Unified Patents Inc. v. Digital Audio Encoding Sys., LLC, IPR2016-01710, Paper 1 (Sept. 2, 2016)

IPR2016-01710 Petition
U.S. Patent 7,490,037

Filed on behalf of Unified Patents Inc.
By: Vincent J. Galluzzo, Reg. No. 67,830
Teresa Stanek Rea, Reg. No. 30,427
CROWELL & MORING LLP
1001 Pennsylvania Avenue, N.W.
Washington, D.C. 20004
Tel: (202) 624-2781
Email: vgalluzzo@crowell.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Avenue, N.W., Floor 10
Washington, D.C. 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
DIGITAL AUDIO ENCODING SYSTEMS, LLC
Patent Owner
IPR2016-01710
Patent 7,490,037
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT 7,490,037
CHALLENGING CLAIMS 1-32
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
U.S. Patent 7,490,037
TABLE OF CONTENTS
I.
MANDATORY NOTICES .............................................................................1

A.
Real Party-in-Interest ...................................................................................1
B.
Related Matters ............................................................................................1
C.
Counsel ........................................................................................................5
D.
Service Information, Email, Hand Delivery, and Postal .............................5
II.
CERTIFICATION OF GROUNDS FOR STANDING ..................................6
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................6
A.
Prior Art Patents and Printed Publications ..................................................6
B.
Grounds for Challenge .................................................................................7
IV.
INTRODUCTION ...........................................................................................7
V.
TECHNOLOGY BACKGROUND.................................................................9
VI.
OVERVIEW OF THE 037 PATENT ..........................................................12
A.
Summary of the Alleged Invention............................................................12
B.
Level of Ordinary Skill in the Art .............................................................14
C.
Prosecution History....................................................................................14
VII. CLAIM CONSTRUCTION ..........................................................................15

VIII. SPECIFIC GROUNDS FOR PETITION ......................................................17
A.
Ground I: Claims 14, 7, 9, 10, 17, 18, 21, 2325, 29, and 32 are
anticipated by Riddle .................................................................................18
1.
Overview of Riddle ..................................................................................19
2.
Claims 1 and 17 are anticipated by Riddle.............................................21
3.
Claim 2 is anticipated by Riddle .............................................................26
4.
5.
6.
7.
8.
Claim 10 is anticipated by Riddle ...........................................................29
9.

i
10.
U.S. Patent 7,490,037
11.
12.
13.
14.
15.
B.
Ground II: Claims 5, 6, 1114, 19, 20, and 22 are obvious over Riddle ..33
1.
Claim 5 is obvious over Riddle ...............................................................33
2.
Claim 6 is obvious over Riddle ...............................................................34
3.
Claim 11 is obvious over Riddle .............................................................35
4.
5.
6.
7.
8.
9.
C.
Ground III: Claims 1, 2, 411 and 1332 are obvious over Norris in view
of Hinderks, Yabusaki, and Menezes .........................................................41
1.
Overview of Norris ..................................................................................41
2.
Overview of Hinderks ..............................................................................43
3.
Overview of Yabusaki .............................................................................43
4.
Overview of Menezes ..............................................................................44
5.
Claims 1 and 17 are obvious over Norris in view of Hinderks ...............45
6.
Claim 2 is obvious over Norris in view of Hinderks ...............................49
7.
Claim 4 is obvious over Norris in view of Hinderks and Yabusaki ........49
8.
9.
Claim 6 is obvious over Norris in view of Hinderks and Yabusaki ........51
10.
11.
ii
IX.
12.
U.S. Patent 7,490,037
13.
Claim 10 is obvious over Norris in view of Hinderks .............................55
14.
15.
16.
17.
Claim 15 is obvious over Norris in view of Hinderks and Yabusaki ......58
18.
19.
20.
21.
22.
23.
24.
25.
26.
Claim 25 is obvious over Norris in view of Hinderks and Menezes .......66
27.
28.
29.
30.
31.
32.
33.
CONCLUSION..............................................................................................72
iii
U.S. Patent 7,490,037
I.
MANDATORY NOTICES
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
EX1035 (Petitioners Voluntary Interrogatory Responses).
B.
Related Matters
U.S. Patent 7,490,037 (the 037 Patent (EX1001)) is owned by Digital
Audio Encoding Systems, LLC (DAE, or Patent Owner). See EX1036 (Apple
Complaint), at 15.
On May 25, 2016, DAE filed a lawsuit in the District of Delaware alleging
infringement of the 037 Patent in Digital Audio Encoding Systems, LLC v. Apple
Inc., No. 1:16-cv-00389 (D. Del. Filed May 25, 2016).
On June 23, 2016, DAE filed multiple additional lawsuits in the District of
Delaware on the same grounds:
Digital Audio Encoding Systems, LLC v. Frys Electronics, Inc., No. 1:16cv-00481 (D. Del. Filed June 23, 2016);
U.S. Patent 7,490,037
Digital Audio Encoding Systems, LLC v. AT&T Inc., No. 1:16-cv-00482 (D.
Del. Filed June 23, 2016);
Digital Audio Encoding Systems, LLC v. Sprint Corporation, No. 1:16-cv00483 (D. Del. Filed June 23, 2016);
Digital Audio Encoding Systems, LLC v. Target Corp., No. 1:16-cv-00484
(D. Del. Filed June 23, 2016);
Digital Audio Encoding Systems, LLC v. Overstock.com, Inc., No. 1:16-cv00485 (D. Del. Filed June 23, 2016);
Digital Audio Encoding Systems, LLC v. Atlantic Tele-Network, Inc., No.
1:16-cv-00486 (D. Del. Filed June 23, 2016); and
Digital Audio Encoding Systems, LLC v. Samsung Electronics Co. Ltd., et
al., No. 1:16-cv-00487 (D. Del. Filed June 23, 2016).
Digital Audio Encoding Systems, LLC v. Amazon.com, Inc., No. 1:16-cv00489 (D. Del. Filed June 24, 2016);
Digital Audio Encoding Systems, LLC v. Best Buy Co., Inc., No. 1:16-cv00490 (D. Del. Filed June 24, 2016);
Digital Audio Encoding Systems, LLC v. eBay Inc., No. 1:16-cv-00491 (D.
Del. Filed June 24, 2016);
U.S. Patent 7,490,037
Digital Audio Encoding Systems, LLC v. Alphabet Inc., No. 1:16-cv-00492
(D. Del. Filed June 24, 2016);
Digital Audio Encoding Systems, LLC v. T-Mobile USA, Inc., No. 1:16-cv00493 (D. Del. Filed June 24, 2016);
Digital Audio Encoding Systems, LLC v. Verizon Communications Inc., No.
1:16-cv-00494 (D. Del. Filed June 24, 2016); and
Digital Audio Encoding Systems, LLC v. Wal-Mart Stores, Inc., No. 1:16-cv00495 (D. Del. Filed June 24, 2016).
Digital Audio Encoding Systems, LLC v. Huawei Technologies Co., Ltd., et
al., No. 1:16-cv-00558 (D. Del. Filed June 30, 2016);
Digital Audio Encoding Systems, LLC v. Motorola Mobility LLC, No. 1:16cv-00559 (D. Del. Filed June 30, 2016);
Digital Audio Encoding Systems, LLC v. HTC Corporation, et al., No. 1:16cv-00560 (D. Del. Filed June 30, 2016);
Digital Audio Encoding Systems, LLC v. Toshiba Corporation, et al., No.
1:16-cv-00561 (D. Del. Filed June 30, 2016);
Digital Audio Encoding Systems, LLC v. LG Electronics, Inc., et al., No.
U.S. Patent 7,490,037
Digital Audio Encoding Systems, LLC v. Nokia Corporation, et al., No.
Digital Audio Encoding Systems, LLC v. Blackberry Limited, et al., No.
Digital Audio Encoding Systems, LLC v. Sony Corporation, et al., No. 1:16cv-00567 (D. Del. Filed June 30, 2016); and
Digital Audio Encoding Systems, LLC v. ZTE Corporation, et al., No. 1:16cv-00568 (D. Del. Filed June 30, 2016).
On July 5, 2016, DAE filed multiple additional lawsuits in the District of
Digital Audio Encoding Systems, LLC v. Bank of America Corporation, No.
1:16-cv-00574 (D. Del. Filed July 5, 2016);
Digital Audio Encoding Systems, LLC v. Telefonaktiebolaget LM Ericsson,
et al., No. 1:16-cv-00575 (D. Del. Filed July 5, 2016);
Digital Audio Encoding Systems, LLC v. ASUSTek Computer Inc., et al., No.
1:16-cv-00576 (D. Del. Filed July 5, 2016);
Digital Audio Encoding Systems, LLC v. Cisco Systems, Inc., No. 1:16-cv00577 (D. Del. Filed July 5, 2016); and
Digital Audio Encoding Systems, LLC v. International Business Machines
Corporation, No. 1:16-cv-00578 (D. Del. Filed July 5, 2016).
U.S. Patent 7,490,037
DAE filed against, inter alia, Apple Inc., Frys Electronics, Inc., AT&T Inc.,
Sprint Corporation, Target Corp., Overstock.com, Inc., Atlantic Tele-Network,
Inc., Samsung Electronics Co. Ltd., Amazon.com, Inc., Best Buy Co., Inc., eBay
Inc., Alphabet Inc., T-Mobile USA, Inc., Verizon Communications Inc., Wal-Mart
Stores, Inc., Huawei Technologies Co., Ltd., Motorola Mobility LLC, HTC
Corporation, Toshiba Corporation, LG Electronics, Inc., Nokia Corporation,
Blackberry Limited, Sony Corporation, ZTE Corporation, Bank of America
Corporation, Telefonaktiebolaget LM Ericsson, ASUSTek Computer Inc., Cisco
Systems, Inc., and International Business Machines Corporation, claiming that
certain of these companies products or services infringe the 037 Patent. It is the
sole patent raised. These cases are in their early stages and no schedule or trial
date has been set.
C.
Counsel
Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa
Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as
back-up counsel.
D.
Service Information, Email, Hand Delivery, and Postal

Unified consents to electronic service at vgalluzzo@crowell.com and
jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring

LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 624-
U.S. Patent 7,490,037
2781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,
N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.
II.
CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges
claims 132 of the 037 Patent.

