Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trial Number: XXXXXX
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`Panel: To Be Assigned
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`In the Inter Partes Review of:
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`U.S. Patent No. 7,509,178
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`Filed: February 13, 2001
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`Issued: March 24, 2009
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`Inventor(s): Logan et al.
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`Assignee: Personal Audio LLC
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`Title: Audio Program Distribution and Playback System
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`Mail Stop Inter Partes Review
`Commissioners for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITION FOR INTER PARTES REVIEW UNDER
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`35 U.S.C. § 311 AND 37 C.F.R. § 42.100
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`TABLE OF CONTENTS
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ......................... 1
`A.
`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest .............................................. 1
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ....................................................... 1
`C.
`37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information ............... 1
`D.
`Payment of Fees – 37 C.F.R. § 42.103 .......................................................... 2
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`II. SUMMARY OF THE ’178 PATENT .............................................................. 2
`A. Brief Description of the Alleged Invention of the ’178 Patent ..................... 2
`B.
`Summary of the Prosecution History of the ’178 Patent .............................. 2
`C.
`Summary of Litigation History ..................................................................... 4
`D.
`IPR Proceedings (IPR2015-00500 and IPR2015-00501) ............................. 4
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ........................... 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 4
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ................................................................................................................ 5
`1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested ................... 5
`2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Grounds on
`Which the Challenge Is Based ............................................................................. 5
`3. Claim Construction 37 C.F.R. § 42.104(b)(3) .............................................. 5
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT ONE OR MORE
`CLAIMS OF THE ’178 PATENT IS UNPATENTABLE UNDER 37 C.F.R. §
`42.104(b)(4) and (5). ...............................................................................................19
`A.
`Person Of Ordinary Skill in the Art at the Time (POSITA) .......................19
`B.
`Summary of Prior Art ..................................................................................19
`1. U.S. Patent Application Pub. No. 2002/0177914 to Tim Chase (“Chase”) 19
`2. Loeb, S., “Architecting Personalized Delivery of Multimedia Information",
`Communications of the ACM, December 1992, Vol. 35, No. 12 ("Loeb”) ......23
`3. U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”) .................24
`4. U.S. Patent No. 4,609,954 to Richard H. Bolton et al. (“Bolton”) .............24
`C. Ground 1 – Claims 1-4, 9 and 13 are obvious under 35 U.S.C. 103(a) over
`Chase in view of Loeb ..........................................................................................25
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`1. Claim 1 ........................................................................................................26
`2. Claim 2 ........................................................................................................38
`3. Claim 3 ........................................................................................................39
`4. Claim 4 ........................................................................................................40
`5. Claim 9 ........................................................................................................43
`6. Claim 13 ......................................................................................................44
`D. Ground 2 – Claims 5-6, 14-17, and 28-29 Are Obvious Under 35 U.S.C.
`103(a) over Chase in view of Loeb and further in view of Inazawa ....................44
`1. Claim 5 ........................................................................................................44
`2. Claim 6 ........................................................................................................48
`3. Claim 14 ......................................................................................................50
`4. Claim 15 ......................................................................................................53
`5. Claim 16 ......................................................................................................54
`6. Claim 17 ......................................................................................................55
`7. Claim 28 ......................................................................................................55
`8. Claim 29 ......................................................................................................55
`E. Ground 3 – Claims 7-8 are Obvious Under 35 U.S.C. 103(a) over Chase in
`view of Loeb in view of Inazawa and further in view of Bolton .........................56
`1. Claim 7 ........................................................................................................57
`2. Claim 8 ........................................................................................................60
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`V. RELIEF REQUESTED ...................................................................................60
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`EXHIBIT LIST
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`Ex. No.
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`Description
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`1001
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`U.S. Patent No. 7,509,178 to Logan, et al. (“’178 Patent”).
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`1002
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`Declaration of Martin Walker.
