Trials@uspto.gov
`571-272-7822
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`Paper 6
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` Entered: April 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
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`QURIO HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00007
`Patent 7,787,904 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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`Paper 6
`
` Entered: April 4, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00007
`Patent 7,787,904 B2
`____________
`
`
`
`Before BARBARA A. BENOIT, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00007
`Patent 7,787,904 B2
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`
`I. INTRODUCTION
`DISH Network L.L.C. (“Petitioner”) filed a Petition for inter partes
`review of claims 1–4, 7, 10, 12–18, and 20 of U.S. Patent No. 7,787,904 B2
`(Ex. 1001, “the ’904 patent”). Paper 1 (“Pet.”). Patent Owner, Qurio
`Holdings, Inc., filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one of claims 1–4, 7, 10, 12–18, and 20 (“the challenged claims”).
`
`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. 1; Paper 4 (Patent Owner’s Mandatory
`Notices). We also note that two additional requests for inter partes reviews of
`the ’904 patent have been filed—Unified Patents Inc. v. Qurio Holdings, Inc.,
`Case IPR2015–01991 (PTAB September 28, 2015) (Paper 2) and DIRECTV,
`LLC v. Qurio Holdings, Inc., Case IPR2015–02005 (PTAB October 1, 2015)
`(Paper 3).
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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 standard, the Zigbee
`wireless communication standard, the Wireless Fidelity (WiFi) wireless
`communication standard, or the IEEE 802.11 wireless communication
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`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 the media device 16.” Id. at 3:13–
`14. In some embodiments, metadata may include “a file name, file type, and an
`identifier of the WPANs” 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 select desired
`content to be played using the stored metadata” or “mobile device 20 may
`automatically select desired content to be played based on user preferences.”
`Id. at 3:15–18. Then the mobile device communicates with media device 16 to
`play the selected content. Id. at 3:8–20.
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`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.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–4, 7, 10, 12–18, and 20 of the ’904
`patent are unpatentable under 35 U.S.C. § 1031 based on the following specific
`grounds (Pet. 10–58):
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`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.
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`References
`Morse2 and Meade3
`Morse, Meade, and Terada4
`Morse, Meade, and Krikorian5
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Challenged Claim[s]
`1–4, 7, 10, 12, and 15–18
`13 and 20
`14
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`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015)
`(“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”), cert. granted, sub nom., Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed
`to be given their ordinary and customary meaning as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Further, “[t]he PTO should also consult the patent’s prosecution
`history in proceedings in which the patent has been brought back to the
`
`
`2 U.S. Patent No. 7,535,465 B2, issued May 19, 2009 (Ex. 1004, “Morse”).
`3 US 2003/0071117 A1, pub. Apr. 16, 2003 (Ex. 1005, “Meade”).
`4 US 2004/0073610 A1, pub. Apr. 15, 2004 (Ex. 1006, “Terada”).
`5 U.S. Patent No. 7,647,614 B2, issued Jan. 12, 2010 (Ex. 1007, “Krikorian”).
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`agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015).
`Petitioner and Patent Owner propose constructions for some claim
`limitations. Pet. 11; Prelim. Resp. 9–13. For purposes of this decision, we
`construe “media database.” We determine that no other terms require express
`construction for this decision.
`Independent claim 1 recites “a media database,” as does independent
`claim 16. Dependent claims 2, 3, 10, 13, 17, 18, and 20 each recites
`additional limitations regarding “the media database.” Petitioner does not
`propose an express construction for “media database.” Pet. 11. Patent Owner
`contends the broadest reasonable construction of “media database” consistent
`with the Specification of the ’904 patent is “an organized collection of
`information describing media content residing at the media device.” Prelim.
`Resp. 16 (citing Ex. 1001, 4:27–33, Fig. 5).
`The ’904 patent does not set forth a special definition for “media
`database.” The plain language of the claims describes types of information
`stored in the media database—“information describing the content residing at
`the media device” (independent claims 1, 16) and “last-played time-stamps for
`the content residing at . . . media devices” (claims 13, 20). The plain
`language of the claims also describes how the information in the media
`database is used—selecting content at the media device to be played
`(independent claims 1, 16; claims 2, 10, 13, 17, 18, 20). The plain language
`of the claims also specifies that the media database is on the mobile device
`(independent claims 1, 16).
`Similarly, the written description of the ’904 patent describes types of
`information stored in the media database—metadata or information describing
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`the content stored at a media device (Ex. 1001, 3:13–14, 4:30–36) and “last-
`played time-stamps for the content” (id. 4:36–37). The written description
`also describes how the information in the media database is used—to select
`content to be played. Id. at 4:38–48.
