Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: September 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LEVONO (UNITED STATES) INC., LENOVO
`HOLDING COMPANY, INC., LENOVO GROUP LTD.,
`GOOGLE, INC., AND BARNES & NOBLE INC.,
`Petitioner,
`
`v.
`
`PERSONAL AUDIO LLC,
`Patent Owner.
`
`Case IPR2015-00846
`Patent 7,509,178 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, DAVID C. McKONE, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: September 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LEVONO (UNITED STATES) INC., LENOVO
`HOLDING COMPANY, INC., LENOVO GROUP LTD.,
`GOOGLE, INC., AND BARNES & NOBLE INC.,
`Petitioner,
`
`v.
`
`PERSONAL AUDIO LLC,
`Patent Owner.
`
`Case IPR2015-00846
`Patent 7,509,178 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, DAVID C. McKONE, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`
`
`IPR2015-00846
`Patent 7,509,178 B2
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Levono (United States) Inc., Lenovo Holding Company, Inc., Lenovo
`Group Ltd., Google, Inc., and Barnes & Noble Inc.1 (collectively
`“Petitioner”) filed a petition (Paper 6, “Pet.”) to institute an inter partes
`review of claims 1–9, 13–17, 28, and 29 (the “challenged claims”) of U.S.
`Patent No. 7,509,178 B2 (Ex. 1001, “the ’178 patent”). 35 U.S.C. § 311.
`Personal Audio LLC (“Patent Owner”) timely filed a Preliminary Response.
`Paper 13 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); accord
`37 C.F.R. § 42.108. Based on our review of the record, we conclude that
`Petitioner is reasonably likely to prevail with respect to at least one of the
`challenged claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 19–60):
`
`References
`
`Claims
`challenged
`
`Basis
`
`§ 103 1–4, 9, and
`13
`
`U.S. Patent Publication No. 2002/0177914 A1
`(Ex. 1007, “Chase”) and Shoshana Loeb, Architecting
`Personalized Delivery of Multimedia Information,
`
`1 In an Order entered in IPR2015-00845, we have authorized the parties to
`file a joint motion to terminate the proceeding with respect to Barnes &
`Noble, Inc., based on the parties’ representation that the dispute involving
`Barnes & Noble, Inc., has been settled. To date, no such joint motion has
`been filed.
`
`2
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`References
`VOL. 35, NO. 12 COMMUNICATIONS OF THE ACM 39–
`48 (Dec. 1992) (Ex. 1011, “Loeb”)
`
`Chase, Loeb, and U.S. Patent No. 4,811,315
`(Ex. 1009, “Inazawa”)
`
`Chase, Loeb, Inazawa, and U.S. Patent No. 4,609,954
`(Ex. 1010, “Bolton”)
`
`Claims
`challenged
`
`Basis
`
`§ 103 5, 6, 14–17,
`28, and 29
`
`§ 103 7 and 8
`
`Generally, Patent Owner contends that the Petition should be denied
`in its entirety. For the reasons described below, we institute an inter partes
`review of all challenged claims.
`B. RELATED PROCEEDINGS
`Petitioner identified as related matters the co-pending district court
`proceedings of Personal Audio v. Acer America, et al., Case No. 1:14-cv-8-
`RC (E.D. Tex.) and Personal Audio LLC v. Fuhu, Inc., Case No. 1:13-cv-
`513-RC (E.D. Tex.). Pet. 1. Petitioner also identified IPR2015-00500 and
`IPR2015-005012 as related matters. Id. Patent Owner further identified as
`additional related matters the district court proceedings of Personal Audio
`LLC v. Apple, Inc., et al., Case No. 9:09-cv-00111 (E.D. Tex.) (the “Apple
`Litigation”); Personal Audio LLC v. Samsung Electronic Co., Ltd. et al.,
`Case No. 1:11-cv-00432 (E.D. Tex.); and Personal Audio LLC v. Amazon
`Digital Services, Inc., et al., Case No. 1:11-cv-00655 (E.D. Tex.).3 Paper 11,
`2–3.