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`1003
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`U.S. Patent No. 6,199,076 to Logan, et al. (“’076 patent”)
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`1004
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`Publicly Available File History of U.S. Patent No. 7,509,178 (“’178
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`File History”)
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`1005
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`Publicly Available File History of U.S. Patent No. 6,199,076 (“’076
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`File History”)
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`1006
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`U.S. Unpublished Patent Application No. 08/705,797 to Tim Chase
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`(“Chase Parent”)
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`1007
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`U.S. Patent Application Publication No. 2002/0177914 to Tim
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`Chase (“Chase”)
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`1008
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`U.S. Provisional Patent Application No. 60/003,164 to Tim Chase
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`(“Chase Provisional”)
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`1009 U.S. Patent No. 4,811,315 to Yoshizumi Inazawa (“Inazawa”)
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`1010
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`U.S. Patent No. 4,609,954 to Richard H. Bolton and Robert P.
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`Clouteir (“Bolton”)
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`1011
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`Loeb, S., "Architecting Personalized Delivery of Multimedia
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`Information", Communications of the ACM, December 1992, Vol.
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`35, No. 12 ("Loeb”)
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`1012
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`Order Construing Claim Terms of United States Patent Nos.
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`6,199,076 and 7,509,178, Personal Audio, LLC v. Apple, Inc. et al,
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`case 9:09-cv-00111-RC, Eastern District of Texas, Document 258,
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`filed 12/21/10.
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`1013
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`Order Denying Defendant’s Motion for Summary Judgment of
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`Indefiniteness, Personal Audio, LLC v. Apple, Inc. et al, case 9:09-
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`cv-00111-RC, Eastern District of Texas, Document 292, filed
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`1/31/11.
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`1014
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`Order Granting in Part and Denying in Part Plaintiff’s Motion for
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`Reconsideration of Order Denying Defendant’s Motion for
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`Summary Judgment of Indefiniteness, Personal Audio, LLC v.
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`Apple, Inc. et al, case 9:09-cv-00111-RC, Eastern District of Texas,
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`Document 358, filed 5/18/11.
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`1015
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`Order Re: Apple’s Motions for JMOL, Personal Audio, LLC v.
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`Apple, Inc. et al, case 9:09-cv-00111-RC, Eastern District of Texas,
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`Document 512, filed 8/19/11.
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`1016
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`Ron Person, Special Edition, Using Windows 95, QUE, 1995
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`(“Person”).
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`1017
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`Publicly Available File History of Reexamination Control No.
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`95/001,295 of U.S. Patent No. 7,509,178.
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`1018
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`Appendices A-E to U.S. Provisional Patent Application No.
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`60/003,164 to Tim Chase (“Chase Software Appendices”)
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`Lenovo (United States) Inc., Lenovo Holding Company, Inc., Lenovo Group
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`Ltd., Google Inc., and Barnes & Noble, Inc. (collectively referred hereinafter as
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`“Petitioner”), respectfully request Inter Partes review ("IPR") of claims 1-9, 13-17,
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`and 28-29 of U.S. Patent No. 7,509,178 ("the ’178 Patent") pursuant to 35 U.S.C. §
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`311 and 37 C.F.R. § 42.100.
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`A. 37 C.F.R. § 42.8(b)(1): Real Party-In-Interest
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`Real parties-in-interest are Lenovo (United States) Inc., Lenovo Holding
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`Company, Inc., Lenovo Group Ltd., Google Inc., and Barnes & Noble, Inc.
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`B. 37 C.F.R. § 42.8(b)(2): Related Matters
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`Personal Audio has asserted the ’178 Patent in Personal Audio v. Acer
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`America, et al., Case No. 1:14-cv-8-RC and Personal Audio LLC v. Fuhu, Inc.,
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`Case No. 1:13-cv-513-RC, both in the United States District Court for the Eastern
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`District of Texas. These cases may affect, or be affected by, a decision in this
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`proceeding. The ’178 Patent is currently subject to two other IPR proceedings
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`(IPR2015-00500 and IPR2015-00501) that may be affect, or be affected by, a
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`decision in this proceeding (Petitioner is not a real party-in-interest or privy with
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`respect to these other IPR proceedings).
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`C. 37 C.F.R. § 42.8(b)(3) and (4): Counsel and Service Information
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`Petitioner designates Daniel M. De Vos, Reg. No. 37,813, as Lead Counsel,
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`and Matthew N. Nicholson, Reg. No. 62,889 as Backup Counsel, both available at
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`1279 Oakmead Parkway, Sunnyvale, CA 94085 (T: 408-720-8300; F: 408-720-
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`8383), or electronically by email at 9873IPR002-178@bstz.com.