`The written description of the ’904 patent illustrates “an exemplary
`embodiment” of the media database in Figure 5, reproduced below.
`
`
`As shown in Figure 5, the media database includes certain types of information
`for each content file stored on the media device—an identifier assigned to each
`media file, the file name, the file type, a last-played time-stamp, and the server
`name, which is “an identifier for the WPANs . . . in which the content is
`located.” Id. at 5:22–37. The written description further indicates how data is
`added to the media database (id. at 5:26–37) and how the data is used to “enable
`the user associated with the mobile device” to browse and select content to be
`played by the media player (id. at 5:40–45).
`During examination, the Applicant argued that prior art references
`“fail[ed] to teach or suggest a mobile device comprising a control system
`adapted to store the information describing the content residing at the media
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`device in a media database of the mobile device.” Ex. 1002, 108. Rather,
`according to the Applicant, the prior art reference described storing the content
`guide (the recited “media database”) on the content receiver itself, not on the
`mobile device (the recited “mobile device”), as required by claim 1.
`Id. at 108–09. The Examiner issued a Notice of Allowability after the
`Applicant presented that argument among others, and the ’904 patent issued in
`due course. Id. at 118 (Notice of Allowability), 132 (Issue Notification).
`We recognize that the Patent Owner’s proposed construction has merit
`because the ordinary meaning of the term database in the context of the
`’904 patent is a collection of stored, interrelated data organized to serve an
`application. See Ex. 3001 (defining “database”).6 Patent Owner’s proposed
`construction also reflects the plain language of the claims and is consistent
`with the written description the ’904 patent. See, e.g., Ex. 1001, 8:49–50
`(claim 1 reciting “store the information describing the content residing at the
`media device in the media database”); id. at 5:22–37 (preferred embodiment
`of a media database). Therefore, for purposes of this decision, we adopt
`Patent Owner’s proposed construction that “a media database” means “an
`organized collection of information describing media content residing at the
`media device.”
`
`
`6 IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 268
`(7th ed. 2000) (defining “database” as “(1)(A) (data management) (software) A
`collection of logically related data stored together in one or more computerized
`files. Note: Each data item is identified by one or more keys. . . (4) A collection
`of interrelated data, often with controlled redundancy, organized according to a
`schema to serve one or more applications. . .”).
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`B. Asserted Ground of Obviousness over Morse and Meade
`Petitioner contends that claims 1–4, 7, 10, 12, and 15–18 of the
`’904 patent are unpatentable under 35 U.S.C. § 103 as obvious over Morse and
`Meade. Pet. 10–49. Petitioner supports its contentions with citations to the
`references and with declaration testimony of Mr. Jeffrey Fischer (Ex. 1003). Id.
`Patent Owner opposes. Prelim. Resp. 17–23.
` A claim is unpatentable as obvious “if the differences between the
`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 *3 (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”)).
`
`1. Summary of Morse
`Morse describes techniques for using a remote control to select media
`content for playback. See, e.g., Ex. 1004, 1:31–48. Figure 2 of Morse,
`reproduced below, depicts a system to control playback of digital media on a
`playback device.
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`Id. at 3:26–28. Figure 2 shows media content storage device 14 that stores
`digital media (such as music files, video files, and photographs), wireless
`network 20, playback device or media player 31 (such as a stereo or television)
`for playing media content, and system 30 that includes playback unit 32 and
`remote control device 34 with display screen 36. Id. at 3:23–31, 34–41, 54–56.
`Media content storage device 14, which may be “a personal computer,”
`communicates with playback unit 32 over network 20, which may be a wireless
`network using the 802.11 standard or other wireless technology. Id. at 3:51–57.
`Morse further describes remote control device 34 and playback unit 32
`communicating over “radio frequency interfaces, optical interfaces (e.g.,
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`infrared),” which may operate with “low power” and have “an operating range
`suitable for use in a domestic dwelling.” Id. at 4:42–47, 6:36–39.
`Figure 6 of Morse, reproduced below, shows an exemplary embodiment
`of a remote control.
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`Id. at 2:13–14. Figure 6 shows remote control 34 with hand-held housing 35,
`which, according to Morse, renders remote control 34 portable. Id. at 4:39–41.
`Remote control 34 has display screen 36 and user interface 56, which, in turn,
`includes navigational buttons 58 and functional buttons 60 for selecting and
`playing digital media stored on the media content storage device. Id. at 4:28–
`35.
`
`Morse describes using remote control 34 to select content for
`reproduction on playback device 31. Id. at 3:45–48. More specifically, media
`content storage device 14 retrieves “content data that identifies, or is associated
`with, the media files and communicate[s] the content data to the remote control
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`device 34,” which displays content data on display screen 36. Id. at 3:39–44.