A.
Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability
explained below.
None of the following references were considered by the
Examiner during prosecution of the 037 Patent:1

1.
U.S. Patent 6,175,856 (filed on September 30, 1996, published on

January 16, 2001) (Riddle) (EX1003), which is prior art under 35
U.S.C. 102(e).
The 037 Patent issued from a patent application filed prior to enactment of the
America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.
2.
U.S. Patent 7,490,037
U.S. Patent 5,557,749 (filed on October 15, 1992, published on
September 17, 1996) (Norris) (EX1004), which is prior art under 35
U.S.C. 102(a).
3.
U.S. Patent 6,041,295 (filed on April 10, 1996, published on March

21, 2000) (Hinderks) (EX1005), which is prior art under 35 U.S.C.
102(e).
4.
U.S. Patent 5,513,211 (filed on May 25, 1994, published on April 30,
1996) (Yabusaki) (EX1006), which is prior art under 35 U.S.C.
102(b).
5.
U.S. Patent 5,621,894 (filed on August 9, 1995, published on April

15, 1997) (Menezes) (EX1007), which is prior art under 35 U.S.C.
102(a).
B.
Grounds for Challenge

This Petition, supported by the Declaration of Leonard Laub (Laub
Declaration (EX1002)), requests cancellation of challenged claims 132 as

unpatentable under 35 U.S.C. 102 or 103. See 35 U.S.C. 314(a).
IV.
INTRODUCTION
Encoding of audio signals can be complicated and heavily reliant on
complex mathematical algorithms and computer processing techniques. While the

037 Patent is titled Method and Apparatus for Encoding Signals, it does not deal
U.S. Patent 7,490,037
with these complex algorithms or processing techniques. In fact, the 037 Patent
has little to do with encoding techniques themselves.
The 037 Patent is instead directed to a simple idea: using a middleman
control device between an upstream device that sends an audio signal and a
downstream device that receives the audio signal. The middleman simply chooses
the encoding format to apply to the audio signal from a predetermined list based on
information that the middleman knows or discovers about the downstream device.
But this idea had already been proposed years earlier in the field of computer
networking by companies like Apple Computer, Inc., Microsoft Corporation, and
Intel Corporation. See EX1003 (Riddle), EX1007 (Menezes), EX1004 (Norris),
EX1009 (Mirashrafi).
In networking systems, numerous computers with differing capabilities and
requirements needed to be able to send and receive audio and video data in real
time. So those skilled in the art developed solutions to find and use the most
efficient encoding methods for the network. A common solution was to negotiate
encoding methods among the computers or terminals connected to the network to
determine the best encoding method to use. These pre-1997 solutions are no
different from the invention claimed in the 037 Patent.
The 037 Patent was not novel, and was obvious as of July 1, 1997, over the
various encoding format negotiation and selection schemes known in the art.
U.S. Patent 7,490,037
Claims 132 of the 037 Patent are therefore unpatentable in light of at least the
grounds presented herein.
V.
TECHNOLOGY BACKGROUND
A.
The Basics of Encoding and Decoding of Digital Signals

The technology discussed in this Petition generally relates to the encoding of
digital audio signals and methods of selecting an appropriate encoding format for
the encoding of that signal. EX1001 (037 Patent), at 1:5657, 4:5053. The term
encoding broadly refers to the representation of a piece of information in another
form. See EX1013 (Painter), at 1.2 Compression and encryption are two
terms that are subsets of encoding, as each represents a piece of information in
another form, size-reduced or scrambled, respectively.
EX1002 (Laub
Declaration), at 26.
Just like today, end users in 1997 expected high-quality audio reproduction
from a digital system. EX1013 (Painter), at 1. Yet with high-quality audio
reproduction comes an increased cost of transmission, EX1005 (Hinderks), at
1:4344, and an ever increasing volume of data to be transferred between
systems, EX1004 (Norris), at 1:2728.
This was as much at odds with
The Painter reference was published at least as early as July 2, 1997 at the
International Conference on Digital Signal Processing. See EX1037 at XXI.
U.S. Patent 7,490,037
technological constraints like storage space, processing power, and network
bandwidth as it is today. EX1014 (Furht), at 47.
Encoding satisfies these competing interests by attempting to maximize both
efficiency and quality.
Encoding can represent the signal with a minimum
number of bits, i.e., amount of data, while generating output audio which cannot
be distinguished from the original input, even by a sensitive listener. EX1013
(Painter), at 1. Compression encoding even further reduces the size of that data to
be stored or transmitted, and therefore the associated transmission costs. See
EX1015 (Pan), at 1; EX1014 (Fuhrt), at 48; EX1005 (Hinderks), at 1:4649.
Compression and other encoding techniques work by complementary
encoders and decoders. EX1015 (Pan), at 7; EX1005 (Hinderks), at 1:5261.
The encoder receives an input data stream (e.g., digitized audio) and processes that
data stream in accordance with a compression (encoding) algorithm. EX1015
(Pan), at 78. After the compressed digital signal reaches its destination, the
decoder simply reverses the processing steps taken by the encoder to reconstruct
the original data stream. Id.
Even before 1997, there was considerable research on encoding schemes.
EX1013 (Painter), at 1; see also EX1016 (Plenge); EX1012 (Taniguchi); EX1017
(Barrett); EX1018 (Nardone); EX1020 (Hienerwadel); EX1021 (Wiese 715);
EX1022 (Sedlmeyer); EX1023 (Dolby); EX1024 (Fujisaki). Out of this research
10
U.S. Patent 7,490,037
came a number of standards, particularly between 1992 and 1997, some of which
were available commercially. EX1013 (Painter), at 1, 25.
One of those commercially available standards was MPEG/audio, which
compressed an audio signal in part by exploiting the perceptual limitations of the
human ear, known as a psychoacoustic model. EX1015 (Pan), at 67, 10;
EX1013 (Painter), at 3. MPEG/audio removes certain parts of the audio signal
that cannot be heard by the human ear, such as very high or very low frequencies.
Id. Other psychoacoustic compression techniques were well known before 1997.
See EX1001 (037 Patent), at 1:2529; EX1025 (Klank); EX1026 (Kim); EX1027
(Stautner).
B.
Encoding Format Selection Schemes

In many early data communications systems, a sender would encode data in
a certain format without first making sure that the receiver could accept a signal
encoded in that format. EX1001 (037 Patent), at 1:3044. This was inefficient, as
there was no guarantee that the encoding methods available to the sender would be
available to the receiver. EX1011 (H.323), at 12. If a sender were to select poorly,
and the encoding method not be compatible with the receiver, the signal would
need to be re-coded. EX1001 (037 Patent), at 1:3337, 3942. Thus, before
1997, those skilled in the art knew to coordinate encoding methods between the
11
U.S. Patent 7,490,037
encoder and decoder by various encoding format selection schemes to overcome
these problems.
One such encoding format selection scheme was part of an international
standard known as H.323. EX1011 (H.323). In the H.323 standard, the encoder
initiates a capability exchange with the decoder by requesting the video bit rate,
picture format, and audio encoding algorithm options that can be accepted by the
decoder. Id. at 13. The encoder then transmits audio and video streams in real
time to decoder in any format that is within the decoders capability set. Id. at i,
13. Similar solutions were developed around the same time, all before 1997. See
EX1008 (Sharma), at Abstract, 2:2224, 30:5557, 31:3137, 32:2730; EX1009
(Mirashrafi), at 74:18; EX1010 (Spiess), at 7:1725, 7:3840, 7:4963.
VI.
OVERVIEW OF THE 037 PATENT
A.
Summary of the Alleged Invention

The 037 Patent is directed to methods of negotiating an encoding algorithm
for encoding digital audio based on the capabilities or parameters of a downstream

processing device. EX1001 (037 Patent), at 1:1619, 1:5657, 2:1216. These
methods utilize a simple control unit that does no more than agree on an encoding
format with the processing device by a simple handshake protocol:
(1)
transmit a test signal to the processing device;
12
(2)
U.S. Patent 7,490,037
determine the properties or the property parameters of the
processing device;
(3)
select an encoding format based on those properties or parameters;

and
(4)
set a simple switch to select a desired encoding format for a

subsequent digital audio signal.
Id. at 2:1216, 3:3839, 4:3032, 4:4247, 4:5053.

Figure 1 of the 037 Patent illustrates a block circuit diagram implementing
the handshake negotiation between control unit K and various downstream
processing devices such as transmission channels U1 and U2 and storage device
SP (red annotations added):
processing devices
Encoding algorithms
switch
control unit
Test signals
13
U.S. Patent 7,490,037
In Figure 1, a digitized audio signal TE arrives at switch S1, which is
controlled by control unit K. Id. at 4:32, 4243. Control unit K determines the
position of switch S1 based on a test signal previously sent to the downstream
processing device (storage device SP or transmission channel U1 or U2). Id. at
4:4247. That test signal provides information about the properties or parameters
of the downstream processing device to control unit K. Id. Based on those
properties or parameters, control unit K selects the appropriate encoding algorithm
for audio signal TE: either C1 or C2. Id. at 4:4247, 5053. Control unit K then
sets switch S1 to direct audio signal TE to that desired encoding algorithm, C1 or
C2.
Id. at 4:5053.
As the prior art repeatedly demonstrates, however, this
concept of a negotiation between two devices for pre-determining an encoding

format was not novel, and was obvious at the time the 037 Patent was filed.
B.
Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 037 Patent would
have a bachelors degree in electrical engineering or a related subject, and at least

three years of experience working with digital audio encoding and compression
techniques. EX1002 (Laub Declaration), at 23.
C.
Prosecution History
The 037 Patent issued from U.S. Patent Application 11/143,011 (the 011
Application), which was filed on June 2, 2005, EX1001 (037 Patent) at (22), and
14
U.S. Patent 7,490,037
which is a continuation of U.S. Patent Application 09/462,049. Id. at (63), 1:911.
The 037 Patent claims priority to German Patent Application 197 27 938.4 filed
on July 1, 1997. Id. at 1:79. In the only Office Action, the Examiner rejected all
claims in the 011 Application using the same references and arguments previously
used against the parent 049 Application. EX1032 (037 File History, Non-Final
Office Action (12/10/2007)).
After the Applicants amended the independent
claims wholesale, EX1033 (037 File History, Amendment and Response