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`D. Payment of Fees – 37 C.F.R. § 42.103
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`
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`The undersigned authorizes Deposit Account No. 022666 to be charged: 1)
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`the $23,400 fee set forth in 37 C.F.R. § 42.15(a) for this Petition for IPR that
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`requests review of sixteen (16) claims ($9,000 for the IPR Request fee and $14,400
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`for the IPR Post Institution fee); and 2) any additional fees that may be due in
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`connection with this Petition.
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`II.
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`SUMMARY OF THE ’178 PATENT
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`A. Brief Description of the Alleged Invention of the ’178 Patent
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`The ’178 Patent is directed to an audio program player that will play a
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`sequence of audio program segments or files and accept commands from the user
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`to skip forward or backward in the sequence. An “audio player device” (which
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`may be a computer that includes a CPU, display, mouse, keyboard, etc.) connects
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`to a server to download “audio program segments.” A “sequencing file” defines
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`the sequence of the audio program segments (the order in which the segments will
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`be played or what segment comes next when the user issues a command to skip
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`forward or backward in the sequence).
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`B. Summary of the Prosecution History of the ’178 Patent
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`The application leading to the ’178 Patent was filed on 2/13/01 as a
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`divisional of U.S. Patent No. 6,199,076 ("the '076 Patent"). Ex. 1003. On 9/24/08,
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`the Examiner initially rejected all claims as being obvious over U.S. Patent
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`5,914,941 (Janky) in view of U.S. Patent 5,966,440 (Hair). Ex. 1004 at 81-106. In
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`response, the Patent Owner amended all but one of the pending claims, including
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`both independent claims, on 10/28/08. Ex. 1004 at 45-69. On 1/28/09, the
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`Examiner allowed the ’178 Patent application stating that "the prior art does not
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`teach, suggest or make obvious (in combination with the other elements of the
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`claims) an audio program player that has a communications port to download from
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`one or more server computers a sequencing file and a plurality of audio program
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`files wherein the downloaded sequencing file specifies an order sequence of a
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`collection of the audio program files stored in the player's memory unit." Ex. 1004
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`at 30-32.
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`An inter partes reexamination of claims 1-29 of the ’178 Patent was
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`instituted (Control No. 95/001,295, Exhibit 1017) in conjunction with a previous
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`litigation (the “Apple litigation”). All claims remained rejected through the Action
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`Closing Prosecution (3/7/2011) (Ex. 1017 at 2104-2161) and the Right of Appeal
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`Notice (10/5/2011) (Ex. 1017 at 314-358). The inter partes reexamination was
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`subsequently terminated under 35 U.S.C. 317(b) on 2/22/12 (Ex. 1017 at 1-6)
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`responsive to the Apple litigation’s dismissal (detailed below), even though the
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`PTO was rejecting all claims.
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`C. Summary of Litigation History
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`The ’178 Patent has been asserted multiple times in the District Court for the
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`Eastern District of Texas, including Personal Audio, LLC v. Apple Inc. et al., Civil
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`Action No. 9:09-CV-111 on 6/25/2009 (the “Apple litigation”). Apple asserted
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`that various claims of the ’076 and ’178 patents were invalid, and on 7/8/11 the
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`jury rejected Apple’s invalidity arguments. Apple filed for appeal on 10/20/11, but
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`then jointly filed a notice to dismiss (12/27/11) due to settlement which was
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`granted (1/5/12); thus, the above mentioned inter partes reexamination was
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`terminated.
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`D. IPR Proceedings (IPR2015-00500 and IPR2015-00501)
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`IPR petitions challenging claims of the ’178 Patent were filed by Microsoft
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`on 12/24/14 (IPR2015-00500 and IPR2015-00501). Petitioner is not a real party-
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`in-interest or privy with respect to these other proceedings and the grounds raised
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`in this request are not redundant to the grounds raised in those other proceedings.