`Morse provides examples of content data—audio track titles, album names,
`video clip titles, photograph titles of content—that “reside on the media content
`storage device 14.” Id. at 3:48–51. A user “may then select content (selected
`media) for reproduction or playback on the playback device 31 based on the
`information provided on the display screen 36” of remote device 34. Id. at
`3:44–48; see also id. at 4:35–39 (describing a user browsing by artist, album,
`genre, or playlist to select media content stored on the media content storage
`device).
`To address limitations on the size of the display screen of the remote
`control, Morse describes storing media content data in “a media content stack”
`to enable a user to scroll through media content data. Id. at 8:37–46. One
`example of a media content stack is content hierarchy 126 shown in Figure 7,
`reproduced below.
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`Id. at 8:45–46.
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`Morse also describes an embodiment in which a playback unit “includes
`a table of discovered devices or servers,” which stores “information on all
`media content storage devices.” Id. at 8:47–51. Media content data is retrieved
`and merged from all the media content storage devices, and the merged data is
`provided to the remote control device. Id. at 8:52–58.
`
`2. Summary of Meade
`Meade describes a mobile computing device that controls “appliances,”
`which include audio devices and video devices. Ex. 1005 ¶¶ 2, 34 (describing
`video device 14 and audio device 28 as appliances). Figure 4 of Meade,
`reproduced below, depicts an “appliance control system.” Id. ¶ 40.
`
`
`Figure 4 shows mobile computing device 12 “interacting” with video
`device 14 and audio device 28. Id. Meade provides examples of each device—
`a video device may be a television, movie player, or video display monitor; an
`audio device may be a stereo system, compact disc (CD) player, or other audio
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`media player; a mobile computing device may be a personal digital assistant, a
`handheld computer, or a laptop computer. Id. ¶ 41. Meade’s mobile computing
`device wirelessly communicates using various protocols, including “Wireless
`Application Protocol (WAP), Bluetooth, Infrared (IrDA, FIR), 802.11,” and
`UltraWide Band (UWB). Id. ¶¶ 46, 47.
`Meade indicates that mobile computing device 12 “automatically or
`manually selects content available through” an appliance for performance on
`that appliance. Id. ¶ 36. The mobile computing device also has “an appliance
`content selector” and can be used to “specify the audio content, in the form of
`lists of stations, songs, programs, and MP3 files, that are to be performed on
`audio device 28.” Id. ¶¶ 71, 73, Fig. 5 (showing appliance content selector 92).
`
`3. Petitioner’s Contentions
`Petitioner provides, with support of its declarant, analysis purporting to
`explain how the combination of Morse and Meade would have conveyed to
`one of ordinary skill in the art the limitations recited in the challenged claims.
`Pet. 10–49. Also with support of its declarant, Petitioner provides reasons
`why one of ordinary skill in the art would have combined the teachings of the
`references. See, e.g., id. at 15–16.
`In general, Petitioner relies on Morse’s system “to control playback of
`digital media on a playback or reproduction device.” Id. at 13. For example,
`Petitioner relies on Morse’s remote control, which is used to “select the digital
`media for playback on the playback device,” for the recited mobile device.
`See, e.g., id. (quoting Ex. 1004, 1:40–42, 3:27–29). Petitioner asserts, citing
`to specific portions of Morse, that Morse’s remote control device (i) is
`“portable” and “hand-held,” (ii) controls multiple media content storage
`devices, (iii) communicates wirelessly, and (iv) stores information about
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`media content available at a media content storage device in “a media content
`data stack,” among other features. See, e.g., id. at 11–20. Petitioner contends
`Morse’s playback unit and media content storage device are components of a
`media device because “these components store and play back (respectively)
`digital content.” Id. at 13. Moreover, Petitioner, in the alternative, relies on
`Meade’s video and audio devices, each of which can be controlled by a
`“mobile computing device” and, according to Petitioner, are “media devices”
`expressly described as being in “within the same assembly.” Id. at 14 (citing
`Ex. 1005 ¶¶ 40–41, Fig. 4).
`Petitioner provides, with support from its declarant, reasons one of
`ordinary skill in the art would have combined the references. See, e.g., id.
`at 15–16. For example, Petitioner contends that both references “are directed
`to solving the same problem as the ’904 patent (providing a user with greater
`information and control over the playback of stored content).” Id. at 15
`(citing Ex. 1004, 4:39–41, Fig. 6; Ex. 1005 ¶ 26, Fig. 2; Ex. 1003 ¶ 106).
