Takeaway: The fact that alternative combinations may be suggested by the prior art does not necessarily indicate a teaching away, even if those alternatives are superior to the combination proposed in the petition.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that all challenged claims (claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76) are unpatentable.

The ‘682 patent “generally relates to audio systems for reproducing sound from computer files and computer network radio stations.” Turning to claim construction, the Board stated that claims in an unexpired patent are interpreted according to their broadest reasonable construction.  The Board then addressed two disputed constructions for the terms “audio signal processing circuitry,” recited in claims 1 and 28; and “assemblages” and “metadata,” recited in claims 12–17, 39–44, 62, 63, 67–70, and 76.

Regarding “audio signal processing,” the Board found Patent Owner’s arguments that the term should be construed to exclude “circuitry for amplification” to be unpersuasive. In particular, contrary to Patent Owner’s arguments, the Board found that the doctrine of claim differentiation was inapplicable, and the specification did not support Patent Owner’s proposal.  Therefore, the Board adopted the district court’s claim construction set forth in the related litigation.

Regarding the “assemblages” and “metadata” terms, Patent Owner proposed the terms be construed consistent with the district court’s construction, with which Petitioner had previously agreed. Petitioner urged a different construction, but the Board agreed with Patent Owner’s proposal to adopt the district court’s construction, while acknowledging the different standards applied by the courts and the Board.

Turning to the asserted grounds of unpatentability, the Board first addressed the alleged obviousness of claims 1–11, 18-21, 24, 27, 28, 30–38, 45–48, 51, 54, 73, and 74 over WinAmp, Irman Web Pages, and Altec Lansing Manual.

As a preliminary matter, the Board addressed Patent Owner’s Motion to Exclude the Irman Web Pages as hearsay and lacking authentication. The Irman Web Pages were obtained from the “Wayback Machine,” an archive of the internet.  Petitioner argued that the document included several distinctive and authenticating characteristics – e.g., “logo, header, and uniform resource locator (‘URL’).”  Petitioner also cited several district court cases finding printouts from the Wayback Machine to be admissible.  The Board found that Patent Owner’s argument reduced to the contention that Petitioner failed to provide “an affidavit from Internet Archive attesting to its general procedures,” and that “[s]uch an affidavit would not have added materially to the record.”  Patent Owner did not identify any reason why the document may be unreliable.

The Board then addressed Patent Owner’s Motion to Exclude one page of the Altec Lansing Manual. The Board was persuaded that one page of the document appeared to be from a different document, and Petitioner did not provide persuasive evidence to the contrary.  Therefore, Patent Owner’s Motion to Exclude page seven of the document was granted.

Turning to the prior art, the Board was persuaded that the claims are unpatentable. Patent Owner argued that the references taught away from Petitioner’s proposed combination and that the combination was counterintuitive “because the simpler device (the speaker system) would control the more complex device (the computer).”  The Board was not persuaded.  Instead, the Board found that Patent Owner’s evidence only suggested alternatives to the proposed combinations, and that even if those alternatives were superior, that would not constitute a teaching away.

Patent Owner also argued that Petitioner’s expert used impermissible hindsight for failing to “include descriptions of the two combinations proposed by Patent Owner,” even moving to exclude the testimony on this basis. The Board stated that the issue is whether the expert “provided a reason, with rational underpinning, for combining the references in the way he proposes” rather than whether he described the combinations that would not render the claims obvious.

Patent Owner next argued that Altec Lansing Manual did not teach a claim limitation. The Board disagreed with Patent Owner’s interpretation of the reference, and agreed with Petitioner’s analysis that the reference as a whole (even without the excluded page 7) disclosed the relevant claim limitation.

The Board then turned to the alleged obviousness of claims 12–17, 39–44, 62, 63, 67–70, and 76 over WinAmp, Irman Web Pages, Altec Lansing Manual, and Looney.  Patent Owner argued that Looney does not disclose a particular claim limitation, but the Board was not persuaded, instead finding Petitioner’s expert testimony to be persuasive.

Finally, the Board declined to reach Petitioner’s contentions regarding alleged obviousness based on the SMS reference because each challenged claim was already found to be unpatentable on other grounds.

SDI Technologies, Inc. v. Bose Corp., IPR2013-00350
Paper 36: Final Written Decision
Dated: November 7, 2014
Patent: 8,401,682 B2
Before: Karl D. Easthom, Michael J. Fitzpatrick, and David C. McKone
Written by: McKone
Related Proceedings: Bose Corp. v. SDI Technologies, Inc., Case No. 13-cv-10277-WGY (D. Mass.); IPR2014-00343; IPR2013-00465; IPR2014-00346