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner hereby certifies that the ’178 Patent is available for IPR and the
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`Petitioner is not barred or estopped from requesting IPR of claims 1-9, 13-17, and
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`28-29 on the grounds identified herein. Petitioner does not own the ’178 Patent,
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`has not previously initiated a civil action challenging the validity of any claims of
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`the ’178 Patent, and is submitting this petition less than one year after Petitioner
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`was first served with a complaint alleging infringement of the ’178 Patent. The
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`estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR.
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`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`1. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested
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`Petitioner requests IPR of claims 1-9, 13-17, and 28-29 of the ’178 Patent.
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`2. 37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory Grounds on
`Which the Challenge Is Based
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`Petitioner requests IPR of claims 1-9, 13-17, and 28-29 on the grounds set
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`forth in the table below:
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`Ground
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`Proposed Statutory Rejections for the ’178 Patent
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`1
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`Claims 1-4, 9, and 13 are obvious under 35 U.S.C. 103(a) over Chase
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`in view of Loeb
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`2
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`Claims 5-6, 14-17, and 28-29 are obvious under 35 U.S.C. 103(a)
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`over Chase in view of Loeb in view of Inazawa
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`3
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`Claims 7-8 are obvious under 35 U.S.C. 103(a) over Chase in view of
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`Loeb in view of Inazawa and further in view of Bolton
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`3. Claim Construction 37 C.F.R. § 42.104(b)(3)
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`In an IPR, claim terms in an unexpired patent are given their broadest
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`reasonable construction in light of the specification of the patent in which they
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`appear. 37 C.F.R. § 42.100(b). However, since courts use the narrower
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`construction standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`and several claim terms were construed under that standard during the Apple
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`litigation, out of an abundance of caution, the Petitioner is showing that the prior
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`art teaches the narrower claim construction adopted in the Apple litigation.
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`For instance, several claim limitations under the term “a processor for…” in
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`claims 1 and 14 (as well as dependent claims 4-7 and 16), even though they do not
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`use the word “means,” were construed during the Apple litigation as governed by §
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`112, ¶ 6 because the word “processor” was deemed not to have sufficient structure
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`to perform the claimed functions. Ex. 1013 at 40-42. Although Petitioner is
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`proposing the same construction of these terms under § 112, ¶ 6 as construed in the
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`Apple litigation, Petitioner understands that the district court may construe the
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`terms differently in the co-pending litigation. The claim construction from the
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`Apple litigation is spread across four documents (cited as Exhibits 1012, 1013,
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`1014, and 1015 to the instant petition). Exhibit 1015 includes a summary of the
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`claim construction. Exhibit 1014 includes changes to previous claim constructions
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`shown via strikethrough and underline. Any terms not included in this section are
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`given their broadest reasonable interpretation (BRI). The claim constructions
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`below are made only for the purposes of this IPR, and Petitioner reserves the right
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`to present different constructions in the related litigation.
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`a) “audio program player …” (claims 1-9, 13-17, and 28-29)
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`The BRI of “audio program player” is “a device that reproduces sound from
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`digital audio content.” Ex. 1012 at 9-16; see also Ex. 1001 at 4:43-44, 7:50-53,
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`and 8:3-4. The BRI of “audio program player” includes a desktop or laptop
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`computer, a personal device for an individual listener, and can be used by a radio
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`DJ since the specification describes several different possibilities for the player
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`such as “‘a conventional laptop or desktop personal computer’,” “‘numerous other
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`information storage, processing and communications schemes may be substituted
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`for the preferred Internet server and PC client player architecture shown in FIG.
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`1’,” “ ‘notebook computers and PDAs’,” and “‘portable computers of the type
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`which may be used in a car or on public transportation.’” Ex. 1012 at 9-16 that
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`quotes the parent ’076 Patent (corresponding citations into the ’178 Patent are Ex.
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`1001 at 4:43-44, 7:50-53, 7:65, and 8:3-4). In fact, the district court found in the
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`Apple litigation that there is no place identified in the specification or prosecution
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`history where the inventors “explicitly limited their invention to use by a single
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`listener or expressly disclaimed the use of their invention by a radio DJ.” Ex. 1012
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`at 16.