(6/10/2008)), the Examiner issued a Notice of Allowability, EX1034 (037 File
History, Notice of Allowability (10/21/2008)).
VII. CLAIM CONSTRUCTION
Claim terms of a patent in inter partes review are normally given their
broadest reasonable construction in light of the specification.
37 C.F.R.
42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016).
The following discussion proposes constructions and support for those
constructions. Any claim terms not included in the following discussion should be
given their broadest reasonable construction in light of the specification.
property of the processing device
The phrase property of the processing device should be interpreted to
mean capability or parameter of the processing device.
15
U.S. Patent 7,490,037
The 037 Patent does not define the term property, but provides
definitional equivalents, such as parameters, property parameters, and
possibilities of the processing device. See EX1001 (037 Patent), at 4:4647,
2:1314, 1:652:1.
The 037 Patent describes that the encoding format is
determined in dependence on the properties of the processing device, making it

possible in the encoding procedure to take account of and use the encoding
formats which are necessary for the connected items of equipment. Id. at 1:56
57, 6264. The 037 Patent then goes on to give non-limiting examples of such
properties, including bit rate, processor power, and power. Id. at 3:4042,
15:37, 43. In fact, the bit rate, processor power, and power examples are
also recited as limitations in dependent claims 5, 6, and 19 of the 037 Patent, and
thus, the interpretation of property should be broad enough to encompass at least
these limitations. See Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir.
2007) (independent claims are presumed to have broader scope than their
dependencies); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.
Cir. 2004).
test signal
The term test signal should be interpreted to mean a signal for obtaining
information used in determining the encoding format or parameters.
16
U.S. Patent 7,490,037
The 037 Patent does not define the term test signal, but describes that
the properties or the property parameters of the selected transmission and/or
storage and/or decoding devices are ascertained by one or more test signals
directed to the corresponding device and the encoding format is determined in
dependence on the properties of the processing device. EX1001 (037 Patent), at
2:1316; 1:5657. The 037 Patent also provides an example where a test signal
is used to establish the properties of the connected device, thus for example the bit
rate of the connected transmission channel, suitably to automatically select the
encoding format by means of the control device. Id. at 3:4043.
and/or
The term and/or should be interpreted to mean or. As the Board found
in Ex parte Gross, the phrase A and/or B is broad enough to be read as or, as it
covers embodiments having element A alone, element B alone, or elements A and
B taken together. Ex parte Gross, Appeal 2011-004811, 2013 WL 6907805, at *2
(P.T.A.B. Dec. 31, 2013).
VIII. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)(5), the following sections detail the grounds
of unpatentability, the limitations of the challenged claims of the 037 Patent, and
how these claims were therefore anticipated or obvious in view of the prior art.
17
U.S. Patent 7,490,037
In addition to the prior art references discussed in detail in the following
sections, the following references may also serve as grounds for unpatentability:
U.S. Patent 5,546,395 (filed on November 29, 1994, published on
August 13, 1996) (Sharma) (EX1008), which is prior art under 35
U.S.C. 102(a);
November 12, 1996) (Mirashrafi) (EX1009), which is prior art
under 35 U.S.C. 102(a);
March 30, 1999) (Spiess) (EX1010), which is prior art under 35
U.S.C. 102(e); and
International Telecommunication Union, ITU-T H.323 (November
1996) (H.323) (EX1011), which is prior art under 35 U.S.C.
102(a).
Petitioner does not include a detailed discussion of these references or grounds due
to the word limit of 37 C.F.R. 42.24(a)(1)(i).
A.
Ground I: Claims 14, 7, 9, 10, 17, 18, 21, 2325, 29, and 32 are
anticipated by Riddle
Each element of claims 14, 7, 9, 10, 17, 18, 21, 2325, 29, and 32 of the
037 Patent comes from a general teaching in Riddle or from the embodiment
18
U.S. Patent 7,490,037
illustrated in at least Figures 13, 5 and 6 of Riddle. Thus, the elements of the
claims of the 037 Patent come from the same embodiment of Riddle.
1.
Overview of Riddle
Riddle discloses a teleconferencing system developed by Apple Computer,
Inc. that manages the selection of an appropriate compression algorithm based on

the capabilities of the computers in the teleconference.
EX1003 (Riddle), at
Abstract. After a teleconference begins, a sender and a number of receivers in

a teleconference negotiate the best codec (a portmanteau of coder/decoder3 or
compressor/decompressor4) to use in the teleconference. Id. at 8:669:9. Figure 5
of Riddle illustrates the basic steps of that negotiation (red annotations added):
See EX1005 (Hinderks), at 1:3437.
See EX1003 (Riddle), at 7:711.
19
U.S. Patent 7,490,037
sender initiates
handshake
with receiver
sender receives list

of decompressors
from receiver
sender selects
best codec
sender stores
and uses
best codec
The sender starts the negotiation by (1) issuing a request to the recipients for
their available decompressors. EX1003 (Riddle), at 9:913, 19:14, Fig. 5. The
receivers each (2) send information back to the sender, and the sender evaluates
that information to determine the decompressors available to each of the receivers
in the teleconference. Id. at 9:913, 7:668:2, Fig. 5. The sender then (3) selects
the best codec for the teleconference and (4) stores and uses that codec to
compress sound and video it sends to the receivers during the teleconference. Id.
at 6:612, 8:24, 8:1316, 9:2028, Fig. 5.
20
U.S. Patent 7,490,037
2.
Claims 1 and 17 are anticipated by Riddle

Independent claims 1 and 17 of the 037 Patent recite essentially the same
invention. Claim 1 recites a method claim (A method of encoding signals) while

claim 17 recites an apparatus claim (Apparatus for encoding signals). Claim 1
further limits those signals to digitized audio signals in the preamble, while
claim 17 does not. Apart from this difference, claims 1 and 17 are substantively
identical. Therefore, Petitioner considers the patentability of claims 1 and 17
together for the purposes of this Petition, except where noted for that additional
limitation.
a)
A method of [/Apparatus for] encoding signals

Riddle discloses a teleconferencing network and a method for selecting the
best compression format to use between a sender and a receiver of the

teleconference.
Id. at Abstract, 6:7, 17:5960, 6:1928, 9:2324, Figs. 56.
Compression is a form of encoding, as it is a representation of the original signal in

a reduced-size form. EX1002 (Laub Declaration), at 26. The sender of Riddle
compresses and transmits compressed teleconference data to the receiver. EX1003
(Riddle), at 17:5865.
b)
in particular digitized audio signals (claim 1)

The teleconferencing applications of Riddle can send and receive sound,
video, and other data. Id. at 6:713. The sound or voice information received,
21
U.S. Patent 7,490,037
processed, and sent in Riddle is necessarily digitized because all of the
teleconference stations or terminals are or contain digital computers. Id. at 3:54
58, 6266, 4:1113, 5859.
Therefore, the compression and decompression
operations performed on audio signals at those teleconference stations or terminals,

id. at 7:711, require the audio signals to be digitized before those operations can
be performed. EX1002 (Laub Declaration), at 60; see also EX1015 (Pan), at 1.
c)
[providing] an encoding device for encoding a signal in an encoding

format
The Riddle sender compresses data signals, such as video and sound data,
according to a particular compression format. EX1003 (Riddle), at 1:5861, 6:19

28, Fig. 6. Compression is a form of encoding, as it is a representation of the
original signal in a reduced-size form. EX1002 (Laub Declaration), at 26.
d)
[providing] a processing device for processing the encoded signal

The receiver in Riddle includes a computer readable media, which stores
computer program instructions for various compressors and decompressors to be

run at the receiver.
EX1003 (Riddle), at 19:1518, Fig. 6.
The receiver
decompresses data received in the teleconference so that it can display the

uncompressed audio and video to a user. Id. at 17:5865.
e)
[providing] a control device for determining the encoding format

The sender of Riddle can automatically determine what compressors and
decompressors are available on each receiver in the teleconference. Id. at 1:4852,

22
U.S. Patent 7,490,037
7:658:16, 9:2028, 18:4044, Figs. 56. With this information, the sender can
select the best codec or compression format for transmitting data over the network
to the various receivers. Id. The automatic codec selector does that by eliminating
from this information the decompressors that are not available at the sender. Id.
The sender determines from the now-reduced list the best codec to use in the
teleconference. Id.
f)
wherein the encoding format corresponds to at least one property of the

processing device
The sender of Riddle transmits data to the receivers that is compressed
according to the best compressor (codec or compression format) available on the

sender for which there is a corresponding decompressor on each receiver
connected to the teleconferencing network. Id. at 8:1316, 9:2028, Figs. 56.
The best compressor is therefore based at least on the capabilities or parameters
of the receivers, i.e., the decompressors available at the receivers. Id. at 9:4043.
Riddle also discloses ranking available decompressors based on various parameters
of the receiver, such as the overall data rate of the decompressors. Id. at 7:17
36, 8:416.
g)
wherein the control device determines the encoding format by carrying

out at least following steps: transmitting a test signal to the processing
device
The sender of Riddle transmits a request to the receivers seeking the
decompression capabilities of those receivers for the purposes of determining the

23
U.S. Patent 7,490,037
encoding format or parameters. Id. at 9:10, 19:14, Figs. 56. This request is
illustrated in Figure 6 as message 614 (red annotations added):
test signal
h)
wherein the test signal is transmitted by a test signal generator of the

control device
The sender of Riddle includes requesting code stored in the computer
readable media for identifying the decompression capabilities and parameters of

the receivers. Id. at 18:4448. This requesting code is illustrated in Figure 6 as
element 607 of the sender, which generates and transmits message 614 (red
annotations added):
24
U.S. Patent 7,490,037
Id. at 19:14, Fig. 6.

i)
detecting at least one property of the processing device

After the sender requests decompression capabilities of the receivers, the
receivers provide a list of decompressors available at each receiver to the sender.

Id. at 9:913, Fig. 5. The receivers do this by a responsive message, illustrated in
Figure 6 as message 611 (red annotations added):
25
U.S. Patent 7,490,037
response to
test signal
Id. at 18:6466, Fig. 6. The sender receives message 611 and processes the
message to determine the capabilities of the receivers, i.e., the decompressors
available at the receivers. Id. at 19:5920:3.
3.
Claim 2 is anticipated by Riddle

wherein the processing device includes at least one of a transmitting
device for transmission of the encoded signal and a storage device for
storage of the encoded signal and a decoding device for decoding of the
encoded signal
First, a Riddle receiver can become a sender or a sending system for
further transmission of the compressed data previously sent to it by the sender,

either in the same teleconference or a different teleconference. Id. at 4:311, 37
26
38, 18:5456; 19:1718, 2852, Figs. 1, 6.
U.S. Patent 7,490,037
Second, the receiver includes a
computer readable medium, such as RAM, read only memory, a mass storage
device, or other internal or external storage devices such as magnetic discs or other
media. Id. at 17:3945, 5758, Fig. 6. Third, the receiver decompresses the
compressed code received from the sender. Id. at 17:6164.
4.
a)
wherein the processing device is a transmission device for transmission

of the encoded signal
For the same reasons discussed in Section VIII(A)(3), Riddle discloses this
limitation.
b)
wherein the transmission device is used for simultaneously transmitting

and receiving the encoded signal
Riddle discloses that the receiver may send audio and video teleconference
data. Id. at 19:1819, 19:2852, 20:913. The receiver stores a list of compressors
available at the sender for exactly this purpose. Id. at 19:2834, Fig. 6. The
receiver simultaneously transmits and receives the encoded signal originally
received from the sender either (1) because the receiver and sender are also
operating as sender and receiver in a bidirectional conference as shown in Fig. 6 or
(2) because the receiver is also operating as a relay between two networks, as with
system 33 in Fig. 1. Id. at 4:311, 3738, Fig. 1.
27
U.S. Patent 7,490,037
5.
a)
wherein the processing device is a transmitting device for transmission of

the encoded signal
limitation.
b)
wherein the transmission device has a decoding device for simultaneous

decoding upon the reception of an encoded signal
The receiver of Riddle receive[s] compressed teleconference data and
decompresses it to display the received uncompressed data to a user. Id. at

