see Pet. 54.
Looney teaches the concept of organizing music files into assemblages
based on types of metadata, such as title, artist, and music style. Ex. 1013,
col. 11, ll. 1–22. Per the admission in the ’295 patent, a skilled artisan
would have known that the metadata could have been stored in the music
files themselves (such as the MP3 files described in WinAmp, Ex. 1009, at
28). As Dr. Lippman observed, “the location of the data used to perform the
sorting is simply a matter of design choice.” Ex. 1017 ¶ 48. See Kubin, 561
F.3d at 1359; Perfect Web, 587 F.3d at 1331.
Petitioner contends that a skilled artisan would have combined the
teachings of Looney with those of WinAmp, Irman Web Pages, and Altec
Lansing Manual “to allow the user to navigate their music collection in a
conventional way.” Pet. 51. Patent Owner argues that “[b]ecause the
WinAmp software already includes a way for users to organize the music,
there is no reason why one of ordinary skill in the art would choose to
implement some other scheme, in particular Looney’s different approach.”
PO Resp. 44. The arguments support the record evidence that skilled
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artisans would have known about these two music file organization systems
to navigate, find, and play stored music. We conclude that substituting
Looney’s scheme of organizing music files for that described in WinAmp
would have been nothing more than a mere substitution of one type of file
organization system for another, or the obvious choice of known options
from predictable solutions. See Kubin, 561 F.3d at 1359; Perfect Web, 587
F.3d at 1331.
Having reviewed Petitioner’s evidence of unpatentability for the
remaining limitations of claims 12–17, 38–43, 63, 64, 68–70, 77, and 78
6
,
we conclude that Petitioner has proved by a preponderance of the evidence
that each of these claims would have been obvious over WinAmp, Irman
Web Pages, Altec Lansing Manual, and Looney.

E. Obviousness Grounds Based on SMS
Our determination that each challenged claim is unpatentable over
WinAmp, Irman Web Pages, and Altec Lansing Manual, along with Looney,
renders it unnecessary to reach Petitioner’s contentions that claim 1–11, 18–
21, 24, 27, 29–37, 44–47, 50, 73, and 74 would have been obvious over
SMS, with or without Nomad Manual, and that claims 12–17, 38–43, 63, 64,
68–70, 77, and 78 would have been obvious over SMS and Looney, with or
without Nomad Manual. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching obviousness after finding anticipation).

6
The findings and conclusions set forth in Section II.C.6, above, for
claims 1 and 27 are applicable to the similar limitations of independent
claims 63 and 78.
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III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78 of the
’295 patent are unpatentable based on the following grounds of
unpatentability:
Claims 1–11, 18–21, 24, 27, 29–37, 44–47, 50, 73, and 74 under
35 U.S.C. § 103(a) as obvious over WinAmp, Irman Web Pages, and Altec
Lansing Manual; and
Claims 12–17, 38–43, 63, 64, 68–70, 77, and 78 under 35 U.S.C.
§ 103(a) as obvious over WinAmp, Irman Web Pages, Altec Lansing
Manual, and Looney.

IV. ORDER
For the reasons given, it is
ORDERED that, based on a preponderance of the evidence, claims
1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78 of U.S. Patent
No. 8,364,295 B2 are held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted-in-part; page seven of Exhibit 1011 is excluded; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
SDI Technologies, Inc.
C/O
Matthew B. Lowrie
Aaron W. Moore
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, Reg. No. 33,814
Karl Renner
Mark Hebert
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
whelan@fr.com
axf@fr.com
Hebert@fr.com