`
`2 IPR2015-00500 and -00501 were terminated due to a settlement on April
`13, 2015. Paper 10 in IPR2015-00500; Paper 9 in IPR2015-00501.
`3 According to Patent Owner, all three of these district court proceedings
`have been terminated. Paper 11, 2–3.
`
`3
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`C. THE ’178 PATENT
`The ’178 patent describes an audio program distribution system in
`which a host system organizes and transmits program segments to a player at
`a client subscriber location. Ex. 1001, Abstract. The player can be a laptop
`computer or personal computer with a mass storage device and sound
`reproduction components. Id. at 4:43–59.
`A program includes compressed audio segments (e.g., MIDI files),
`text files, and image files. Id. at 5:57–6:21. These files are accompanied by
`a sequencing file, which contains the identification of highlighted passages
`and hypertext anchors within the program content, references to images, and
`the starting and ending temporal offsets in the audio presentation at which
`the display of an associated image(s) should begin and end. Id. at 6:22–31.
`The host server transmits (using file transfer protocol (FTP)) a download
`compilation file to the player. Id. at 6:60–64. The download compilation
`file identifies the program segments to be played during a session, which the
`player can download or confirm that it already has in local storage, as well
`as a session schedule file (also referred to as a sequencing file or program
`sequence file). Id. at 8:38–53.
`The program sequence file identifies the order in which downloaded
`program segments are to be played. Id. at 8:48–53. The recommended
`order can be based on user preference data collected by the server system.
`Id. at 8:51–53. Before a playback session begins, the user of the player can
`review and alter the provisional program selections and sequence. Id. at
`8:54–57. The user can control playback using commands such as SKIP
`(causing the player to advance to the beginning of the next program
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`segment) and BACK (operating like the SKIP command, but in the reverse
`direction). Id. at 15:25–63.
`Claims 1 and 14 are the independent claims among the challenged
`claims. Claim 1 is illustrative and recites:
`1. An audio program player comprising:
`a communications port for establishing a data communications
`link for downloading a plurality of separate digital
`compressed audio program files and a separate sequencing
`file from one or more server computers,
`a digital memory unit coupled to said communications port for
`persistently storing said separate digital compressed audio
`program files and said separate sequencing file, said
`sequencing file containing data specifying an ordered
`sequence of a collection of said separate digital compressed
`audio program files,
`an audio output unit including at least one speaker or headset
`for reproducing said audio program files in audible form
`perceptible to a listener,
`one or more manual controls for accepting commands from said
`listener, and
`a processor for continuously delivering a succession of said
`audio program files in said collection to said audio output
`unit in said ordered sequence specified by said sequencing
`file in the absence of a program selection command from
`said listener, and for discontinuing the reproduction of the
`currently playing audio program file and instead continuing
`the reproduction at the beginning of a listener-selected one
`of said audio program files in said collection in response to a
`program selection command from said listener.
`Id. at 45:60–46:18.
`
`5
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`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d
`1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`approved the broadest reasonable interpretation standard in enacting the
`AIA.”). When applying that standard, we interpret the claim language as it
`would be understood by one of ordinary skill in the art in light of the
`specification. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`2010). Thus, we give claim terms their ordinary and customary meaning.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
`ordinary and customary meaning is the meaning that the term would have to
`a person of ordinary skill in the art in question.” (internal quotation marks
`omitted)). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes interpretations for twelve different claim terms4
`with which Patent Owner “generally agrees” except for Petitioner’s
`proposed interpretations of “audio program player,” (all challenged claims)
`the means-plus-function element recited as a “processor for . . . ,” (all
`challenged claims), and “audio playback unit” (claims 14–17, 28, and 29).