17:6165.
The receiver simultaneously decodes the compressed data upon
receiving it either (1) because the receiver and sender are also operating as sender
and receiver in a bidirectional conference as shown in Fig. 6 or (2) because the
receiver is also operating as a relay between two networks, as with system 33 in
Fig. 1. Id. at 4:311, 3738, Fig. 1.
6.

wherein the at least one property of the processing device is called up out
of a storage means prior to encoding
After the sender determines the best codec to use in the teleconference, the
sender stores the selected codec where other routines in the sender can find the
codec. Id. at 9:2028, Fig. 6. Those routines then find the selected codec and
begin compressing the data according to that codec. Id.
28
U.S. Patent 7,490,037
7.

wherein the signal is digitized prior to the encoding operation
For the same reasons discussed in Section VIII(A)(2)(b), Riddle discloses
this limitation.
8.

wherein the signal is encoded in a bit rate-reduced encoding format
The sender of Riddle compresses teleconference data before sending the data
to a receiver. Id. at 20:37, 9:2028. Riddle does this for a number of reasons,
including bandwidth limitations in the networking or communication medium, or
the information rate. Id. at 1:711. Compression algorithms as used in Riddle
reduce the bit rate of the signal, so the compressed signal is necessarily encoded in
a bit rate-reduced format. EX1002 (Laub Declaration), at 61.
9.
a)
wherein, a transmission device is connected to the control device as a

processing device for transmission of the signals to a receiver
The receiver of Riddle is connected to the control device of the sender at
least by the exchange of signals 614 and 611 along the transmission channel
comprising communication ports 610 and 620. EX1003 (Riddle), at 18:5719:14;
see also id. at 2:618, 3:3045, Figs. 2, 3.
For the same reasons discussed in Section VIII(A)(4)(b), Riddle discloses
the remainder of this limitation.
29
b)
U.S. Patent 7,490,037
wherein the encoding format corresponds to the properties of the
transmission device
For the same reasons discussed in Section VIII(A)(2)(f), Riddle discloses
this limitation.
10.
a)
having a decoding device connected to the control device, as a processing

device, for decoding of the signals
The receiver of Riddle decompresses the compressed signal received from
the sender. Id. at 17:6164. The receiver is connected to the control device of the
sender at least by the exchange of signals 614 and 611 along the transmission
channel comprising communication ports 610 and 620. Id. at 18:5719:14; see
also id. at 2:618, 3:3045, Figs. 2, 3.
b)

decoding device
For the same reasons discussed in Section VIII(A)(2)(f), Riddle discloses
this limitation.
11.

wherein a display/input device is connected to the control device
The computing systems of Riddle (i.e., sender and receiver) include display
and input devices, such as a keyboard, cursor control, video input device, sound
input device, and a microphone. Id. at 5:3146.
30
U.S. Patent 7,490,037
12.
a)
wherein a storage unit is connected to the control device

The sender of Riddle includes a computer readable medium, which can be a
main memory, such as RAM, read only memory, a mass storage device, or other
internal or external storage devices such as magnetic discs or other media. Id. at
17:3945, 5758, Fig. 6.
b)
and in which at least one encoding format is stored

limitation.
13.

wherein the storage unit stores the properties of the processing device
and the encoding formats corresponding to the at least one property of the
processing device
After the sender determines the best codec to use in the teleconference, the
sender stores the selected codec where other routines in the sender can find the
codec for further processing of the teleconference data. Id. at 9:2028, Fig. 6. A
POSA at the critical date would know that the sender of Riddle also necessarily
stores other capabilities or parameters of the sender because at least some of the
decompressors available at the sender can be scaled or otherwise set to recover
compressed content transmitted at one or another bit rate compatible with the
current receiver. EX1002 (Laub Declaration), at 62. A POSA at the critical date
31
U.S. Patent 7,490,037
would also know that at least some compressors can also perform variable-bit-rate
encoding depending on whether the receiver can do variable-bit-rate decoding. Id.
at 29. The negotiation of Riddle would necessarily resolve these capabilities or
parameters, so those too would be stored with the selected codec in memory. Id. at
62.
14.

wherein the signal which is to be transmitted with the transmission device
and/or stored with the storage device and/or which is received from the
transmission device can be listened to in a listening device
Riddle discloses that a sound output device, such as one or more loud
speakers, can be connected to a computer system. EX1003 (Riddle), at 5:3840.

The computer system of Riddle is sending and receiving teleconference data, such
as sound, that is played through those speakers. Id. at 6:613.
15.

wherein the control device can be operated either cable-less or via a
cabled interface
The automatic codec selector of the sender in Riddle is part of the code run
by the processor of Riddle. Id. at 7:658:6, 9:2028, 19:1518, 17:6518:1, Figs.

3, 6. The processor of Riddle is connected to a bus, which is connected to a
display 321, video monitor, keyboard, mouse, and other peripherals. Id. at 5:31
49. Therefore, the processor of Riddle, and thus the automatic codec selector of
32
U.S. Patent 7,490,037
Riddle, can be operated by these interfaces, which are necessarily either cabled or
cable-less. EX1002 (Laub Declaration), at 63.
B.
Ground II: Claims 5, 6, 1114, 19, 20, and 22 are obvious over Riddle
1.
Claim 5 is obvious over Riddle

wherein the encoding format corresponds to the processor power of the
processing device so that the encoding format is determined in such a way
that it is processed by the processing device in real time 5
A POSA would know at the critical date that a system intended to send
audio between stations continuously in real time must necessarily use an encoding
format for which all necessary computation for decompression and input/output
control can be done continuously by the specific processor used in the receiver.
EX1002 (Laub Declaration), at 78. Otherwise, there may be interruptions in or
losses of the audio stream. Id. A POSA would thus be motivated to modify Riddle
to negotiate compression algorithms that would enable the processor to keep up
continuously with the decoding work.
Id.
This combination would simply
augment the broadly described compression capabilities in Riddle with a specific

compressor that permits real-time operation with a specific processor. Id.
Claim 5 recites the processor power without giving any reasonable scope as to
what that term means in claim 1, from which it depends.
33
U.S. Patent 7,490,037
2.
a)

of the encoded signal 6
For the same reasons discussed in Section VIII(A)(3), Riddle teaches or
suggests this limitation.

b)
wherein the encoding format corresponds to the power of the

transmission device so that the transmission device can affect transmission
in real time
control can be done continuously by the specific transmission device used in the
receiver.
EX1002 (Laub Declaration), at 78.
interruptions in or losses of the audio stream.
Id.
Otherwise, there may be

A POSA would thus be
motivated to modify Riddle to negotiate compression algorithms that would enable

the transmission device to keep up continuously with the decoding work. Id. This
combination would simply augment the broadly described compression capabilities
Claim 6 recites the power of the transmission device without giving any
reasonable scope as to what that term means in claim 1 or 5, from which it

depends.
34
U.S. Patent 7,490,037
in Riddle with a specific compressor that permits real-time operation with a
specific transmission device. Id.
3.
a)
wherein the signal is a digitized audio signal

For the same reasons discussed in Section VIII(A)(2)(b), Riddle teaches or

b)
the signal is source-encoded having regard to psycho-acoustic

phenomena
Riddle
discloses
specific
commercial
codecs
available
for
the
teleconferencing system of Riddle, including H.261, RPZA, or JPEG. EX1003

(Riddle), at 9:5456. The H.261, RPZA, and JPEG codecs are encoding formats
that rely on models of the human visual process to determine how to compress or
bit rate-reduce image data with minimal visible distortion.
EX1002 (Laub
Declaration), at 79. The H.261 encoding format includes processes for delaying
the video encoder and decoder and takes into account audio delay compensation as
part of its overall video delay, which needs to be established from a user
perception point of view under typical viewing conditions. EX1028 (H.261), at
23.
To the extent one could argue that Riddle does not disclose this limitation,
this limitation was well known at the critical date.
See EX1002 (Laub
Declaration), at 25, 28, 29. It therefore would be obvious to a POSA at the

35
U.S. Patent 7,490,037
critical date to modify the teleconference system of Riddle to source-encode the
signal having regard to psychoacoustic phenomena. Id. at 79. A POSA would
also be motivated to modify Riddle accordingly. Id.
4.
a)
wherein transmission and/or storage devices of varying capacity are

available as processing devices
Because each network in Riddle may have different bandwidth availability,
different codecs for each network may be appropriate. EX1003 (Riddle), at 7:50
52.
b)
and prior to transmission and/or storage of the signals, in the case of

signals of higher quality, that is to say with a larger amount of data, a
transmission device and/or storage device of larger capacity is selected and
in the transmission and/or storage of signals of lower quality, that is to say
with a smaller quantity of data, a transmission device and/or storage
device of smaller capacity is selected
Riddle discloses that the best codec is the senders codec that provides the
greatest data rate, yet is decompressible at all receivers. Id. at 7:2628. Riddle
also discloses that changes in the teleconferencing network, such as the loss of a
transmission channel or bus, may require switching to a transmission medium with
a different data bandwidth capacity. Id. at 11:35.
this limitation was well known at the critical date. For example, Plenge encodes a
digital audio signal based at least on available data rate for transmitting and/or
36
U.S. Patent 7,490,037
storing the audio signal and therefore reduces the amount of data needed for that
signal. EX1016 (Plenge), at Abstract; see also EX1029 (Stewart), at 3:5467. It
therefore would be obvious to a POSA at the critical date to modify the
teleconference system of Riddle to select transmission channels or busses based on
the bit rate needed to send a signal of varying quality.
EX1002 (Laub
A POSA would also be motivated to modify Riddle
accordingly. Id.
5.
a)
wherein the signals to be sent are audio signals

The teleconferencing applications of Riddle can send and receive sound,
video, and other data. EX1003 (Riddle), at 6:713.

b)
wherein the audio signals are encoded in bit rate-reduced form by the
encoding device
For the same reasons discussed in Section VIII(A)(8), Riddle teaches or

c)
wherein a plurality of transmission channels and/or bit rates are

available for transmission of the signal
The Riddle sender and receiver can communicate over an interface, such as
an Ethernet adapter, token ring adapter, card, or an RS-232 interface for connection
to a modem. Id. at 4:5157. A POSA at the critical date would know that each of
these necessarily has its own characteristic bit rate, ranging from, e.g., 56,000 bits
37
U.S. Patent 7,490,037
per second for a typical modem to tens of millions of bits per second for the
Ethernet and token ring interfaces. EX1002 (Laub Declaration), at 29.
d)
wherein the transmission channel and/or the bit rate in the transmission
are so selected that the signal can be transmitted in real time
The sender of Riddle can automatically determine what compressors and
decompressors are available on each receiver in the teleconference.

