Trials@uspto.gov Paper 7
`571-272-7822 Entered: April 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01991
`Patent 7,787,904 B2
`____________
`
`
`
`
`
`
`
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822 Entered: April 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01991
`Patent 7,787,904 B2
`____________
`
`
`
`
`
`
`
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01991
`Patent 7,787,904 B2
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition for inter partes
`review of claims 1–5, 7–10, 12, and 14–18 of U.S. Patent No. 7,787,904 B2
`(Ex. 1001, “the ’904 patent”). Paper 2 (“Pet.”). Patent Owner, Qurio
`Holdings, Inc., filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . and any response . . . 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.”
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented does not show there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`claims 1–5, 7–10, 12, and 14–18 of the ’904 patent. Accordingly, we deny
`institution of an inter partes review.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2; Paper 5 (Patent Owner’s Mandatory
`Notices). We also note that two additional requests for inter partes reviews
`of the ’904 patent have been filed—DIRECTV, LLC v. Qurio Holdings, Inc.,
`Case IPR2015-02005 (PTAB October 1, 2015) (Paper 2) and DISH Network
`L.L.C. v. Qurio Holdings, Inc., Case IPR2016-00007 (PTAB October 2,
`2015) (Paper 1).
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`B. The ’904 Patent
`The ’904 patent relates to techniques for using a mobile device to
`control content played by multiple media players. Ex. 1001, Abs., 1:6–7,
`1:26–27. According to the ’904 patent, these techniques address the
`problem of ascertaining and selecting media content available on numerous
`media devices (such as computers, televisions with digital video recorders,
`MP3 players) at various locations (such as one’s home, office, or
`automobile). Id. at 1:12–22. Figure 1, reproduced below, shows an
`exemplary system 10. Id. at 2:58–59.
`
`
`System 10 includes two wireless personal networks (“WPANs”) 12 and 14,
`each having a media device 16 or 18, respectively. Id. at 2:64–3:3. The
`range of each WPAN depends on the range of the wireless communication
`interface associated with its media device. Id. According to the ’904 patent,
`the wireless communication interface “may operate according to a wireless
`communication standard such as . . . the Bluetooth wireless communication
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`standard, the Zigbee wireless communication standard, the Wireless Fidelity
`(WiFi) wireless communication standard, or IEEE 802.11 wireless
`communication standards.” Id. at 3:40–47. Each media device includes a
`media player and content that can be played by the media player. Id. at
`3:4–6.
`System 10 also includes mobile device 20 that includes a wireless
`communication interface and “operates to control the content played by the
`media players of the media devices 16 and 18.” Id. at 3:6–8. The
`’904 patent provides examples of mobile device 20—a mobile phone, a
`Personal Digital Assistant (“PDA”), or “a stand-alone device similar to a
`remote control.” Id. at 4:3–7.
`As shown in Figure 1, mobile device 20 is within the range of
`WPAN 12 having media device 16. Id. at Fig. 1. According to the
`’904 patent, the first time mobile device 20 enters WPAN 12, the mobile
`device communicates with media device 16 to obtain metadata defining the
`content and stores the metadata. Id. at 3:8–12. The ’904 patent describes
`the metadata as “any information describing the content stored at media
`device 16.” Id. at 3:13–14. In some embodiments, metadata may include “a
`file name, file type, and an identifier of the WPAN” and be stored in a media
`database on a control system of mobile device 20. Id. at 4:7–9, 4:21–22,
`4:30–33.
`After the mobile device stores the metadata about content on the
`media device and when the mobile device is within the WPAN associated
`with the media device, “a user associated with the mobile device 20 may
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`select desired content to be played using the stored metadata” or “the mobile
`device 20 may automatically select desired content to be played using the
`stored metadata.” Id. at 3:15–18. Then the mobile device communicates
`with media device 16 to play the selected content. Id. at 3:8–20.