`Prelim. Resp. 6–24. We address below each of these terms to the extent
`
`4 Petitioner analyzes the prior art that forms the basis of its challenges using
`the claim interpretations reached in the Apple Litigation. Pet. 6. Unless
`otherwise noted, we adopt those interpretations at this stage of the
`proceeding.
`
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`necessary to resolve disputes between the parties at this stage of the
`proceeding.
`1. Processor for . . .
`Petitioner and Patent Owner largely agree on the meaning of the
`“processor for . . .” elements recited in claims 1 and 14. Compare Pet. 9–10
`(claim 1) and id. at 15–17 (claim 14) with Prelim. Resp. 8–22. The only
`difference between the parties’ interpretations is that Patent Owner contends
`that the processor refers to a “computer acting as a client” rather than a
`“general purpose computer.” Id. Patent Owner’s argument assumes that a
`general purpose computer is limited to a personal computer or other similar
`hardware, and would exclude portable computing devices. We disagree. A
`general purpose computer is simply a computer that does not perform a
`specific function until programmed to do so. See, e.g., In re Alappat, 33
`F.3d 1526, 1545 (Fed. Cir. 1994) (“We have held that such programming
`creates a new machine, because a general purpose computer in effect
`becomes a special purpose computer once it is programmed to perform
`particular functions pursuant to instructions from program software.”). Such
`general purpose computers could include portable computers or PDAs.
`Patent Owner further argues that because all of the ’178 patent’s
`embodiments share a host-client architecture, we should limit the “processor
`for . . .” elements to computers acting as clients. Prelim. Resp. 9 (citing
`Ex. 1001, abstract, 8:16–9:17). Nevertheless, the Specification also states:
`“the files downloaded from the host may be stored on a replaceable media,
`such as an optical disk cartridge, which may then be inserted into a portable
`computer or simplified player for mobile use.” Ex. 1001, 8:4–8. Thus, the
`Specification contemplates a processor that acts in a standalone capacity
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`using preloaded audio and sequence files rather than as an “interactive”
`client. Patent Owner, therefore, has not explained persuasively why the
`claims should be limited to computers acting as clients and exclude
`processors in a general purpose computer acting in a standalone capacity.
`For these reasons, at this stage of the proceeding, we adopt Petitioner’s
`proposed interpretations of “processor for . . . .”
`2. Audio Playback Unit
`Petitioner contends that “audio playback unit” as used in independent
`claim 14 refers to a part or component of the claimed “audio program
`player.” Pet. 15. Patent Owner contends that the “audio playback unit for
`. . . reproducing said audio program files . . .” is written in means-plus-
`function format because Petitioner has not alleged that the “audio playback
`unit” is a “particular structure or structural component, and the rest of the
`claim language clearly recites a function without describing any specific
`structure that performs the claimed function.” Prelim. Resp. 22. Patent
`Owner then identifies a sound card, headphones or speakers, and a
`programmed general purpose computer as the elements that perform the
`recited function.
`“When a claim term lacks the word ‘means,’ the presumption [that the
`term is not interpreted under § 112, ¶ 6] can be overcome and § 112, para. 6
`will apply if the challenger demonstrates that the claim term fails to ‘recite
`sufficiently definite structure’ or else recites ‘function without reciting
`sufficient structure for performing that function.’” Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). “The standard is
`whether the words of the claim are understood by persons of ordinary skill in
`the art to have a sufficiently definite meaning as the name for structure.” Id.
`
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`“Audio playback unit,” which does not recite “means,” is thus presumptively
`not interpreted under § 112, ¶ 6. Neither party has submitted evidence to
`establish whether an ordinarily skilled artisan would consider “audio
`playback unit” to refer to structure. At this stage of the proceeding, we do
`not to interpret the “audio playback unit” under 35 U.S.C. § 112, ¶ 6.