(Riddle), at 1:4852, 5861, 7:658:16, 18:4044, Figs. 56.
EX1003
With this
information, the sender can select the best codec or compression format for
transmitting data over the network. Id. The sender then compresses the data, such
as sound or video data, according to the best compression algorithm selected. Id.
at 6:1928, 9:2325.
this limitation was well known at the critical date. For example, a POSA would
know that the best compression algorithm would necessarily be selected to keep
the bit rate of the encoded signal within the bandwidth of the transmission channel
so that the signal could be transmitted from the sender to the receiver in Riddle in
real time. EX1002 (Laub Declaration), at 81. Given that the limitation was well
known, it would be obvious to a POSA at the critical date to modify the
teleconference system of Riddle to select the transmission channel or the bit rate so
that the signal can be transmitted in real time. Id. A POSA would also be
motivated to modify Riddle accordingly. Id.
38
U.S. Patent 7,490,037
6.

wherein a fixedly preset computing power is adopted for operation in real
time
For the same reasons discussed in Section VIII(B)(1), Riddle teaches or

7.

wherein the encoding format corresponds to the bit rate of the
transmission device
The sender of Riddle compresses teleconference data before sending it to a
receiver. EX1003 (Riddle), at 20:37, 9:2028. Riddle does this for a number of
reasons, including bandwidth limitations in the networking or communication
medium, or the information rate. Id. at 1:711. A POSA would know at the
critical date that the negotiated codec must necessarily correspond to the bit rate of
the transmission device because it would need to keep the bit rate of the encoded
signal at or below the bit rate of the transmission device so there would be no
interruptions or losses of signal. EX1002 (Laub Declaration), at 82.
8.
a)
having a storage device connected to the control device, as a processing

device, for storage of the signals
The receiver of Riddle includes a computer readable medium, such as RAM,
read only memory, a mass storage device, or other internal or external storage
devices such as magnetic discs or other media. EX1003 (Riddle), at 17:3945, 57
39
U.S. Patent 7,490,037
58, Fig. 6. The storage device of the receiver is connected to the control device of
the sender, at least by the exchange of signals 614 and 611 along the transmission
channel comprising communication ports 610 and 620. Id. at 18:57 - 19:14; see
also id. at 2:618, 3:3045, Figs. 2, 3. Further, the receivers storage device of
Riddle stores the data sent by the sender at least temporarily in read only memory
306 or at the very least the processors cache, as is necessary to decompress the
received compressed signal. EX1002 (Laub Declaration), at 65.
b)

storage device
The negotiated best compressor used in Riddle is based at least on the
capabilities of the receivers, i.e., the decompressors available at the receivers.

EX1003 (Riddle), at 8:1316, 9:2028, 19:5920:3, Figs. 56. Also, a POSA at
the critical date would know that the best compressor must necessarily
correspond to the capabilities or parameters of the storage device of the receiver
because the bit rate or the total volume of bits in the signal to be transmitted must
be kept low enough to fit within the capabilities of the storage device. EX1002
(Laub Declaration), at 82.
9.

wherein the test signal is an encoded audio signal
Riddle discusses that it was known in the art to take a hit-and-miss
approach to codec negotiation whereby a sender preselects a codec and sends

40
U.S. Patent 7,490,037
encoded data to a receiver hoping that the selected codec is compatible. EX1003
(Riddle), at 1:2345. If the receiver has problems decoding the data, the receiver
sends a message to the sender requesting that it switch to a different codec. Id. at
1:3143. This knowledge in the art is supported by other references. See EX1017
(Barrett), at 1:602:12, 2:2952 (an encryption system that sends an encrypted
signal, the receiver attempts to decrypt the signal, and if the receiver cannot
decrypt the signal, sending a message to change the decryption method).
It therefore would be obvious to a POSA at the critical date to modify the
teleconference system of Riddle to send a test signal that is an encoded audio
signal. EX1002 (Laub Declaration), at 83. A POSA would also be motivated to
modify Riddle accordingly. Id.
C.
Ground III: Claims 1, 2, 411 and 1332 are obvious over Norris in
view of Hinderks, Yabusaki, and Menezes
1.
Overview of Norris
Norris discloses a scheme developed by Intel Corporation for transferring
data among computers connected to a network. EX1004 (Norris), at 1:1317,

1:632:5.
Each computer system maintains a number of compression and
decompression processes, as well as computer routines called OPEN, WRITE, and

READ. Id. at 2:612. The sender computer uses the OPEN and WRITE routines,
while the receiver computer uses the READ routines in a transfer of data. Id. at
2:1223. Figure 6 of Norris illustrates the overall flow of each of these routines:
41
U.S. Patent 7,490,037
The OPEN routine finds a communication route between the sender and
receiver, establishes a connection between them, and automatically negotiate[s] a
compression method to be used by them. Id. at 2:1217, 5:714. The sender and
receiver then both log the negotiated compression method in memory for later use.
Id. at 2:3538. The WRITE routine invokes the negotiated compression method,
compresses the data to be sent, and sends the compressed data from the sender to
the receiver. Id. at 2:1722. The READ routine receives the compressed data at
the receiver computer, invokes the negotiated decompression method, and
decompresses the data received from the sender. Id. at 2:2227.
42
U.S. Patent 7,490,037
2.
Overview of Hinderks
Hinderks discloses an adjustable psychoacoustic audio codec for
compression and decompression of audio signals sent over a data network.

EX1005 (Hinderks), at Abstract, 1:1921, 1:662:4, 2:1921.
The codec has
various parameters that a user can adjust and optimize for a given application,
transmission medium, or user preference.
Id. at Abstract, 1:2227, 5:2430.
When a user changes these parameters, the codec adjusts in real time without
interruption of the compressed signal. Id. at Abstract. These codec parameters
can also be transmitted to remote systems for further use. Id. at Abstract, 16:39
49.
3.
Overview of Yabusaki
Yabusaki discloses a radio communication system that eliminates the need
for multiple encoding/decoding operations in the network. EX1006 (Yabusaki), at

1:1114, 1:2124, 2:6667. Yabusaki does this by a middleman exchange station
with (1) a number of codecs for converting voice coding systems, (2) a selector for
switching each of the codecs based on the characteristics of the destination of the
radio signal, and (3) a control line for controlling the selector. Id. at 2:2740. The
general setup of the Yabusaki communication system is illustrated in Figure 1:
43
U.S. Patent 7,490,037
4.
Overview of Menezes
Menezes discloses a method developed by Microsoft Corporation for making
data transfer in a computer network more efficient.

Abstract.
EX1007 (Menezes), at
In Menezes, two or more computers in a network exchange data
processing capabilities to identify the most efficient data format to communicate

among them. Id. When a first computer wants to receiver a data file from a
second computer, the first computer sends a list of capabilities to the second
computer. Id. The second computer then compares those capabilities to its own
capabilities and determines the most efficient data format for the transfer. Id. The
second computer can store that data format in memory for future communications.
Id. The second computer can also forward those capabilities to a third computer
for additional communications between the first and third computers. Id.
44
5.
U.S. Patent 7,490,037
Claims 1 and 17 are obvious over Norris in view of Hinderks
For the same reason as above with Riddle, Petitioner considers the
patentability of claims 1 and 17 together for the purposes of this Petition, except
where noted for the additional limitation in claim 1.
a)
A method of [/Apparatus for] encoding signals

Norris discloses a scheme for compressing and transferring compressed data
among the computers connected to a computer network. EX1004 (Norris), at

1:1317, 6365, 2:1727, 3:46. Compression is a form of encoding, as it is a
representation of the original signal in a reduced-size form.
EX1002 (Laub
To the extent one could argue that Norris does not disclose signals, this
limitation was well known at the critical date. For example, Hinderks discloses a
data compression method and codec for compressing digitized audio signals.
EX1005 (Hinderks), at 19:34, 6-15, 20:416, 21:6522:3. Therefore, it would be
obvious to a POSA at the critical date to modify the data compression methods of
Norris to also compress and transmit signals. EX1002 (Laub Declaration), at 84.
A POSA would look to both Norris and Hinderks as related art in a known, limited
field of data compression methods. Id. And a POSA would be motivated to
modify Norris accordingly. Id.
45
U.S. Patent 7,490,037
b)
in particular digitized audio signals (claim 1)

Norris transfers compressed data among computers connected to a computer
network. EX1004 (Norris), at 1:1317, 6365, 3:46. A POSA at the critical date
would understand that data referred to in Norris includes digitized audio signals.
To the extent one could argue that Norris does not disclose this limitation,
For example, Hinderks
discloses a data compression method and codec for compressing digitized audio
signals. EX1005 (Hinderks), at 19:34, 6-15, 20:416, 21:6522:3. Therefore, it
would be obvious to a POSA at the critical date to modify the data compression
methods of Norris to also compress digitized audio signals.
EX1002 (Laub
Declaration), at 84. A POSA would look to both Norris and Hinderks as related
art in a known, limited field of data compression methods. Id. And a POSA would
be motivated to modify Norris accordingly. Id.
c)
[providing] an encoding device for encoding a signal in an encoding

format
The sender of Norris compresses data based on a compression format
negotiated with the receiver and sends the compressed data to the receiver.
EX1004 (Norris), at 2:1227, 3:674:4.
46
d)
U.S. Patent 7,490,037
[providing] a processing device for processing the encoded signal
The receiver of Norris can initiate a READ routine, which calls an
appropriate data decompression format to decompress data from the sender. Id. at
6:59.
e)
[providing] a control device for determining the encoding format

The sender of Norris is a computer systema control devicethat
determines a compression method for exchanging data with the receiver by way of
an OPEN routine. Id. at 5:39, 1315, 2628.
f)

processing device
When the sender of Norris negotiates a compression technique with the
receiver, the receiver sends the sender a message listing the compression
techniques understood by the receiver, preferably in order of priority or preference.
Id. at 5:2131. Therefore, the negotiated compression technique of Norris is based
on a capability or parameter of the receiver.
g)
wherein the control device determines the encoding format by carrying

out at least following steps:
The sender of Norris initiates an OPEN routine to negotiate a compression
method with a receiver, and from that negotiation, determines the negotiated
compression method to compress the data. Id. at 5:1315, 2628.
47
h)
U.S. Patent 7,490,037
transmitting a test signal to the processing device
When the sender of Norris executes an OPEN routine, the OPEN routine
sends a message to the compression socket interface of the receiver through a

network. Id. at 5:1418. The message contains a list of compression techniques
available at the sender, preferably in order of priority or preference. Id. at 5:1322,
Figs. 67. That initiates a responsive message from the receiver, which contains a
list of compression techniques available at the receiver, preferably in order of
priority or preference. Id. at 5:2128. Thus, the OPEN routine message to the
receiver is sent for the purpose of obtaining information from the receiver used in
determining the negotiated encoding format or parameters.
i)
wherein the test signal is transmitted by a test signal generator of the

control device
The OPEN routine of the sender in Norris generates and sends a message to
the receiver for the purpose of obtaining information from the receiver used in
determining the negotiated encoding format and parameters. Id. at 5:37, 1322,
Figs. 67.
j)
detecting at least one property of the processing device