`
`C. Illustrative Claim
`Claims 1 and 16 of the challenged claims in the ’904 patent are
`independent. Claim 1 is illustrative of the claimed subject matter:
`1. A mobile device for controlling digital content played by a
`plurality of media devices comprising:
`a) a wireless communication interface for communicating with
`the plurality of media devices;
`b) a media database; and
`c) a control system adapted to, for each of the plurality of media
`devices:
`
`i) communicate with the media device when the mobile
`device is within a wireless personal area network (WPAN)
`associated with the media device to obtain information
`describing content residing at the media device; and
`ii) store the information describing the content residing at
`the media device in the media database;
`wherein desired content is selected from the content at the
`media device based on the information in the media database and
`played at the media device when the mobile device is within the
`WPAN associated with the media device.
`Ex. 1001, 8:37–55.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–5, 7–10, 12, and 14–18 of the
`’904 patent are unpatentable under 35 U.S.C. § 1031 based on the following
`specific grounds (Pet. 8–60):
`References
`Lambourne2 and Elabbady3
`Lambourne, Elabbady, and Meade4
`Lambourne, Elabbady, Meade, and
`Plastina 20035
`Lambourne, Elabbady, and Dwek6
`Lambourne, Elabbady, and Melpignano7
`Lambourne, Elabbady, and Weinans8
`Lambourne, Elabbady, and Willson9
`
`Basis Challenged Claim[s]
`§ 103
`1–3, 12, 16, and 17
`§ 103
`4 and 7
`§ 103
`5 and 8
`9
`10 and 18
`14
`15
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`
`1 Section 3(c) of the Leahy-Smith America Invents Act (“AIA”) amended
`35 U.S.C. § 103. Pub. L. No. 112-29, 125 Stat. 284, 287–288 (2011).
`Because the ’904 patent has a filing date before March 16, 2013 (effective
`date of section 3), the pre-AIA version of § 103 applies in this proceeding.
`See id. § 3(n)(1), 125 Stat. at 293.
`2 U.S. Patent No. 7,571,014 B1, issued Aug. 4, 2009 (Ex. 1005,
`“Lambourne”).
`3 U.S. Patent No. 7,483,958 B1, issued Jan. 27, 2009 (Ex. 1006,
`“Elabbady”). Elabbady is listed in the Examiner’s Notice of References
`provided with the Notice of Allowability for the ’904 patent. Ex. 1004, 13.
`4 US 2003/0073412 A1, pub. Apr. 17, 2003 (Ex. 1009, “Meade”).
`5 US 2003/0182315 A1, pub. Sept. 25, 2003 (Ex. 1010, “Plastina 2003”).
`6 US 2001/0018858 A1, pub. Sept. 6, 2001 (Ex. 1011, “Dwek”).
`7 WO 2004/008693 A1, pub. Jan. 22, 2004 (Ex. 1012, “Melpignano”).
`8 WO 2002/056536 A1, pub. July 18, 2002 (Ex. 1013, “Weinans”).
`9 US 2003/0033413 A1, pub. Feb. 13, 2003 (Ex. 1014, “Willson”).
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`References
`Chen10 and Plastina11
`Chen, Plastina, and Meade
`Chen, Plastina, Meade, and Plastina 2003
`Chen, Plastina, and Dwek
`Chen, Plastina, and Melpignano
`Chen, Plastina, and Weinans
`Chen, Plastina, and Willson
`
`Basis Challenged Claim[s]
`§ 103
`1–3, 12, 16, and 17
`§ 103
`4 and 7
`§ 103
`5 and 8
`§ 103
`9
`§ 103
`10 and 18
`§ 103
`14
`§ 103
`15
`
`II. DISCUSSION
`
`A. Claim Construction
`Petitioner and Patent Owner each propose constructions for several
`claim limitations. Pet. 6–7; Prelim. Resp. 9–15. On this record and for
`purposes of this decision, we determine that no claim terms require express
`construction.
`
`B. Asserted Grounds of Obviousness over Lambourne and Elabbady,
`Alone or in Combination with Other References
`Petitioner contends that claims 1–3, 12, 16, and 17 of the ’904 patent
`are unpatentable under 35 U.S.C. § 103 as obvious over Lambourne and
`Elabbady. Pet. 8–23. Petitioner further contends that claims 4, 5, 7–10, 14,
`15, and 18 are unpatentable under 35 U.S.C. § 103 as obvious over
`
`
`10 U.S. Patent No. 8,479,238 B2, issued July 2, 2013 (Ex. 1007, “Chen”).