`B. THE CHALLENGES TO THE CLAIMS
`Petitioner challenges the patentability of claims 1–9, 13–17, 28, and
`29 on the grounds that the claims are obvious in light of various
`combinations of Chase, Loeb, Inazawa, and Bolton. The Supreme Court in
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
`framework for determining obviousness as set forth in Graham v. John
`Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
`inquiries set forth in Graham that we apply in determining whether a claim
`is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a)
`as follows:
`1. determining the scope and content of the prior art,
`2. ascertaining the differences between the prior art and the claims at
`issue,
`3. resolving the level of ordinary skill in the pertinent art, and
`4. considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`KSR, 550 U.S. at 406. With these standards in mind, we address each
`challenge below.
`1. Obviousness of Claims 1–4, 9, and 13 in View of Chase and
`Loeb
`Petitioner contends that claims 1–4, 9, and 13 are unpatentable as
`obvious over Chase and Loeb. Pet. 25–44. Petitioner supports its
`
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`contentions with the testimony of Martin G. Walker, PhD (Ex. 1002). Id.
`For the reasons set forth below, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claims 1–
`4, 9, and 13 are unpatentable as obvious over Chase and Loeb.
`a) Overview of Chase
`Chase describes a method and system for a national radio broadcaster
`to create radio programs and distribute them to local affiliate radio stations.
`Ex. 1007, ¶¶ 5, 7, 23. In one example, a delivery subsystem assembles data
`files, audio files, and a “play list file” into a single “envelope” and directs it
`to an individual affiliate terminal. Id. ¶ 41. The affiliate terminal stores the
`audio files on a hard disk drive and replays the audio files based on
`instructions in the play list file (also referred to as a “playback list”) or based
`on instructions from an operator at the affiliate terminal. Id. ¶ 42.
`According to definitions provided in Chase, an “Audio Program” is
`“[o]ne or more audio segments grouped on a playlist and delivered to at least
`one affiliate terminal;” an “Audio Segment” is “[a]n audio event containing
`a continuous sequence of audio signals having defined beginning and ending
`points;” and a “Playback List” is “[a]n outline or log, associated with a
`particular audio program, containing information uniquely identifying each
`audio segment/clip/event within the associated audio program.” Id. ¶ 36.
`“[A] play list is represented by a directory,” and “[i]n the directory is a file
`which is always named with the same name as the directory but has the
`extension ‘TXT’. This is an ASCII representation of the play list.”
`Id. ¶ 202.
`Chase describes a remote control terminal that provides control of the
`affiliate terminal, for example, from within a DJ booth. Id. ¶ 184. The audio
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`program plays back automatically, without intervention by the remote
`control terminal, in a sequence determined by the play list. Id. The remote
`control terminal can override this sequence. Id. For example, a DJ can start
`play of the next queued audio segment, stop play of the current segment, and
`fast forward or rewind through the current segment or to a next or previous
`segment. Id. ¶ 186.
`Chase refers to and incorporates source code appendices, submitted
`along with the application. Id. ¶¶ 2, 4. Petitioner includes these as
`Exhibit 1018.
`b) Overview of Loeb
`Loeb is an article on information filtering that describes, inter alia, a
`“LyricTime” personalized music system. Ex. 1011, 6. LyricTime plays
`songs on a listener’s workstation. Id. The listener can control LyricTime “to
`stop and start playing at any time, step forward and backward through the
`list of selected songs, change the volume, bias the selection of the filter by
`clicking on a ‘mood’ button, and provide evaluative feedback on the current
`song.” Id. LyricTime includes an “interface [that] contains buttons for
`controlling the playing of songs. These buttons allow the listener to step
`backward and forward through the list of selected songs, play the current
`song, and stop playing.” Id. at 7.
`c) Claim 1
`Petitioner compares the teachings of Chase to the requirements of
`claim 1 in detail and also relies upon Dr. Walker’s testimony. Pet. 26–38.