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`b) “sequencing file” (claim 1) and “playback session sequencing file”
`(claim 14)
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`The BRI for both “sequencing file” and “playback session sequencing file”
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`is “a file of data that identifies the order in which audio program segments are to
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`be played and that may contain information about the sequence of events that occur
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`during playback.” Ex. 1012 at 18-21 that quotes the parent ’076 Patent
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`(corresponding citations into the ’178 Patent are Ex. 1001 at 8:49-50, 8:64, and
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`12:13-16).
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`c) “a communications port for establishing …” (claim 1) and “a
`communications port for downloading …” (claim 14)
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`The BRI for “a communications port for establishing a data communications
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`link for downloading” in claim 1 is “a port for establishing a connection between
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`the player and a network” and the BRI for “downloading a plurality of separate
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`digital compressed audio program files and a separate sequencing file from one or
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`more server computers” of claim 1 is “transferring a plurality of separate digital
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`compressed audio program files and a separate sequencing file from the memory of
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`one or more separate computers to the memory of the player upon a request by the
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`player.” Ex. 1012 at 41, citing Ex. 1001 at FIG. 1, 4:37-40, 5:44-54, 5:56-61,
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`6:60-62, 7:19-22, 7:50-61, 8:8-12; 8:33-41, 8:38-43, 10:1-3, 10:9-14, 10:67-15:1.
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`The BRI for “a communications port for downloading” in claim 14 is “a port
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`for establishing a connection between the player and a network” and the BRI for
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`“downloading at least some of said audio program files and said playback session
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`sequencing file from said one or more server computers” of claim 14 is
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`“transferring at least some of said audio program files and said playback session
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`sequencing file from the memory of one or more separate computers to the
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`memory of the player upon a request by the player.” Ex. 1012 at 41, citing Ex.
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`1001 at FIG. 1, 4:37-40, 5:44-54, 5:56-61, 6:60-62, 7:19-22, 7:50-61, 8:8-12; 8:33-
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`41, 8:38-43, 10:1-3, 10:9-14, 10:67-15:1.
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`d) “a processor for continuously delivering …” (claim 1)
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`If this term is construed pursuant to § 112, ¶ 6, the recited function is
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`“continuously delivering a succession of said audio program files in said collection
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`to said audio output unit in said ordered sequence specified by said sequencing file
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`in the absence of a program selection command from said listener” and the
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`corresponding structure is the following structure and equivalents thereof:
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`A sound card that includes a digital to analog converter and a
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`general purpose computer programmed to perform the algorithm
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`that is illustrated in the flow chart of Figure 3 at items 233, 235,
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`237, 239, and 261 and more fully described at column 12, line 22
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`to column 13, line 16 and column 34, line 19 to column 35, line
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`32. Specifically, this algorithm includes the following steps: (1)
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`beginning playback with the audio program file identified by the
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`ProgramID contained in the Selection_Record specified by the
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`CurrentPlay variable; (2) when the currently playing audio
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`program file concludes, incrementing the CurrentPlay variable by
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`one and fetching and playing the audio program file identified by
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`the ProgramID contained in the next Selection_Record in the
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`sequencing
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`file;
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`(3)
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`repeating step
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`(2) until
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`the
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`last
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`Selection_Record in the sequencing file is reached, which resets
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`the CurrentPlay variable to “1” to begin the playing sequence
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`again with the first Selection_Record in the sequencing file.
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`Ex. 1015 at 73-74. See also, Ex. 1013 at 42-43, modified by Ex.
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`1014 at 16-17.
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`e) “a processor … for discontinuing …” (claim 1)
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`If this term is construed pursuant to § 112, ¶ 6, the function is “in response
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`to a ‘Go’ command, discontinuing the reproduction of the currently playing audio
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`program file and instead continuing the reproduction at the beginning of a listener-
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`selected one of said audio program files in said collection” (Ex. 1013 at 44) and the
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`corresponding structure is the following structure and equivalents thereof:
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`A general purpose computer programmed to perform the
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`algorithm that is illustrated in the flow chart of Figure 3 at items
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`269 and 235 and more fully described at column 14, lines 25 to
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`26; column 14, lines 35 to 39; and column 34, line 19 to column
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`35, line 52. Specifically, this algorithm includes the following
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`steps: (1) resetting the CurrentPlay variable to the record number
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`of the listener-selected Selection_Record; and (2) fetching and
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`playing the audio program file identified by the ProgramID
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`contained in the new Selection_Record.