`Petitioner also indicates that the references solve the problem in the same
`way—selecting content for playback on a particular media player using
`information stored at a hand-held mobile device. Id. (citing Ex. 1004, 4:39–
`41, Fig. 6; Ex. 1005 ¶ 26, Fig. 2; Ex. 1003 ¶ 106). In addition, Petitioner
`contends the combination of the references “yields the completely predictable
`result that the single ‘video device’ of Meade enables the set of components of
`Morse to act as a whole and perform” the required functions recited in the
`claims. Id. at 15–16 (citing Ex. 1003 ¶ 107).
`
`4. Analysis
`In response, Patent Owner contends that there is not a reasonable
`likelihood that Petitioner’s proposed combination would have rendered
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`obvious claims 1–4, 7, 10, 12, and 15–18. Recognizing that Patent Owner has
`not yet had an opportunity to submit new testimonial evidence,7 we determine
`that Patent Owner’s contentions are not supported sufficiently in the present
`record.
`First, Patent Owner contends that Petitioner’s proposed combination
`does not “disclose or suggest obtaining information describing content
`residing at a media device that also plays the content.” Prelim. Resp. 19–21.
`Patent Owner’s contention seems to require all components of a “media
`device” to be located in the same housing, case, or other type of enclosure.
`Compare Pet. 9 (Petitioner’s proposed construction of “media device” as “a
`set of components capable of playing stored content”), with Prelim. Resp. 14–
`15 (Patent Owner’s proposed construction of “media device” as “a device
`capable of playing resident content”).
`On this record, Patent Owner’s argument seems more appropriate for a
`ground asserting anticipation, which requires establishing that a reference
`discloses each element to be arranged as recited in the claim. Net MoneyIN,
`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). In contrast, here
`the issue is obviousness, the test for which “is what the combined 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)). We also note, as does Petitioner (Pet. 9), that
`the written description of the ’904 patent provides an example of “a media
`device” that, on its face, includes two components in separate housings: “a
`
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`7 See 37 C.F.R. § 42.107(c) (“The preliminary response shall not present new
`testimony evidence beyond that already of record, except as authorized by the
`Board.”).
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`digital video recorder associated with a television.” Ex. 1001, 3:26–28.
`Patent Owner may be correct in its contention that “[a] digital video recorder
`. . . is capable of playing stored content with or without a TV.” Prelim. Resp.
`14. Even so, the written description provides the example of “a digital video
`recorder associated with a television”—two components—as a media device.
`Ex. 1001, 3:26–28. This supports Petitioner’s contentions.
`Second, Patent Owner contends that Morse does not “disclose or
`suggest storing a media database at the remote control.” Prelim. Resp. 22.
`Instead, according to Patent Owner, Morse teaches “a display content
`cache 262” and the remote control immediately displays data when the data is
`received. Id. (citing Ex. 1004, 9:28–10:34, Figs. 14, 15). Patent Owner
`contends that Petitioner’s reliance on Morse’s “media content data stack”
`(Pet. 18, 24) for the recited “media database” is misplaced because Morse
`“does not describe or illustrate what a ‘media content data stack’ is” (Prelim.
`Resp. 22). Patent Owner further contends that Morse’s “media content data
`stack” refers to “the temporary caching of display data in the display content
`cache 26 of Fig. 14.” Id.
`On this record, Morse’s additional discussion of “display content
`cache 262” in remote control device 254 of Figure 14 does not negate Morse’s
`description of a “media content data stack,” on which Petitioner relies for the
`recited “media database.” Nor do we agree with Patent Owner that Morse
`does not describe or illustrate what a “media content data stack” is. Rather,
`Morse describes a user using the user interface on the remote control “to scroll
`through media content data (e.g. text) provided in a media content stack (see,
`for example, the content hierarchy 126 of FIG. 7).” Ex. 1004, 8:42–46
`(emphasis added). Morse’s Figure 7 (reproduced supra in Part II.B.1) depicts
`
`18
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`IPR2016-00007
`Patent 7,787,904 B2
`
`“media content (e.g., music files, video files, picture, or any other digital
`media) arranged in a hierarchy 126 (see FIG. 7) [that] may be browsed or
`navigated.” Id. at 6:67–7:3.
`
`5. Conclusion
`On the present record, we determine that Petitioner has made a sufficient
`showing that Morse and Meade would have conveyed to one of ordinary skill in
`the art the limitations of independent claims 1 and 16. Petitioner also has
`provided, with support from its declarant, reasons one of ordinary skill in the art
`would have combined the references. For the foregoing reasons, we determine
`that Petitioner has provided adequate evidence to show a reasonable likelihood
`of prevailing in its assertions that at least one of the challenged claims would
`have been obvious over Morse and Meade.