`Petitioner also relies upon Loeb “out of an abundance of caution” as
`additional evidence describing the use of Chase’s system by the “listener”
`recited in claim 1. Id. at 28–30, 34–36, 38. Among the types of listener-
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`oriented functionality described by Loeb is a user interface that permits the
`listener to control playback of songs including skipping through a list of
`selected songs. Id. at 36 (citing Ex. 1011, 6, 7, 9; Ex. 1002 ¶¶ 69, 70).
`Patent Owner counters that Chase does not describe a “‘file’
`containing sequencing data as clearly required by claim 1, but rather merely
`a directory that contains all of the audio files that make up the play list.”
`Prelim. Resp. 26 (citing Ex. 10075 ¶ 193). Patent Owner concludes that
`although “a directory of audio files may be a play list, such a directory is not
`a ‘file’ and certainly not a ‘file of data establishing a sequence.’” Prelim.
`Resp. 26.
`We are not persuaded by Patent Owner’s argument. In several
`instances, Chase refers to “play list files.” See, e.g., Ex. 1007 ¶¶ 41, 47.
`Similarly, Chase describes a “Playback List” that is “[a]n outline or log,
`associated with a particular audio program.” Id. ¶ 36. Although Chase
`explains that “a play list is represented by a directory,” Chase makes clear
`that “[i]n the directory is a file which is always named with the same name
`as the directory but has the extension ‘TXT’. This is an ASCII
`representation of the play list.” Id. ¶ 202. Paragraph 205 provides an
`example play list that is a sequence of records.
`d) Claim 4
`Claim 4 depends indirectly from claim 1 and further recites aspects of
`the “processor for . . .” that is recited in claim 1 as follows:
`said processor responds to a skip forward program selection
`command accepted from said listener by discontinuing the
`
`5 Patent Owner mistakenly refers to Ex. 1005 in its Preliminary Response,
`which is not Chase. We interpret Patent Owner’s citation to Ex. 1005 as
`being intended to cite Ex. 1007, which is Chase.
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`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 audio program
`file in said ordered sequence specified by said sequencing file.
`Ex. 1001, 46:34–41. We understand claim 4 to require that the “processor
`for . . .” recited in claim 1 include an additional algorithm that enables a skip
`forward functionality. The District Court in the Apple Litigation interpreted
`this element under § 112, ¶ 6. For those aspects of the limitation recited in
`claim 1, the District Court found that:
`The structure corresponding to the claimed function 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 14, lines
`25 to 26; column 14, lines 35 to 39; and column 34, line 19 to
`column 35, line 52. Specifically, this algorithm includes the
`following steps:
`(1) resetting the CurrentPlay variable to the record
`number of the listener-selected Selection_Record; and
`(2) fetching and playing the audio program file identified
`by
`the ProgramID
`contained
`in
`the
`new
`Selection_Record.
`Ex. 1014, 17–18.
`For those aspects of the limitation introduced in claim 4, the District
`Court found that:
`The structure corresponding to the claimed function 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:
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`(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.
`
`Id. at 18.
`Petitioner contends that the combination of Chase and Loeb suggests
`the “skip forward” functionality recited in claim 4. Pet. 40–43. Petitioner
`recognizes that “Loeb and Chase do not explicitly disclose the exact 112 ¶ 6
`construed structure” for requirement in claim 46 that the “processor . . . for
`discontinuing the reproduction of the currently playing audio program file
`and instead continuing the reproduction at the beginning of a listener-
`selected one of said audio program files in said collection in response to a
`program selection command from said listener.” Id. at 41. Nevertheless,
`Petitioner contends that an ordinarily skilled artisan, upon reviewing Chase’s
`source code appendix, would understand that Chase’s code allows a user to
`advance the playback to the next audio segment. Id. at 42 (citing Ex. 1018,
`401–3, 409). Based upon Chase and Loeb’s teachings regarding a listener
`discontinuing playback of one item in a play list to skip forward to another
`item in the play list and Chase’s source code appendix, Petitioner contends
`
`
`6 Petitioner recognizes the same issue in connection with the “processor for
`. . .” element as recited in claim 1. Pet. 37. Nevertheless, Patent Owner
`does not contend that the Chase and Loeb fail to suggest the “processor for
`. . .” element of claim 1. Prelim. Resp. 24–27. Even if Patent Owner were
`to make such an argument, however, we would not be persuaded by it for the
`reasons expressed in this section of our Decision.