`11 US 2007/0048712 A1, pub. Mar. 1, 2007 (Ex. 1008, “Plastina”). Plastina
`is listed in the Examiner’s Notice of References provided with the Notice of
`Allowability for the ’904 patent. Ex. 1004, 13.
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`Lambourne, Elabbady, and various other references. Id. at 41–60.
`Petitioner supports its contentions with citations to the references and with
`declaration testimony of Jon Weissman, Ph.D. (Ex. 1002). Id. at 8–23, 41–
`60. Patent Owner opposes. Prelim. Resp. 16–26.
`A claim is unpatentable as obvious “if the differences between the
`claimed subject matter sought to be patented and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art.”
`35 U.S.C. § 103. “In an [inter partes review], the petitioner has the burden
`from the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL
`798192, at *4 (Fed. Cir. March 1, 2016) (citing 35 U.S.C. § 312(a)(3)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”)). Thus,
`Petitioner must explain how the combination of Lambourne and Elabbady
`would have rendered the challenged claims unpatentable. For the reasons
`that follow, we determine that Petitioner has not done so.
`
`1. Summary of Lambourne
`Lambourne is a United States Patent that describes techniques for
`controlling multimedia players in “a multi-zone system.” Ex. 1005, Abs.,
`1:18–22. According to Lambourne, audio sources for an audio player in
`such systems may be provided locally at the audio player itself or from a
`centrally located audio source. Id. at 1:38–45. Lambourne addresses the
`problem of controlling a household audio system including multiple audio
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`players. Id. at 1:24–38. Lambourne describes using a controller to control
`the audio source for one or more audio players. Id. at 2:24–31. Figure 1 of
`Lambourne, reproduced below, depicts an audio system in a residential
`home. Id. at 4:58–63, 5:4–7.
`
`
`As shown in Figure 1, system 100 includes audio devices 102, 104,
`and 106, each of which is located in a particular area, called a “zone” and is
`referred to as a “zone player.” Id. at 4:63–67. In the example of Figure 1,
`audio devices are located in various rooms of the home. Id. at 5:5–8. Each
`audio player is coupled to network 108, which may be a wireless network
`based on the industry standard 802.11. Id. at 5:8–18. In addition to the
`audio players, computing device 110 is coupled to network 108. Id. at 5:9–
`11. Other devices, such as a MP3 player, a storage device, and a home
`gateway device, may be coupled to network 108. Id. at 5:11–13.
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`According to Lambourne, “[m]any devices on the network 108 are
`configured to download and store audio sources.” Id. at 5:22–23. As an
`example, Lambourne describes storing audio files downloaded from the
`Internet on computer device 110 “for sharing with other devices” on
`network 108. Id. at 5:23–26.
`Lambourne indicates “[m]any devices on the network 108 may be
`configured to control operations of the zone players 102, 104 and 106.” Id.
`at 6:6–7. Figure 1 shows two examples—controlling devices 140 and 142.
`Id. at 6:7–10. The controlling devices are “portable and remotely control the
`zone players via wireless means (e.g., infrared, radio, wireless standard
`IEEE 802.11b or 802.11g).” Id. at 6:10–13. Figure 2B of Lambourne,
`reproduced below, depicts example 240 of controlling device 140 or 142.
`Id. at 7:23–25.
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`Controller 240 facilitates selection of audio sources available on the network
`and controls operations of zone players through a wireless interface.12 Id. at
`7:25–32.
`
`2. Summary of Elabbady
`Elabbady is a United States Patent that describes techniques for
`sharing media content, such as digital music files and digital video files
`downloaded using an Internet connection to personal computers (“PCs”).
`Ex. 1006, Abs., 1:14–23. Figure 2A of Elabbady, reproduced below, depicts
`a media content sharing environment 200.