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`Ex. 1015 at 74. See also, Ex. 1013 at 44-46, modified by Ex. 1014
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`at 17-18.
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`f) “wherein said processor responds to a skip forward …” (claim 4)
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`If this term is construed pursuant to § 112, ¶ 6, the function is “in response
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`to a ‘Skip’ command, discontinuing the reproduction of said currently playing
`
`audio program file and instead continuing the reproduction at the beginning of that
`
`audio program file which follows said currently playing audio program file in said
`
`ordered sequence specified by said sequencing file” (Ex. 1013 at 46) and the
`
`corresponding structure is the following structure and equivalents thereof:
`
`A general purpose computer programmed to perform the
`
`algorithm that is illustrated in the flow chart of Figure 3 at items
`
`269 and 235 and more fully described at column 15, lines 25 to 29
`
`and column 34, line 19 to column 35, line 35. Specifically, this
`
`algorithm includes the following steps: (1) scanning forward in the
`
`sequencing file to locate the next Selection_Record of the
`
`appropriate LocType; (2) resetting the CurrentPlay variable to the
`
`record number of that Selection_Record; and (3) fetching and
`
`playing the audio program file identified by the ProgramID
`
`contained in the new Selection_Record.
`
`Ex. 1015 at 74-75. See also, Ex. 1013 at 46-47, modified at Ex.
`
`1014 at 18.
`
`g) “wherein said processor responds to a skip backward …” (claim 5)
`
`If this term is construed pursuant to § 112, ¶ 6, the function is “in response
`
`to a ‘Back’ command accepted at a time when said currently playing audio
`
`program file has played for at least a predetermined amount of time, discontinuing
`
`the reproduction of said currently playing audio program file and instead
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`continuing the reproduction at the beginning of said currently playing audio
`
`program file” (Ex. 1013 at 47-48) and the corresponding structure is the following
`
`structure and equivalents thereof:
`
`A general purpose computer programmed to perform the
`
`algorithm that is illustrated in the flow chart of Figure 3 at items
`
`269 and 235 and more fully described at column 15, lines 53 to
`
`63. Specifically, this algorithm includes the following steps: (1) if
`
`the currently playing audio program file has played for a
`
`predetermined amount of time, resetting the playback position to
`
`the beginning of the audio program file; and (2) playing the audio
`
`program file from its beginning.
`
`Ex. 1015 at 75. See also, Ex. 1013 at 47-48 and modified at Ex.
`
`1014 at 18-19.
`
`h) “wherein said processor responds to a skip backward …” (claim 6)
`
`If this term is construed pursuant to § 112, ¶ 6, the function is “in response
`
`to a ‘Back’ command accepted at a time when said currently playing audio
`
`program file has not yet played for said predetermined amount of time,
`
`discontinuing the reproduction of the currently playing program segment and
`
`instead continuing the reproduction at the beginning of a program segment which
`
`precedes the currently playing program segment in said ordered sequence specified
`
`by said sequencing file” (Ex. 1013 at 49) and the corresponding structure is the
`
`following structure and equivalents thereof:
`
`
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`A general purpose computer programmed to perform the
`
`algorithm that is illustrated in the flow chart of Figure 3 at items
`
`269 and 235 and more fully described at column 15, lines 53 to 63
`
`and column 34, line 19 to column 35, line 40. Specifically, this
`
`algorithm includes the following steps: (1) if the currently playing
`
`audio program file has not yet played for said predetermined
`
`amount of time, scanning backward in the sequencing file to locate
`
`the previous Selection_Record of the appropriate LocType; (2)
`
`resetting the CurrentPlay variable to the record number of that
`
`Selection_Record; and (3) fetching and playing the program
`
`segment identified by the ProgramID contained in the new
`
`Selection_Record.
`
`Ex. 1015 at 75-76. See also, Ex. 1013 at 48-49, modified by Ex.
`
`1014 at 19-20.