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`that the “processor for . . .” element of claim 1 would have been obvious to
`an ordinarily skilled artisan. Pet. 40–42.
`Patent Owner argues that, although Petitioner identifies Chase’s
`CurElement variable as corresponding to the ’178 patent’s “CurrentPlay”
`variable (a feature of the second step in the algorithm), Petitioner does not
`adequately address the first and third steps of the algorithm. Prelim.
`Resp. 28. According to Patent Owner, because Chase’s play list is a
`directory, rather than a file, Chase cannot teach a file containing sequence
`data in the form of Selection_Records representing playable objects and,
`thus, cannot teach a particular instance of the Selection_Record variable of
`an appropriate LocType, as required by the first step of the algorithm. Id. at
`28–29.
`We are not persuaded by Patent Owner’s argument. As explained
`above, Chase repeatedly describes a play list as a file. Thus, we agree with
`Petitioner that the source code example in Chase of scanning forward in a
`play list to find a next playable element is a teaching of scanning forward in
`a sequencing file to locate a next selection record. Although Chase’s source
`code does not use the same variable names as the Specification, we are
`persuaded, on this record, that an ordinarily skilled artisan would have
`understood Chase to teach the steps of the algorithm corresponding to the
`“skip” functionality recited in claim 4. We also are persuaded that an
`ordinarily skilled artisan would have had reason to apply Chase’s algorithm
`to Loeb’s teaching. As Petitioner points out (Pet. 40), Patent Owner
`admitted during prosecution that functions such as skipping forward and
`backward were conventional features of audio players such as CD players.
`Ex. 1005, 52.
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`For the reasons explained above, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that the
`combination of Chase and Loeb renders claims 1–4, 9, and 13 obvious under
`35 U.S.C. § 103.
`2. Obviousness of Claims 5, 6, 14–17, 28, and 29 in View of
`Chase, Loeb, and Inazawa
`Claim 5 depends directly from claim 4 and indirectly from claims 1–3
`and further requires that the processor in the audio player respond to a skip
`backward command. Ex. 1001, 46:19–49. Claim 6 depends from claim 5
`and thus includes all limitations of claim 5. Id. at 46:50–59. Independent
`claim 14, and therefore its dependent claims 15–17, 28, and 29, also require,
`among other capabilities, an ability to restart playback of the currently
`playing audio selection or to skip backward to the previous item in the
`playlist. Id. at 48:50–67.
`a) Overview of Inazawa
`Inazawa describes a disc player for reproducing audio information
`recorded on a digital audio disc. Ex. 1009, Abstract. Program information
`containing a plurality of partitions is recorded along with address data onto
`the disc. Id. at 2:66–3:4. Inazawa describes push-button type controls for
`moving through program selections, for example a first program selecting
`key for making the disc player take a forward program selection mode and a
`second program selecting key for making the disc player take a reverse
`program selection mode. Id. at 3:43–62. If partition N currently is being
`played and the second program selecting key is pressed once, the disc player
`plays partition N from the beginning. Id. at 6:5–29, 7:32–56. If the second
`program selecting key is pressed twice within a certain time, the disc player
`plays partition N–1. Id. at 6:61–7:20, 7:32–56.
`
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`IPR2015-00846
`Patent 7,509,178 B2
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`b) Analysis
`Petitioner contends that claims 5, 6, 14–17, 28, and 29 are rendered
`unpatentable as obvious in view of Chase, Loeb, and Inazawa. Pet. 44–56.