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`12 Lambourne indicates a wireless interface may be referred to as an RF
`interface. Ex. 1005, 6:38–39.
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`As depicted in Figure 2A, media content sharing environment 200 includes
`devices 202, 206a–d, and 300 connected by network 204. Id. at 5:24–31.
`Device 202 “is configured to provide media cataloging service (CS) over a
`network 204” for devices 206a–d that are configured to act as media players.
`Id. As shown in Figure 2A, devices 206a and 206d also provide “media
`library services (LSs).” Id. Device 202 connects through Internet 208 to
`server 210, which has a media content sharing mechanism—database 212.
`Id. at 5:34–39.
`Media catalog service (CS) 203 on device 202, which is “a personal
`computer (PC) or like device,” gathers and distributes information about
`media content available for sharing between the connected devices. Id.
`at 6:8–11, 6:53–56. For example, the media catalog service 203 may query
`the other devices “to gather information about shared media content.” Id. at
`6:11–15. The gathered data may include “metadata” associated with the
`media content, such as media content descriptive information and location
`information. Id. at 6:28–36. For example, media library service 207 on
`device 206d provides, to media catalog service 203, metadata about media
`content available on device 206d. Id. at 7:16–21. Then the media catalog
`service 203 converts the received metadata “to produce the media catalog in
`the form of a markup language file.” Id. at 6:37–39. Media catalog
`service 203 “can publish” the aggregated information in the media catalog,
`which may be formatted for displaying in a user interface. Id. at 6:19–23.
`Device 300 is configured to play shared media content and is
`“operatively interconnected” to devices 202 and 206 through network 204.
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`Id. at 9:56–60. Device 300 queries media catalog 203 on device 202, which
`returns query results to device 300. Id. at 10: 17–18. For example, “a query
`of the media catalog for music could result in one or more matches that are
`identified” by a location identifier to device 300 and then a selected media
`content file could be provided to device 300 from device 206. Id. at 10:18–
`39. Thereafter, device 300 plays the received media content file. Id.
`at 10:39–42.
`
`3. Petitioner’s Contentions
`Independent claim 1 recites “[a] mobile device for controlling digital
`content played by a plurality of media devices” that includes “(a) a wireless
`communication interface for communicating with the plurality of media
`devices; (b) a media database; and (c) a control system.” The recited
`“control system” on the mobile device is “adapted to, for each of the . . .
`media devices: . . . [to] store the information describing the content residing
`at the media device in the media database.” Claim 1 also requires that the
`controller use the media database in a particular manner: to select desired
`content from the content at the media device based on the information in the
`media database and to play the desired content at the media device under
`certain conditions.
`Petitioner contends that the combination of Lambourne and Elabbady
`would have conveyed these limitations to one of ordinary skill in the art at
`the time of the invention. Pet. 12–17. In general, Petitioner relies on
`Lambourne’s controller 140 for the recited mobile device. Id. Petitioner
`contends “Lambourne describes a ‘music menu’ providing a list of available
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`content residing at a zone player” on Lambourne’s controller. Id. at 12
`(citing Ex. 1005, 7:59–61). Petitioner acknowledges, as does Petitioner’s
`declarant, that Lambourne “does not explicitly disclose how the data used to
`create the music menu is stored.” Id. (citing Ex. 1002 ¶ 37).
`With no express teaching of a media database on Lambourne’s
`controller, Petitioner relies on Elabbady’s media catalog. Petitioner
`contends that, because Lambourne discloses a music menu, one of ordinary
`skill in the art “would have been motivated to use the media cataloging
`service 203 and media catalog 205 of Elabbady to easily implement this
`feature” of the recited mobile device having a media database storing
`information describing content residing at the media devices. Id. at 13
`(citing Ex. 1005 7:59–61, Ex. 1002 ¶¶ 42–45).
`More specifically, Petitioner contends that “Lambourne is silent as to
`how this menu is generated, but Elabbady discloses a system for generating
`a media catalog and providing it to a user.” Id. at 10–11 (citing Ex. 1002
`¶ 43). With support from its declarant, Petitioner contends it would have
`been within the ability of one of ordinary skill in the art “to implement
`Elabbady’s disclosure of a media catalog service within the controller of
`Lambourne,” which includes a network interface, memory, and a processor.