After the receiver of Norris receives the OPEN routine-generated message
from the sender, the receiver replies with its own message. Id. at 5:2123. That
message contains a list of data compression techniques understood by the receiver,
preferably in order of priority or preference. Id. at 5:2326. The sender processes
48
U.S. Patent 7,490,037
this message to determine the negotiated compression method based on the
compression and decompression capabilities of the receiver. Id. at 5:2128, Figs.
67.
6.
Claim 2 is obvious over Norris in view of Hinderks

wherein the processing device includes at least one of a transmitting
device for transmission of the encoded signal and a storage device for
storage of the encoded signal and a decoding device for decoding of the
encoded signal
The receiver of Norris includes a CPU, memory, an input/output (I/O)
module, a number of input/output devices, and a number of storage devices. Id. at

3:4652.
The receiver uses that memory and storage to log the negotiated
compression method for later use. Id. at 2:3538. The receiver also utilizes the
READ routine to decompress the data received from the sender. Id. at 2:2227.
7.
Claim 4 is obvious over Norris in view of Hinderks and Yabusaki
a)

the encoded signal
Norris discloses that the receiver includes an input/output (I/O) module and
a number of input/output devices.
Id. at 3:4652.
Similarly, the Yabusaki
exchange stations receive an encoded signal, processes the encoded signal, and
transmit the signal to a radio terminal. EX1006 (Yabusaki), at 2:2740, 4:1214,
2230, 4:535:14, 5564, Fig. 2; see also Fig. 3 (communication between
exchange station 42 and radio terminal 22 (destination side)).
49
U.S. Patent 7,490,037
It would be obvious to a POSA at the critical date to modify the compression
methods of Norris to add the feature that a receiver could further transmit the
encoded signal. EX1002 (Laub Declaration), at 90. A POSA would look to both
Norris and Yabusaki as related art in a known, limited field of encoding and
encoding selection methods. Id. And a POSA would be motivated to modify
Norris accordingly to provide a more distributed network of receiving devices. Id.
b)

The exchange stations of Yabusaki include decoding devices.
EX1006
(Yabusaki), at 3:1015, 4:1214. When the exchange stations of Yabusaki receive

an encoded signal, the exchange stations decode the signal and then pass the signal
to its destination. Id. at 2:2740, 4:1214, 2230, 4:535:14, 5564, Figs. 23.
8.

wherein the encoding format corresponds to the processor power of the
processing device so that the encoding format is determined in such a way
that it is processed by the processing device in real time
Norris discloses that the compression method negotiated between the sender
and receiver is the compression method with the highest sender priority understood
by the receiver. EX1004 (Norris), at 5:4548, 5:576:1. Hinderks discloses that a
compression unit performs a compression in real time and a decompression unit
performs a decompression in real time. EX1005 (Hinderks), at 34:1821.
50
U.S. Patent 7,490,037
losses of the audio stream. Id. A POSA would thus be motivated to combine
Norris with Hinderks to provide the scalable and settable audio codec of Hinderks
and to choose parameter settings for that codec that would enable the processor to
keep up continuously with the decoding work. Id. at 72, 85. This combination
would simply augment the broadly described compression capabilities in Norris
with a specific compressor that would permit real-time operation with a specific
processor. Id.
9.
a)

of the encoded signal
For the same reasons discussed in Section VIII(C)(7)(a), the combination of
Norris, Hinderks, and Yabusaki teaches or suggests this limitation.

b)
wherein the encoding format corresponds to the power of the

transmission device so that the transmission device can affect transmission
in real time
Norris teaches that it is desirable if data can be automatically transferred
among computer systems in a network or across networks in a compressed manner.

51
EX1004 (Norris), at 1:5356.
U.S. Patent 7,490,037
Moreover, the compression method negotiated
between the sender and receiver is the compression method with the highest sender
priority understood by the receiver. Id. at 5:4548, 5:576:1. Hinderks discloses
that a compression unit performs a compression in real time and a decompression
unit performs a decompression in real time. EX1005 (Hinderks), at 34:1821.
control can be done continuously by the specific transmission device used in the
receiver.
interruptions in or losses of the audio stream.
Id.
Otherwise, there may be

A POSA would thus be
motivated to combine Norris with Hinderks to provide the scalable and settable
audio codec of Hinderks and to choose parameter settings for that codec that would
enable the transmission device to keep up continuously with the decoding work.
Id. at 72, 85. This combination would simply augment the broadly described
compression capabilities in Norris with a specific compressor that would permit
real-time operation with a specific transmission device. Id.
52
U.S. Patent 7,490,037
10.

wherein the at least one property of the processing device is called up out
of a storage means prior to encoding
When the sender of Norris wants to send data to a receiver, the sender
invokes the WRITE routine, which first determines from memory (a routing table)
if a compression method was previously negotiated between the sender and
receiver. EX1004 (Norris), at 5:5355. If the sender and receiver did successfully
negotiate a compression method, then the WRITE routine calls up the negotiated
compression method to compress the data to be sent. Id. at 5:5560.
11.

wherein, prior to encoding of the signal, by a display/input device, the
user of the encoding device is asked to do at least one of: preset the
desired encoding format and preset the at least one property of the selected
processing device, and encoding is affected in accordance with the
presetting
The adjustable audio codec of Hinderks has a user interface to control and
program the codec through the use of a graphics display on a front panel of a
personal computer. EX1005 (Hinderks), at 3:5051, 4:3543. Once the user of
Hinderks adjusts the parameters of the codec, the codec adjusts in real time
without interruption of the compressed signal. Id. at Abstract. Thereafter, the
codec compresses the digital audio signal in accordance with the parameters set by
the user. Id. at 15:3134, 4351. Further, it would be obvious to a POSA at the
53
U.S. Patent 7,490,037
critical date to modify the user-adjustable codec system of Hinderks to ask the
user to adjust the codec before encoding. EX1002 (Laub Declaration), at 85.
Thus, it would be obvious to a POSA at the critical date to modify the
compression methods of Norris to add a prompt to and the ability for a user to
preset the desired encoding format. Id. And a POSA would be motivated to
modify Norris accordingly to provide for a more robust and flexible codec
selection process. Id.
12.

wherein the signal is digitized prior to the encoding operation
Norris discloses a scheme for transferring compressed data among the
computers connected to a computer network. EX1004 (Norris), at 1:1317, 1:63

65, 3:46. A POSA at the critical date would understand that data referred to in
Norris includes digitized signals. EX1002 (Laub Declaration), at 68.
discloses a data compression method and codec for compressing digitized audio
signals. EX1005 (Hinderks), at 19:34, 19:615, 20:416, 21:6522:3. Therefore,
it would be obvious to a POSA at the critical date to modify the data compression
methods of Norris to also compress digitized audio signals.
54
EX1002 (Laub
U.S. Patent 7,490,037
Declaration), at 67, 68. A POSA would also be motivated to modify Norris
accordingly. Id.
13.

wherein the signal is encoded in a bit rate-reduced encoding format
Norris teaches that overall bandwidth of a network can be increased by
transmitting compressed data. EX1004 (Norris), at 1:3334. A POSA at the

critical date would understand that the compression methods referred to in Norris
for increasing overall bandwidth of a network includes bit rate-reduced encoding
formats, such as mp3. EX1002 (Laub Declaration), at 69, 86.
discloses a codec that applies a compression technique to the bit stream for
reducing the number of bits required to successfully transmit an audio signal.
EX1005 (Hinderks), at 1:5257. Therefore, it would be obvious to a POSA at the
critical date to modify the data compression methods of Norris to also include a bit
rate-reduced encoding format. EX1002 (Laub Declaration), at 86. A POSA
would also be motivated to modify Norris accordingly. Id.
55
U.S. Patent 7,490,037
14.

wherein the signal is a digitized audio signal and the signal is sourceencoded having regard to psycho-acoustic phenomena
Hinderks discloses a data compression method and codec for compressing
digitized audio signals. EX1005 (Hinderks), at 19:34, 6-15, 20:416, 21:6522:3.

The adjustable codec of Hinderks compresses and audio signals based on a
psycho-acoustic compression system. Id. at Abstract, 1:662:4, 2:1921.
Therefore, it would be obvious to a POSA at the critical date to modify the
compression methods of Norris to also compress digitized audio signals with
regard to psycho-acoustic phenomena. EX1002 (Laub Declaration), at 84. And
a POSA would be motivated to modify Norris accordingly to provide for a more
robust and flexible codec selection process. Id.
15.
a)
wherein the signals to be sent are audio signals, wherein the audio
signals are encoded in bit rate-reduced form by the encoding device
For the same reasons discussed in Sections VIII(C)(5)(b) and VIII(C)(13),
the combination of Norris and Hinderks teaches or suggests this limitation.

b)
wherein a plurality of transmission channels and/or bit rates are

available for transmission of the signal and wherein the transmission
channel and/or the bit rate in the transmission are so selected that the
signal can be transmitted in real time
Norris teaches that the overall effective bandwidth of a network can be
increased by transmitting compressed data. EX1004 (Norris), at 1:3334. A
56
U.S. Patent 7,490,037
POSA at the critical date would understand that the compression methods referred
to in Norris for increasing overall effective bandwidth of a network includes bit
rate-reduced encoding formats, such as mp3.
EX1002 (Laub Declaration), at
69, 86.
reducing the number of bits required to successfully transmit an audio signal.
EX1005 (Hinderks), at 1:5257. Moreover, the user of Hinderks has control over
the settings of the audio codec in real time. Id. at 14:2021. Therefore, it would
be obvious to a POSA at the critical date to modify the data compression methods
of Norris to also include a user-selected real-time bit rate-reduced encoding
format.
EX1002 (Laub Declaration), at 85, 86.
A POSA would also be
motivated to modify Norris accordingly. Id.