`In support of its challenge to claims 5, 6, 14–17, 28, and 29, Petitioner
`largely reiterates its arguments and citations to evidence relating to claim 1
`and further relies upon Inazawa as describing the ability to skip forward and
`backward and to restart a currently playing audio track. Pet. 44–56. Patent
`Owner counters that neither Chase nor Loeb describes the sequencing file
`recited in claim 1 and claim 14 and that Inazawa does not cure the defect in
`Petitioner’s argument. Prelim. Resp. 30–32. For reasons expressed in part
`II.B.1.c) above, we do not consider Patent Owner’s argument to be
`persuasive. Accordingly, on the record currently before us, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`showing the combination of Chase, Loeb, and Inazawa renders claims 5, 6,
`14–17, 28, and 29 unpatentable as obvious.
`3. Obviousness of Claims 7 and 8 in View of Chase, Loeb,
`Inazawa, and Bolton
`Claim 7 depends directly upon claim 6 and indirectly upon claims 1–5
`and further requires that the processor support specific functionality to skip
`backward from the first program within the playlist or skip forward from the
`last program in the playlist. Ex. 1001, 46:19–47:6. Claim 8 depends
`directly upon claim 7. Id. at 47:7–26. Claim 8 recites limitations similar to
`those introduced in claim 29. Compare id. (claim 8) with id. at 50:48–61
`(claim 29).
`Petitioner incorporates its argument and evidence demonstrating the
`obviousness of claim 6 and claim 29 in view of Chase, Loeb, and Inazawa.
`Pet. 56–60. Petitioner acknowledges that Chase, Loeb, and Inazawa are
`
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`IPR2015-00846
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`silent regarding what occurs when skipping forward or backward from the
`back or front end of the play list. Id. at 57. Petitioner relies upon Bolton as
`describing such functionality to render claims 7 and 8 obvious. Id. at 57–58
`(citing Ex. 1010, Abstract, 4:5–17, 5:8–12, 8:63–66, 9:12–10:7, Figs. 6 and
`7). Petitioner also relies upon Dr. Walker’s testimony to support its
`contention. Id. at 58–60 (citing Ex. 1002 ¶¶ 143–46).
`Patent Owner counters that Petitioner has failed to demonstrate that
`the combination of Chase, Loeb, and Inazawa renders claim 6 unpatentable
`as obvious and that Bolton fails to cure the deficiencies in the argument with
`respect to claim 6. Prelim. Resp. 32. As indicated above, we do not find
`Patent Owner’s argument to be persuasive at this stage of the proceeding.
`Accordingly, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing that the combination of Chase, Loeb,
`Inazawa, and Bolton renders claims 7 and 8 unpatentable as obvious.
`III. ORDER
`For the reasons given, it is:
`ORDERED that an inter partes review is instituted with respect to
`Petitioner’s challenge that claims 1–4, 9, and 13 are unpatentable as obvious
`under 35 U.S.C. § 103 in view of Chase and Loeb;
`FURTHER ORDERED that an inter partes review is instituted with
`respect to Petitioner’s challenge that claims 5, 6, 14–17, 28, and 29 are
`unpatentable as obvious under 35 U.S.C. § 103 in view of Chase, Loeb, and
`Inazawa;
`FURTHER ORDERED that an inter partes review is instituted with
`respect to Petitioner’s challenge that claims 7 and 8 are unpatentable as
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`IPR2015-00846
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`obvious under 35 U.S.C. § 103 in view of Chase, Loeb, Inazawa, and
`Bolton;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ178 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
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`IPR2015-00846
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`PETITIONER:
`
`Daniel M. De Vos
`Matthew N. Nicholson
`NICHOLSON DE VOS WEBSTER & ELLIOTT LLP
`dan@nicholsondevos.com
`matt@nicholsondevos.com
`
`PATENT OWNER:
`
`Minghui Yang
`Greg Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`myang@dpelaw.com
`gdonahue@dpelaw.com
`
`20
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