`Id. at 11 (citing Ex. 1005, 3:6–12, 8:19–8, Ex. 1002 ¶¶ 42–45). Petitioner
`and its declarant continue that one of ordinary skill in the art “would have
`been motivated” to generate a music menu in this way “to reduce network
`congestion and improve performance and enhance the ability to remotely
`control multimedia, as advocated by Elabbady and Lambourne.” Id. (citing
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`Ex. 1002 ¶¶ 42, 43, 45). Petitioner concludes, with support from its
`declarant, that Lambourne’s “[c]ontroller 140 would then store the
`information describing the zone player content in” a media database. Id.
`(citing Ex. 1002 ¶ 43).
`
`4. Analysis
`In response, Patent Owner contends that Petitioner’s combination is
`insufficient because Elabbady “does not disclose or suggest storing a media
`database at the remote control.” Prelim. Resp. 22. Rather, according to
`Patent Owner, Elabbady’s media catalog service is on a separate device 202
`that does not control the media player. Id.
`We agree with Patent Owner that Elabbady, like Lambourne, does not
`teach expressly a media database stored on a mobile device in the manner
`required by claim 1. In addition, as discussed supra in Part II.B.3.,
`Petitioner acknowledges that Lambourne “does not explicitly disclose how
`the data used to create the music menu is stored.” Pet. 12. Elabbady
`describes a media catalog for use by a control device, and Lambourne
`describes a controller for selecting music to be played on audio devices.
`Thus, both parties appear to recognize, as we do, that neither reference
`expressly describes a media database storing content available at a media
`device on a mobile device, from which content at the media device is
`selected based on information in the media database. Pet. 12; Prelim.
`Resp. 21–22.
`That neither reference describes such a mobile device is not
`dispositive. Rather, the test for obviousness “is what the combined
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`teachings of the references would have suggested to those having ordinary
`skill in the art.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing
`In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, it is axiomatic,
`that an asserted ground of obviousness must demonstrate articulated
`reasoning with rational underpinning to support the legal conclusion of
`obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Mere
`conclusory statements are not sufficient. Id. Furthermore, “[c]are must be
`taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide
`through the maze of prior art references, combining the right references in
`the right way so as to achieve the result of the claims in suit.’” Grain
`Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir.
`1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012
`(Fed. Cir. 1983)).
`Accordingly, the central issue before us is why one of ordinary skill in
`the art at the time the invention was made would have combined Elabbady’s
`media catalog with Lambourne’s system in the manner proposed by
`Petitioner and required by the claims: by storing Elabbady’s media catalog
`(the recited “media database”) on Lambourne’s controller (the recited
`“mobile device”). Petitioner provides insufficient analysis or evidence that
`one of ordinary skill in the art would have combined Elabbady’s media
`catalog with the controller of Lambourne.
`Instead, Petitioner provides analysis and support for its contention that
`one of ordinary skill in the art would have looked to Elabbady for how to
`generate Lambourne’s music menu. Pet. 10–11 (“Lambourne is silent as to
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`how this menu is generated, but Elabbady discloses a system for generating
`a media catalog and providing it to a user.”); id. at 11 (contending one of
`ordinary skill in the art “would have been motivated to” implement
`Elabbady’s disclosure of a media catalog service within the controller of
`Lambourne because “Elabbady discloses a simple, optimized method of
`generating the music menu advertised by Lambourne”).
`Petitioner’s analysis regarding combining Elabbady’s menu
`generation techniques with Lambourne’s system does not provide sufficient
`reasoning for why the combination of Lambourne and Elabbady would have
`suggested to one of ordinary skill in the art placing Elabbady’s media
`catalog on the controller of Lambourne. For a purported reason to combine
`the references, Petitioner states “caching metadata for the music menu would
`reduce network congestion and improve performance and enhance the ability
`to remotely control multimedia, as advocated by Elabbady and Lambourne.”