`
`C. Other Asserted Grounds of Obviousness
`over Morse and Meade and Other References
`Petitioner contends that claims 13, 14, and 20 would have been obvious
`over Morse, Meade, and various other references. Pet. 49–58. Petitioner
`supports its contentions with citations to the references and with declaration
`testimony of Mr. Fischer (Ex. 1003). Id. Patent Owner opposes.
`Prelim. Resp. 23–26.
`For these additional grounds of obviousness relying on Morse and
`Meade, Petitioner substantially relies on the same analysis and supporting
`evidence described previously with regard to the asserted ground that claims 1–
`4, 7, 10, 12, and 15–18 would have been obvious over Morse and Meade. For
`the reasons we explained previously, we are persuaded that Petitioner’s analysis
`and supporting evidence regarding the combination of Morse and Meade is
`sufficient for institution.
`
`19
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`IPR2016-00007
`Patent 7,787,904 B2
`
`
`1. Asserted Ground of Obviousness over Morse, Meade, and Terada
`Petitioner contends that claims 13 and 20 would have been obvious over
`Morse, Meade, and Terada. Pet. 49–55. Claim 13 depends from independent
`claim 1 and additionally requires the control system to be further adapted to
`“store last-played time-stamps for the content residing at each of the plurality of
`media devices in the media database” and “provide the information and the last-
`played time-stamps for the content residing at each of the plurality of media
`devices to the media device when the mobile device is within the WPAN
`associated with the media device.”
`Claim 20 depends from independent claim 16 and additionally recites
`“storing last-played time-stamps for the content residing at each of the plurality
`of media devices in the media database” and “providing the information and the
`last-played time-stamps for the content residing at each of the plurality of media
`devices to the media device when the mobile device is within the WPAN
`associated with the media device.”
`For these additional limitations, Petitioner relies on Terada’s description
`of “bookmarking” a place when reproduction of content stopped so that content
`can be retrieved to restart reproduction “from the specified position (the
`reproduction suspension place).” Pet. 51 (citing Ex. 1006 ¶ 6; Ex. 1003 ¶¶ 232,
`236). Terada’s description occurs in the context of a server and personal digital
`assistant (PDA) in “a content reproducing system.” Ex. 1006 ¶ 2.
`As an example, Terada describes “a home-use” type of reproducing
`system in which “moving picture data (MPEG2 data), still picture data (Bmap
`data), and audio data (MP3 data)” are reproduced on another apparatus storing
`content data. Id. As an example, Terada describes power being cut off to a
`DVD player during reproduction of content, which suspends content
`
`20
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`IPR2016-00007
`Patent 7,787,904 B2
`
`reproduction. Id. ¶ 6. “[B]ookmark information indicating the specified
`positon in the content at which the reproduction” was suspended is stored in
`memory. Id. Later, “[w]hen the reproduction of the same content is requested
`again,” the bookmark information is used to “restart[] the reproduction thereof
`from the specified position (the reproduction suspension place).” Id.
`For the recited “last-played time-stamps for the content residing” at a
`media device, Petitioner relies on Terada’s “bookmark signal piece indicating
`the watched and listened time of the content (the bookmark point in the content
`up to which the content has been watched and listened to).” Pet. 50 (quoting
`Ex. 1006 ¶ 101). In addition, Petitioner contends that one of ordinary skill in
`the art would have had reason to combine Terada with Morse and Meade
`because all references are directed to solving the same problem. Pet. 51.
`Petitioner also contends using a bookmark to resume playback of stored content
`would have been obvious to try in view of the “very few options” for resuming
`content playback of media storage and reproduction systems located in different
`rooms. Id. at 51–52.
`Patent Owner challenges Petitioner’s position, asserting that Petitioner’s
`reliance on Terada’s bookmark is insufficient because “Terada is only
`concerned with bookmarking media for the purposes of resuming reproduction
`at a certain point within the media.” Prelim. Resp. 25. According to Patent
`Owner, Petitioner’s contentions are insufficient because the recited “last-played
`time-stamp” represents an indication of the time at which a media file was last
`played. Id. (citing Ex. 1001, 3:29–32, Fig. 5). Patent Owner contends that
`Terada’s bookmarks, by contrast, are “for the purposes of resuming
`reproduction at a certain point within the media.” Id.
`
`21
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`IPR2016-00007
`Patent 7,787,904 B2
`
`
`We determine that Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail on the ground that claims 13 and 20 would have
`been obvious over Morse, Meade, and Terada. The test for obviousness “is
`what the combined teachings of the references would have suggested to those
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