`
`i) “wherein said processor responds to a skip forward …” (claim 7)
`
`If this term is construed pursuant to § 112, ¶ 6, the functions are “(a) in
`
`response to a ‘Skip’ command accepted when playing the last audio program file in
`
`said ordered sequence, continuing reproduction at the beginning of the first audio
`
`program file in said sequence; and (b) in response to a ‘Back’ command accepted
`
`at a time when said first audio program file is playing but has not yet played for
`
`said predetermined amount of time, continuing reproduction at the beginning of the
`
`last audio program in said sequence” (Ex. 1013 at 51-52) and the corresponding
`
`structure is the following structure and equivalents thereof:
`
`
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`A general purpose computer programmed to perform the
`
`algorithm that is illustrated in the flow chart of Figure 3 at items
`
`269 and 235 and more fully described at column 15, lines 25 to 29
`
`and column 34, line 19 to column 35, line 35. Specifically, this
`
`algorithm includes the following steps: (1) scanning forward in the
`
`sequencing file, and when the “R” Selection_Record marking the
`
`end of the sequencing file is encountered, resetting the
`
`CurrentPlay variable to “1,” which is the record number of the
`
`Selection_Record containing the ProgramID of the first audio
`
`program file in the ordered sequence; and (2) fetching and playing
`
`the audio program file identified by the ProgramID contained in
`
`the new Selection_Record.
`
`
`
`The structure corresponding to function (b) is the following
`
`structure and equivalents thereof: A general purpose computer
`
`programmed to perform the algorithm that is illustrated in the flow
`
`chart of Figure 3 at items 269 and 235 and more fully described at
`
`column 15, lines 53 to 63 and column 34, line 19 to column 35,
`
`line 40. Specifically, this algorithm includes the following steps:
`
`(1) if the currently playing audio program file has not yet played
`
`for said predetermined amount of time, scanning backward in the
`
`sequencing file, and when the “R” Selection_Record marking the
`
`beginning of the sequencing file is encountered, resetting the
`
`CurrentPlay variable to the record number contained in the “R”
`
`Selection_Record, which
`
`is
`
`the
`
`record number of
`
`the
`
`Selection_Record containing the ProgramID of the last audio
`
`program file in the ordered sequence; and (2) fetching and playing
`
`
`
`14
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
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`the audio program file identified by the ProgramID contained in
`
`the new Selection_Record.
`
`Ex. 1013 at 49-53, modified by Ex. 1014 at 20-21 (Ex. 1014 is a
`
`redline - only the text resulting from the changes is shown above).
`
`j) “audio playback unit” (claim 14)
`
`The BRI of “audio playback unit” is a part or component of the “audio
`
`program player.” Ex. 1012 at 16.
`
`k) “a processor for executing …” (claim 14)
`
`If these terms are construed pursuant to § 112, ¶ 6, the functions and
`
`corresponding structures are:
`
`(a) in response to a ‘Go’ command designating a selected audio
`
`program file described on said visual menu listing, causing said
`
`audio playback unit to discontinue the reproduction of the
`
`currently playing audio program file in said ordered sequence and
`
`to instead continue the reproduction at the beginning of said
`
`selected audio program file; (b) in response to a ‘Skip’ command,
`
`discontinuing the reproduction of said currently playing audio
`
`program file and instead continuing the reproduction at the
`
`beginning of that audio program file which follows said currently
`
`playing audio program file in said ordered sequence; (c) in
`
`response to a ‘Back’ command accepted at a time when said
`
`currently playing audio program file has played for at least a
`
`predetermined amount of time, discontinuing the reproduction of
`
`said currently playing audio program file and instead continuing
`
`the reproduction at the beginning of said currently playing audio
`
`
`
`15
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`Petition for Inter Partes Review of U.S. Patent No. 7,509,178
`
`program file; and (d) in response to a ‘Back’ command accepted
`
`at a time when said currently playing audio program file has not
`
`yet played for said predetermined amount of time, discontinuing
`
`the reproduction of the currently playing program file and instead
`
`continuing the reproduction at the beginning of that audio program
`
`file which precedes the currently playing program segment in said
`
`ordered sequence.”
`
`
`
`The structure corresponding to function (a) is the following
`
`structure and equivalents thereof: A general purpose computer
`
`programmed to perform the algorithm that is illustrated in the flow
`
`chart of Figure 3 at items 269 and 235 and more fully described at
`
`column