`Pet. 11 (citing Ex. 1006, 1:44–53; Ex. 1005, 2:5–13; Ex. 1002 ¶ 45).
`Petitioner’s statement, which merely restates Dr. Weissman’s testimony, is
`conclusory. Ex. 1002 ¶ 45 (“Given the disclosure of Lambourne, one of
`ordinary skill would be motivated to include this feature, because caching
`metadata for the music menu would reduce network communication and
`therefore improve performance and enhance the ability to remotely control
`multimedia, as both Elabbady and Lambourne advocate. EX1006 at
`1:44-52; EX1005 at 2:5–13.”). Neither Petitioner, nor its declarant, explains
`sufficiently how the benefits of caching the music menu would have
`conveyed to one of ordinary skill in the art the idea of storing the media
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`catalog/database on Lambourne’s controller. Thus, we accord
`Dr. Weissman’s testimony in this regard little weight. 37 C.F.R. § 42.65(a)
`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.”).
`Furthermore, Petitioner does not explain sufficiently why one of
`ordinary skill in the art would have combined Elabbady’s media catalog
`service with Lambourne’s controller 140, rather than combining Elabbady’s
`media catalog service with other of Lambourne’s devices. See Pet. 10–13.
`For example, Petitioner does not provide a reason why one of ordinary skill
`in the art would store Elabbady’s media catalog on Lambourne’s controller,
`rather than on Lambourne’s computing device 110 that stores audio files
`downloaded from the Internet. See Ex. 1005, 5:23–26. Similarly, Petitioner
`does not explain why one of ordinary skill in the art would have stored
`Elabbady’s media catalog on Lambourne’s controller, rather than storing it
`on Lambourne’s storage device or MP3 player. See id. at 5:9–13.
`For these reasons, we determine that the Petition falls short of
`providing an articulated reasoning with rational underpinning for combining
`the teachings of Lambourne and Elabbady in the manner required by
`claim 1—storing Elabbady’s media catalog on Lambourne’s controller. See
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent
`composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in the
`prior art”).
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`Independent claim 16 similarly recites “storing the information
`describing the content residing at the media device in a media database of
`the mobile device” and “selecting desired content to play from the content
`residing at the media device based on the media database when” certain
`conditions are met; and “playing the desired content at the media device.”
`Regarding independent claim 16, Petitioner makes substantially similar
`arguments regarding Lambourne and Elabbady to those Petitioner makes for
`claim 1. Pet. 21–23.
`For similar reasons, we determine that the Petition also falls short of
`providing an articulated reasoning with rational underpinning for combining
`the teachings of Lambourne and Elabbady in the manner required by
`independent claim 16.
`Accordingly, we determine the Petition does not show a reasonable
`likelihood that Petitioner would prevail in establishing independent claim 1,
`independent claim 16, or dependent claims 2–5, 7–10, 12, 14, 15, 17, and 18
`would have been obvious over the combination of Lambourne and Elabbady
`or over the combination Lambourne and Elabbady with other references
`(i.e., Meade, Dwek, Melpignano, Weinans, or Willson).
`C. Asserted Grounds of Obviousness over Chen and Plastina,
`Alone or in Combination with Other References
`Petitioner contends that claims 1–3, 12, 16, and 17 of the ’904 patent
`are unpatentable under 35 U.S.C. § 103 as obvious over Chen and Plastina.
`Pet. 23–41. Petitioner further contends that claims 4, 5, 7–10, 14, 15, and 18
`are unpatentable under 35 U.S.C. § 103 as obvious over Chen, Plastina, and
`various other references. Id. at 41–60. Petitioner supports its contentions
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`with citations to the references and with declaration testimony of
`Dr. Weissman (Ex. 1002). Id. at 23–60. Patent Owner opposes. Prelim.
`Resp. 26–36. For the reasons that follow, we determine that Petitioner does
`not explain sufficiently how the combination of Chen and Plastina would
`have rendered the challenged claims unpatentable.
`
`1. Summary of Chen
`Chen is a United States Patent that describes techniques for
`controlling video playback on a video device using a separate controller.
