PTAB

IPR2014-01157

HTC Corp v. Advanced Audio Devices LLC

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1. Case Identification

2. Patent Overview

  • Title: Personal Digital Stereo Player
  • Brief Description: The ’171 patent describes a self-contained personal digital stereo audio player within a unitary housing. The device comprises a processor, non-volatile memory for storing a library of sound tracks, a display, and touch-operable controls for managing, organizing, and playing the stored digital audio.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nathan ’259 and Nathan ’255

  • Claims 1, 2, 5-7, 14, 17, 20, 23, 26, 28, 37, 40, 42-43, and 45-48 are obvious over Nathan ’259 in view of Nathan ’255.
    • Prior Art Relied Upon: Nathan ’259 (International Publication No. WO/1996/12259) and Nathan ’255 (International Publication No. WO/1996/12255).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner argued that Nathan ’259 discloses a "home digital information audiovisual recording and playback apparatus" within a single "box" (a unitary housing). This device contains a processor, non-volatile memory, an LCD, audio I/O including a headphone jack, and physical buttons for downloading and playing music. Nathan ’255, part of the same patent family from the same inventors, discloses a similar music jukebox system and adds key teachings, including a touch-screen interface and the ability to delete tracks. Petitioner asserted the combined teachings disclose every limitation of the challenged claims, including the ability to display menus with lists of song names and groups of songs (e.g., categories like "rock and roll" or "jazz") and provide touch-operable controls for all claimed playback functions like play, pause, volume, and power.
      • Motivation to Combine: A POSITA would combine these references because they were filed by the same inventors, assigned to the same company, and describe the same type of music jukebox technology. Nathan ’255’s teachings of a smaller, cheaper device with a touch screen represent a predictable and desirable evolution of the home system disclosed in Nathan ’259. Integrating the complementary features of these closely related systems would have been a straightforward design choice.
      • Expectation of Success: A POSITA would have a clear expectation of success in combining the teachings, as it involved integrating known, compatible features from systems designed for the same purpose by the same entity.

Ground 2: Obviousness over Sound Blaster, Lucente, Ozawa, and Hawkins

  • Claims 1, 2, 5-7, 14, 17, 20, 26, 28, 37, 40, 42-43, and 45-48 are obvious over Sound Blaster, Lucente, Ozawa, and Hawkins.
    • Prior Art Relied Upon: Sound Blaster (1994 User Reference Manual), Lucente (European Application # 0598547), Ozawa (Patent 5,870,710), and Hawkins (Patent 5,333,116).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner asserted this combination provides a complete roadmap for the claimed invention. Lucente teaches the core hardware: a portable, tablet-style computer in a unitary housing with a processor, touch-screen display, memory, and essential audio I/O ports (headphone, line-in). Sound Blaster provides the necessary software functionality to be run on such hardware, teaching a graphical user interface (GUI) for organizing and playing audio files, including creating playlists (groups of songs) and displaying lists of individual tracks. Ozawa complements this by teaching the use of dedicated physical push-buttons for common playback functions on a portable device, while Hawkins teaches a touch-operable on/off control to conserve power.
      • Motivation to Combine: A POSITA would be motivated to combine these references to create a more user-friendly and efficient portable audio player. It was a common and obvious practice in the art to install established audio software like Sound Blaster onto general-purpose computer hardware like that of Lucente. Augmenting a touch-screen interface with dedicated hardware buttons for frequent tasks (from Ozawa) and adding a power switch (from Hawkins) were well-known design modifications to improve usability and manage battery life in a portable device.
      • Expectation of Success: The integration of known software onto suitable hardware, augmented with conventional user interface controls, was a routine and predictable task for a POSITA at the time, ensuring a high expectation of success.
    • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 23 based on the combination of Sound Blaster, Lucente, Ozawa, and Hawkins, further in view of Martin (Patent 5,355,302), which added the known and desirable feature of sorting music lists alphabetically.

4. Key Claim Construction Positions

  • “a unitary, integral housing”: Petitioner argued this term, which lacks explicit support in the specification, was added during prosecution of a related patent. Petitioner contended it should therefore be given its customary and ordinary meaning.
  • “at least one of . . . and”: Petitioner proposed construing claim terms with the structure "at least one of [A] and [B]" to mean "at least one of [A], [B], or [A] and [B]". This broader interpretation was argued to be appropriate under Board precedent where the specification or claims imply a meaning beyond the strict grammatical conjunctive sense.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5-7, 14, 17, 20, 23, 26, 28, 37, 40, 42-43, and 45-48 as unpatentable.