16.

time
For the same reasons discussed in Section VIII(C)(8), the combination of
Norris and Hinderks teaches or suggests this limitation.
57
17.
a)
U.S. Patent 7,490,037
the encoded signal

b)

For the same reasons discussed in Section VIII(C)(7)(b), the combination of

c)

time
For the same reasons discussed in Section VIII(C)(8), the combination of

d)
and wherein with simultaneous transmission and reception in real time the
encoding formats of the encoding and decoding devices are selected in
accordance with the predetermined computing power
Norris discloses a method and apparatus for automatically transferring data
between a plurality of computer systems in a network or across networks in a

compressed manner. EX1004 (Norris), at 3:46. Norris further discloses that the
negotiated compression method between the sender and receiver computer
systems is the compression method with the highest sender priority understood by
the receiver. Id. at 5:4547, 5:576:1. Hinderks discloses that a compression unit
58
U.S. Patent 7,490,037
performs a compression in real time and a decompression unit performs a
decompression in real time. EX1005 (Hinderks), at 34:1821.
losses of the audio stream. Id. A POSA would thus be motivated to combine
Norris with Hinderks to provide the scalable and settable audio codec of Hinderks
and to choose parameter settings for that codec that would enable the processor to
keep up continuously with the decoding work. Id. at 72, 85. This combination
would simply augment the broadly described compression capabilities in Norris
with a specific compressor that would permit real-time operation with a specific
processor. Id.
18.

wherein presetting in respect of the distribution of the computing power
and thus the choice of the encoding format in regard to a preference for
the encoding device or the decoding device or parity of the two is affected
by an input device
Hinderks discloses an audio codec that has a user interface to control and
program it through the use of a graphics display on a front panel of a personal

computer. EX1005 (Hinderks), at 4:3543. A user using the audio codec can
59
U.S. Patent 7,490,037
select one of several stored audio compression techniques. Id. at 4:18-21; see also
id. at 3:5051.
A POSA would be motivated to combine Norris with Hinderks in order to
allow a user to manually to select a particular codec from the capabilities of the
sender and receiver. EX1002 (Laub Declaration), at 85.
19.
a)
wherein, a transmission device is connected to the control device as a

processing device for transmission of the signals to a receiver
In Norris, the storage devices of the receiver are connected to the control
device of the sender because the sending device and its components are connected
to the receiving device and its components through a network. Id. at 1:1317,
3:2936, 4162.
Norris, Hinderks, and Yabusaki teaches or suggests the remainder of this limitation.
b)
wherein the encoding format corresponds to the properties of the

transmission device
For the same reasons discussed in Section VIII(C)(5)(f), the combination of
60
U.S. Patent 7,490,037
20.

wherein the encoding format corresponds to the bit rate of the
transmission device
Norris teaches that overall effective bandwidth of a network can be
increased by transmitting compressed data. Id. at 1:3334. A POSA at the critical

date would understand that the compression methods referred to in Norris for
increasing overall effective bandwidth of a network include encoding formats
corresponding to a bit rate, such as mp3. EX1002 (Laub Declaration), at 69, 86.
reducing the number of bits required to successfully transmit an audio signal at a
certain bit rate. EX1005 (Hinderks), at 1:5257. Hinderks also discloses encoding
formats which can be scaled or set to correspond to available bit rate of whatever
transmission channel is currently in use. Id. at 1:2837, 4:47, 14-17, 5:1923.
Therefore, it would be obvious to a POSA at the critical date to modify the data
compression methods of Norris to also include a bit rate-based encoding format.
EX1002 (Laub Declaration), at 86. A POSA would also be motivated to modify
Norris accordingly. Id.
61
U.S. Patent 7,490,037
21.
a)
having a storage device connected to the control device, as a processing

device, for storage of the signals
The receiver of Norris includes a CPU, memory, an input/output (I/O)
module, a number of input/output devices, and a number of storage devices.

EX1004 (Norris), at 3:4652. The CPU is coupled to the memory 18 and the I/O
module, and the input/output devices and the storage devices are coupled to the I/O
module, which in turn is coupled to a network. Id. at 3:5254. The storage
devices of the receiver are connected to the control device of the sender because
the sending device and its components are connected to the receiving device and its
components through a network. Id. at 1:1317, 3:2936, 4162. Further, the
receivers storage device stores the data sent by the sender at least temporarily in
memory, as is necessary to process the received compressed signal and decompress
it. EX1002 (Laub Declaration), at 70.
To the extent one could argue that the storage device of Norris does not
store the signals, it would be obvious to a POSA at the critical date to modify the
data compression methods of Riddle to additionally store the received data from
the sender. EX1002 (Laub Declaration), at 58, 62. And a POSA would be
motivated to modify Norris accordingly. Id.; see also id. at 70.
62
b)
U.S. Patent 7,490,037
storage device
The sender of Norris transmits encoded data to the receiver based on a
negotiated compression format, which is in turn based in part on the capabilities of

the receiver. EX1004 (Norris), at 5:2128, Figs. 67. More specifically, a POSA
at the critical date would know that the negotiated compressor must necessarily be
based on the capabilities or parameters of the storage device of the receiver
because the bit rate or the total volume of bits in the signal to be transmitted must
be kept low enough to fit within the capabilities of the storage device. EX1002
(Laub Declaration), at 82.
22.
a)
having a decoding device connected to the control device, as a processing

device, for decoding of the signals
Norris discloses that the receiver receives data through the network service
and a READ routine, which determines from a routing table the negotiated
compression method by which to decompress the received data. EX1004 (Norris),
at 5:666:9. The CPU that runs the decompression routine of the receiver is
connected to the control device of the sender because the sending device and its
components are connected to the receiving device and its components through a
network. Id. at 1:1317, 3:2936, 4162.
63
b)
U.S. Patent 7,490,037
decoding device
The receiver of Norris sends a message to the sender that lists the data
compression techniques understood by the receiver, preferably in order of priority

or preference, which is used to determine the negotiated compression method. Id.
at 5:2128, Figs. 67.
23.

wherein the test signal is an encoded audio signal
Yabusaki discloses a codec that communicates its presence a receiver by a
portion of an encoded signal. EX1006 (Yabusaki), at 1:6467. For instance, one

bit of eight bits of speech encoding is used not for passing encoded data but for
switching the codec mode. Id. at 1:642:6. Thus, of the eight bits delivered, only
seven bits were used to deliver encoded speech. Id. The eight bit is instead
intended to evoke a response from the downstream equipment (the job of a test
signal), while the rest of the bits in each eight-bit packet operate to carry the
encoded audio signal, so these eight-bit packets are both a test signal and an
encoded audio signal. EX1002 (Laub Declaration), at 75, 76.
A POSA would be motivated to combine Norris and Hinderks with Yabusaki
to provide the simplified method of operation in which one signal operates as both
an encoded audio signal and a test signal. Id. at 92. Apart from simplicity, this
64
U.S. Patent 7,490,037
also permits a system to test encoding algorithms while continuing to send audio.
Id.
24.

wherein a display/input device is connected to the control device
personal computer. EX1005 (Hinderks), at 4:3543.
compression methods of Norris to add a display/input device connected to the
control device. EX1002 (Laub Declaration), at 87. And a POSA would be
motivated to modify Norris accordingly to provide a more robust and flexible
codec selection process. Id.
25.
a)
wherein a storage unit is connected to the control device

The sender of Norris includes a CPU, memory, and a number of storage
devices. EX1004 (Norris), at 3:4652. The CPU is coupled to the memory 18 and
the storage devices. Id. at 3:5254.
b)
and in which at least one encoding format is stored

The sender of Norris initiates an OPEN routine to negotiate a compression
method with the receiver. Id. at 2:1217, 5:714. The receiver sends a list of
65
U.S. Patent 7,490,037
compression techniques understood by the receiver and the sender then logs the
negotiated compression method in memory for later use. Id. at 2:3538, 5:2128,
Figs. 67.
26.
Claim 25 is obvious over Norris in view of Hinderks and Menezes

wherein the storage unit stores the properties of the processing device
and the encoding formats corresponding to the at least one property of the
processing device
For the same reasons discussed in Section VIII(C)(25)(b), the combination of

To the extent one could argue that the combination of Norris and Hinderks
does not disclose this limitation, this limitation was well known at the critical date.
For example, Menezes discloses a capabilities cache that stores a list of data
processing capabilities at the other devices in the network. EX1007 (Menezes), at
6:1931. The system of Menezes then uses those capabilities to select the most
efficient mutually compatible data form for transfer, including encoding format.
Id. at 8:1518, 9:18, 9:6610:4. Menezes then processes the data and sends it to
other devices in the network. Id.
data compression methods of Norris to also include the storage of an encoding
format and other capabilities of the receiving device of Menezes. EX1002 (Laub
Declaration), at 93. A POSA would look to Norris, Hinderks, and Menezes as
66
U.S. Patent 7,490,037
related art in a known, limited field of data compression communication methods.
Id. And a POSA would be motivated to modify Norris accordingly. Id.
27.

wherein all settings can be implemented manually
Hinderks discloses a user-programmable audio codec for transmitting
compressed digital bit streams, such as audio. EX1005 (Hinderks), at 3:3951,

4:47. A user of the Hinderks codec has control over a number of psychoacoustic
parameters that each change audio output from the codec. Id. at 3:4351.
Therefore, it would be obvious to a POSA at the critical date to modify
compression methods of Norris to add the ability for all settings to be implemented
manually. EX1002 (Laub Declaration), at 85. And a POSA would be motivated
to modify Norris accordingly to provide a more robust and flexible codec selection
process. Id.
67
U.S. Patent 7,490,037
28.

wherein there is provided a display which displays the current
transmission time of the transmission device/storage time of the storage
device and/or the remaining transmission time of the transmission
device/storage time of the storage device 7
This limitation was well known at the critical date. See EX1002 (Laub
Declaration), at 35. Therefore, it would be obvious to a POSA at the critical date

to modify the data compression methods of Norris as modified to include the
graphical display user interface of Hinderks (see Sections VIII(C)(8), VIII(C)(18),
VIII(C)(24)) to also include a current transmission time, storage time, or remaining
transmission time. EX1002 (Laub Declaration), at 87. And a POSA would be
motivated to modify Norris accordingly. Id.
Claim 27 recites the current transmission time, the transmission device, the
storage device, and the remaining transmission time without giving any
reasonable scope as to what those terms mean in claim 17, from which it depends.
68
U.S. Patent 7,490,037
29.

wherein there is provided a mixing stage which prior to transmission with
the transmission device and/or storage with the storage device mixes
together a plurality of monophonic and/or stereophonic audio signals 8
This limitation was well known at the critical date. See EX1002 (Laub
Declaration), at 37. Therefore, it would be obvious to a POSA at the critical date

to modify the data compression methods of Norris as modified by Hinderks to
additionally mix the audio signals prior to transmission.
EX1002 (Laub
And a POSA would be motivated to modify Norris
accordingly. Id.
30.