`Ex. 1007, Abs., 4:47–50. Figure 2 of Chen, reproduced below, depicts a
`network topology for implementing Chen’s techniques. Id. at 4:44–45.
`
`
`As depicted in Figure 2, consumer premises 210 includes control device 212
`that communicates through network access point 214 over network 216. Id.
`at 6:45–47. Control device 212 controls playback of video on video
`device 218, such as a television or computer monitor, which is located at
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`consumer premises 210. Id. at 5:4–7. Chen indicates control device 212
`may be a “Personal Digital Assistant (PDA).” Id. at 4:47–50.
`“Video server 220 stores the video database” of content that is
`streamed to video device 218, and “[m]ultimedia server 222 stores the
`multimedia database,” which includes content specific data corresponding to
`video data stored on video server. Id. at 5:14–18, 5:40–43. Video server,
`multimedia server, and video device are each connected to network 216. Id.
`at 5:7–9, 5:14–18. A consumer “interacts with the control device and
`multimedia data displayed” on the control device to select a video program,
`which is transmitted from video server 220 over network 216 and displayed
`on video device 218. Id. at 5:25–28, 5:58–62.
`
`2. Summary of Plastina
`Plastina is a United States Patent Application Publication that
`describes techniques for managing media playback across multiple devices.
`Ex. 1008 ¶¶ 1–3, 16–17. Figure 1 of Plastina, reproduced below, depicts a
`media playing system. Id. ¶ 14.
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`As shown in Figure 1, media player system 100 includes user computer 102
`that executes media player application 116 to play local media files stored in
`local media library 112. Id. ¶ 16. Media player application 116 also
`communicates over network 104 to media internet service site 120, having
`server 108 and metadata 110, that enables media player application 116 to
`access, retrieve, and display metadata related to the digital media being
`played by media player application. Id. ¶¶ 17, 18. Such metadata includes
`title, composer, performer, genre, and description of the content. Id. ¶ 17.
`Media player application 116 also may communicate with remote
`media server 122 having server 124 and remote library 126, which is a
`catalog of available media files. Id. ¶ 20. Local copy 130 of remote library
`126 is maintained on user computer 12. Id. ¶ 28.
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`3. Petitioner’s Contentions
`Petitioner contends that the combination of Chen and Plastina would
`have conveyed the limitations recited in claim 1 to one of ordinary skill in
`the art at the time of the invention. Pet. 27–35. In general, Petitioner relies
`on Chen’s control device for the recited mobile device. Id. Petitioner
`acknowledges, as does Petitioner’s declarant, that Chen “does not explicitly
`disclose that information describing the available content is stored on the
`control device.” Id. at 25 (citing Ex. 1002 ¶ 53).
`With support from its declarant, Petitioner contends “[i]t would have
`been obvious to [one of ordinary skill in the art] to combine the teachings of
`[Plastina’s] disclosure of a locally maintained metadata catalog with Chen’s
`control device.” Id. at 26 (citing Ex. 1002 ¶¶ 53–57). One of ordinary skill
`in the art would have done so because “[s]toring metadata on the control
`device ensures the control device displays the content lists faster.” Id.
`(citing Ex. 1002 ¶ 55, Ex. 1008 ¶ 31). Petitioner further contends that it
`would have been “a simple design choice” to implement the database of
`Plastina with the control device of Chen. Id. at 26–27 (citing Ex. 1002
`¶ 57).
`
`In addition, because Chen describes combining the multimedia server
`and video server in the same server, Petitioner contends that one of ordinary
`skill in the art would have combined Chen’s combined multimedia/video
`server with Chen’s video device 218. Id. at 30. Petitioner concludes that
`this combination “would result in direct communication between control
`device 212 and video device 218,” which, according to Petitioner,
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`correspond to the recited mobile device and media device, respectively. Id.
`at 31.
`
`4. Analysis
`In response, Patent Owner contends Petitioner’s combination is
`insufficient because Plastina describes storing the copy of the remote library
`at computer 102, which is also the media player and is not a separate mobile
`device, as required by claim 1. Prelim. Resp. 34–35. Further, Patent Owner
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