wherein the signal which is to be transmitted with the transmission device
and/or stored with the storage device and/or which is received from the
transmission device can be listened to in a listening device 9
Hinderks discloses a speaker that is attached to an output of the codec to
give the user real time output. EX1005 (Hinderks), at 15:4648. The user can use
8
Claim 28 recites the transmission device and the storage device without
giving any reasonable scope as to what those terms mean in claim 17, from which
it depends.
9
Claim 29 recites the transmission device and storage device without giving
any reasonable scope as to what those terms mean in claim 17, from which it
depends.
69
U.S. Patent 7,490,037
the speaker to instantly evaluate how changing the parameters of the codec affects
the audio output. Id. at 15:4651.
It would be obvious to a POSA at the critical date to modify compression
methods of Norris to add the ability to listen to the data to be compressed by the
sender. EX1002 (Laub Declaration), at 87. And a POSA would be motivated to
modify Norris accordingly to provide a more robust and flexible codec selection
process. Id.
31.

wherein the level of the signal which is to be transmitted with the
transmission device and/or stored with the storage device and/or which is
received from the transmission device can be displayed by a level
display 10
Hinderks discloses that an LED display includes a level display or level
indicators for the encoder being used by the user. Id. at 27:3738.
It would be obvious to a POSA at the critical date to modify the compression
methods of Norris to include a level display for the encoder being used by a user.
EX1002 (Laub Declaration), at 36. And a POSA would be motivated to modify
10
Claim 30 recites the transmission device and storage device without giving
any reasonable scope as to what those terms mean in claim 17, from which it
depends.
70
U.S. Patent 7,490,037
Norris accordingly to provide more transparency about the compression methods
being used in the data transfer from sender to receiver. Id.
32.

wherein, provided for respective ones of various processing devices, is a
respective control device, wherein the individual control devices exchange
the properties of the processing device interrogated thereby with one or
more of the other control devices
The senders and receivers of Norris (which each have a control device)
automatically negotiate a compression method among them. EX1004 (Norris), at

2:1217, 5:714.
After establishing the negotiated compression method, the
senders and receivers then log the negotiated compression method in memory for
later use. Id. at 2:3538.
discloses a teaching unit that sends a data stream from one codec (having a
control device) to remote codecs (having respective control devices) that use the
data stream to synchronize their own parameters. EX1005 (Hinderks), at 4:5961,
16:3949. Therefore, it would be obvious to a POSA at the critical date to modify
the compression methods of Norris to include a teaching unit to exchange
properties of the processing device with other control devices. EX1002 (Laub
And a POSA would be motivated to modify Norris
71
U.S. Patent 7,490,037
accordingly to provide greater distributed control over the compression methods
being used at remote computers. Id.
33.

wherein the control device can be operated either cable-less or via a
cabled interface
personal computer. EX1005 (Hinderks), at 4:3543. That front panel is connected
to the codec by the RS232 interface. Id. at 16:4647; see also id. at 26:6465.
RS232 is a cabled interface. EX1002 (Laub Declaration), at 33.
IX.
CONCLUSION
Based on the foregoing, the challenged claims of the 037 Patent recite
subject matter that is unpatentable. Petitioner respectfully requests institution of

inter partes review to cancel these claims.
Respectfully submitted,
/Vincent J. Galluzzo/
Vincent J. Galluzzo
Registration No. 67,830
Teresa Stanek Rea
Jonathan Stroud
72
U.S. Patent 7,490,037
Table of Exhibits for Patent 7,490,037 Petition for Inter Partes Review
Exhibit
Description
1001
U.S. Patent 7,490,037 (the 037 Patent)
1002
Declaration of Leonard Laub (Laub Declaration)
1003

January 16, 2001) (Riddle)
1004

September 17, 1996) (Norris)
1005
U.S. Patent 6,041,295 (filed on April 10, 1996, published on March 21,
2000) (Hinderks)
1006
U.S. Patent 5,513,211 (filed on May 25, 1994, published on April 30,
1996) (Yabusaki)
1007
U.S. Patent 5,621,894 (filed on August 9, 1995, published on April 15,

1997) (Menezes)
1008

August 13, 1996) (Sharma)
1009

November 12, 1996) (Mirashrafi)
1010

March 30, 1999) (Spiess)
1011
International Telecommunication Union, ITU-T H.323 (November

1996) (H.323)
1012
U.S. Patent 5,115,469 (PCT filed on June 7, 1989, 102(e) date of

February 8, 1990, published on May 19, 1992) (Taniguchi)
1013
Ted Painter & Andreas Spanias, A Review of Algorithms for Perceptual

Coding of Digital Audio Signals (July 1997) (Painter)
U.S. Patent 7,490,037
Exhibit
Description
1014
Borko Furht, Multimedia Systems: An Overview, IEEE MultiMedia

(Spring 1994) (Furht)
1015
Davis Yen Pan, Digital Audio Compression, Digital Technical Journal,

Spring 1993 (Pan)
1016
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1018

September 8, 1998) (Nardone)
1019
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U.S. Patent 7,490,037
Exhibit
Description
1028
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(H.261)
1029
U.S. Patent 5,761,634 (filed on April 4, 1996, published on June 2,

1998) (Stewart)
1030
049 File History, Abandonment (10/19/2005)
1031
037 File History, Application (6/2/2005)
1032
037 File History, Non-Final Office Action (12/10/2007)
1033
037 File History, Amendment and Response (6/10/2008)
1034
037 File History, Notice of Allowability (10/21/2008)
1035
Petitioners Voluntary Interrogatory Responses
1036
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U.S. Patent 7,490,037
CERTIFICATE OF COMPLIANCE
Pursuant to 37 C.F.R. 42.24(d), I hereby certify that this Petition complies
with the type-volume limitation of 37 C.F.R. 42.24(a)(1)(i) because it contains
13,861 words as determined by the Microsoft Office Word 2010 word-processing
system used to prepare the brief, excluding the parts of the brief exempted by 37
C.F.R. 42.24(a)(1).
Vincent J. Galluzzo
U.S. Patent 7,490,037
CERTIFICATE OF SERVICE
I hereby certify that on September 2, 2016, I caused a true and correct copy
of the foregoing materials:
Petition for Inter Partes Review of U.S. Patent 7,490,037 Challenging
Claims 132 under 35 U.S.C. 312 and 37 C.F.R. 42.104
Exhibits to Petition for Inter Partes Review of U.S. Patent 7,490,037
(EX1001EX1040)
to be served via Federal Express on the following correspondent of record as listed
on PAIR:
Frommer Lawrence & Haug
745 Fifth Avenue 10th Floor
New York, NY 10151
Vincent J. Galluzzo

Unified Patents Inc. v. Digital Audio Encoding Sys., LLC, IPR2016-01710, Paper 1 (Sept. 2, 2016)

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Unified Patents Inc. v. Digital Audio Encoding Sys., LLC, IPR2016-01710, Paper 1 (Sept. 2, 2016)

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IPR2016-01710 Petition

U.S. Patent 7,490,037

MANDATORY NOTICES .............................................................................1

Real Party-in-Interest ...................................................................................1

Related Matters ............................................................................................1

Service Information, Email, Hand Delivery, and Postal .............................5

CERTIFICATION OF GROUNDS FOR STANDING ..................................6

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................6

Prior Art Patents and Printed Publications ..................................................6

Grounds for Challenge .................................................................................7

OVERVIEW OF THE 037 PATENT ..........................................................12

Summary of the Alleged Invention............................................................12

Level of Ordinary Skill in the Art .............................................................14

VII. CLAIM CONSTRUCTION ..........................................................................15

Overview of Riddle ..................................................................................19

Claims 1 and 17 are anticipated by Riddle.............................................21

Claim 2 is anticipated by Riddle .............................................................26

Claim 3 is anticipated by Riddle .............................................................27

Claim 4 is anticipated by Riddle .............................................................28

Claim 7 is anticipated by Riddle .............................................................28

Claim 9 is anticipated by Riddle .............................................................29

Claim 10 is anticipated by Riddle ...........................................................29

Claim 18 is anticipated by Riddle ...........................................................29

Claim 23 is anticipated by Riddle ...........................................................30

Claim 24 is anticipated by Riddle ...........................................................31

Claim 25 is anticipated by Riddle ...........................................................31

Claim 29 is anticipated by Riddle ...........................................................32

Claim 32 is anticipated by Riddle ...........................................................32

Claim 5 is obvious over Riddle ...............................................................33

Claim 6 is obvious over Riddle ...............................................................34

Claim 11 is obvious over Riddle .............................................................35

Claim 12 is obvious over Riddle .............................................................36

Claim 13 is obvious over Riddle .............................................................37

Claim 14 is obvious over Riddle .............................................................39

Claim 19 is obvious over Riddle .............................................................39

Claim 20 is obvious over Riddle .............................................................39

Claim 22 is obvious over Riddle .............................................................40

Overview of Norris ..................................................................................41

Overview of Hinderks ..............................................................................43

Overview of Yabusaki .............................................................................43

Overview of Menezes ..............................................................................44

Claims 1 and 17 are obvious over Norris in view of Hinderks ...............45

Claim 2 is obvious over Norris in view of Hinderks ...............................49

Claim 4 is obvious over Norris in view of Hinderks and Yabusaki ........49

Claim 5 is obvious over Norris in view of Hinderks ...............................50

Claim 6 is obvious over Norris in view of Hinderks and Yabusaki ........51

Claim 7 is obvious over Norris in view of Hinderks ...............................53

Claim 8 is obvious over Norris in view of Hinderks ...............................53

Claim 10 is obvious over Norris in view of Hinderks .............................55

Claim 11 is obvious over Norris in view of Hinderks .............................56

Claim 13 is obvious over Norris in view of Hinderks .............................56

Claim 14 is obvious over Norris in view of Hinderks .............................57

Claim 15 is obvious over Norris in view of Hinderks and Yabusaki ......58

Claim 16 is obvious over Norris in view of Hinderks and Yabusaki ......59

Claim 18 is obvious over Norris in view of Hinderks and Yabusaki ......60

Claim 19 is obvious over Norris in view of Hinderks .............................61

Claim 20 is obvious over Norris in view of Hinderks .............................62

Claim 21 is obvious over Norris in view of Hinderks .............................63

Claim 22 is obvious over Norris in view of Hinderks and Yabusaki ......64

Claim 23 is obvious over Norris in view of Hinderks .............................65

Claim 24 is obvious over Norris in view of Hinderks .............................65

Claim 25 is obvious over Norris in view of Hinderks and Menezes .......66

Claim 26 is obvious over Norris in view of Hinderks .............................67

Claim 27 is obvious over Norris in view of Hinderks .............................68