Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 39
`Entered: January 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01465
`Patent 8,725,063 B2
`_______________
`
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1
`
`APPLE 1017
`Apple v. Chestnut Hills Sound
`IPR2016-00794
`
`
`Tel: 571-272-7822
`
`
`Paper 39
`Entered: January 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01465
`Patent 8,725,063 B2
`_______________
`
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1
`
`APPLE 1017
`Apple v. Chestnut Hills Sound
`IPR2016-00794
`
`
`
`IPR2015-01465
`Patent 8,725,063 B2
`
`I. INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`an inter partes review of claims 1–61 of U.S. Patent No. 8,725,063 B2
`(Ex. 1001, “the ’063 patent”). Chestnut Hill Sound Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”). Pursuant to 35
`U.S.C. § 314, in our Decision to Institute (Paper 14, “Dec.”), we instituted
`this proceeding as to claims 1–61.
`Patent Owner filed a Patent Owner’s Response (Paper 21, “PO
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`(Paper 28, “Reply”). After Petitioner filed its Reply, Patent Owner filed a
`statutory disclaimer of claims 6–8, 28–30, 32–34, and 59–61. Paper 32;
`Ex. 2116. See also 1434 OG 120 (Jan. 10, 2017). Thus, claims 1–5, 9–27,
`31, and 35–58 remain pending in this inter partes review.
`An oral argument was held on October 12, 2016. Paper 38 (“Tr.”).
`Petitioner relies on the testimony of Melvin Mercer, Ph.D. (Ex. 1003,
`“Mercer Decl.”). Patent Owner relies on the testimony of Daniel Wigdor,
`Ph.D. (Ex. 2109, “Wigdor Decl.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, Petitioner has
`demonstrated, by a preponderance of the evidence, that claims 1–5, 9–27,
`31, and 35–58 are unpatentable.
`
`
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`Patent 8,725,063 B2
`B. Related Matters
`The ’063 patent is the subject of Chestnut Hill Sound, Inc. v. Apple
`Inc., Civil Action No. 1:15-cv-00261 (D. Del). Pet. 1; Paper 4, 1.
`The ’063 patent also was the subject of Apple Inc. v. Chestnut Hill
`Sound Inc., Case IPR2015-01464 (PTAB). Pet. 1; Paper 4, 1. The Board
`denied institution of an inter partes review in that proceeding. IPR2015-
`01464, Paper 10.
`
`C. References Relied Upon
`U.S. Patent No. 6,563,769 B1, issued May 13, 2003 (Ex. 1006, “Van
`Der Meulen” or “VDM”);
`U.S. Patent No. 6,334,157 B1, issued Dec. 25, 2001 (Ex. 1009,
`“Oppermann”);
`U.S. Publication No. 2003/0167318 A1, published Sept. 4, 2003
`(Ex. 1010, “Robbin”);
`U.S. Patent No. 7,606,790 B2, issued Oct. 20, 2009, filed Mar. 3,
`2004 (Ex. 1014, “Levy”);
`U.S. Patent No. 6,093,880, issued July 25, 2000 (Ex. 1015,
`“Arnalds”).
`
`D. The Instituted Grounds
`We instituted inter partes review based on the following specific
`grounds (Dec. 28–29):
`
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`IPR2015-01465
`Patent 8,725,063 B2
`Reference(s)
`VDM
`
`Basis
`§ 103(a)
`
`VDM and Oppermann
`
`§ 103(a)
`
`Claim(s) Challenged
`1–5, 10–16, 19, 22–26,
`31, 35, 36, 38–46, 51,
`52, 54–581
`9, 27, 37, 53
`
`VDM and Robbin
`
`VDM and Arnalds
`
`VDM and Levy
`
`§ 103(a)
`
`17, 20, 47, 49
`
`§ 103(a)
`
`18, 48
`
`§ 103(a)
`
`21, 50
`
`
`E. The ’063 Patent
`The ’063 patent describes an audio entertainment system. Figures 1
`and 2B, reproduced below, illustrate an example:
`
`
`1 As noted above, Patent Owner has disclaimed claims 6–8, 28–30, 32–34,
`and 59–61. Paper 32, 2; Ex. 2116.
`
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`Figure 1 is a block diagram of an entertainment system. Ex. 1001, 5:33–34.
`
`
`
`
`Figure 2B is a pictorial view of the entertainment system. Id. at 5:37–39.
`
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`Patent 8,725,063 B2
`Entertainment system 100 includes base unit (table unit) 102 and
`control sub-assembly 104. Id. at 6:31–34. Base unit 102 includes audio
`amplifier 106, speakers 108, AM/FM tuner 114, and signal source interface
`sub-assembly 116 for connecting to one or more detachable devices
`(Auxiliary Source Modules, or “ASMs”) 118. Id. at 6:34–41. Examples of
`ASM 118 include an MP3 player, such as an iPod, and a satellite radio
`receiver. Id. at 6:43–52, 11:66–12:17. When ASM 118 is plugged into
`interface sub-assembly 116, ASM 118 supplies audio signals to audio
`amplifier 106 under the control of processor 115. Id. at 6:52–55. For
`example, if ASM 118 supplies an audio signal in digital format, the audio
`signal first is routed through processor 115, which includes a decoder. Id. at
`6:55–61. According to the ’063 patent:
`When a network adapter is used (wired or wireless), the system
`may control a remote device (personal computer, etc.) which can
`then act as a server of music and other files to the base unit (e.g.,
`from Apple Computer’s iTunes service or the like) or as a
`streaming audio source. With appropriate decoder software
`executing on processor 115 or another processor (not shown), the
`device can play songs provided in various music formats, such
`as WAV, MP3, WMA, and AAC, among others.
`Id. at 6:64–7:5.
`Control sub-assembly 104 includes detachable control unit 104A and
`interface 104B. Id. at 6:41–43. Detachable control unit 104A includes
`display device 132, input devices 134A–134N, and wireless transceiver 136.
`Id. at 7:7–9. In a first mode, detachable control unit 104A is docked in
`interface 104B. Id. at 7:18–22. In a second mode, detachable control unit
`104A is undocked from the base unit and communicates with the base unit
`using wireless transceiver 136. Id. at 7:28–34, 11:57–60.
`
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`Patent 8,725,063 B2
`
`Claim 1, reproduced below (additional paragraphing supplied), is
`illustrative of the claimed subject matter:
`1. A method of using a media device, comprising:
`configuring the media device to operate in a first mode and in a
`second mode, selectively, wherein
`(A) when in the first mode, the media device performs the
`operations of
`(1) displaying, on a display of the media device, a
`list of digital media content stored on said
`media device,
`(2) receiving from a user an indication to play a
`selected digital media content from among
`the displayed list of content, and
`(3) playing the selected digital media content on the
`media device; and
`(B) when in the second mode, the media device performs
`the operations of
`(1) operatively connecting the media device with (a)
`a separate, selected first media source via at
`least in part an internet or with (b) a separate,
`selected second media source via a local
`network, to permit the media device to effect,
`at least in part, operation of the selected
`media source, and
`(2) sending, at least in part wirelessly, a media
`content control signal from the media device
`to the selected media source, said control
`signal causing the selected media source to
`download
`or
`stream media
`content
`responsive to the media content control
`signal from the selected media first or second
`source to a media output unit, for outputting
`via a media output unit that is separate from
`said media device,
`
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`whereby the user selectively controls the first media
`source and/or the second media source for
`content downloading or streaming.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2155–56 (2016). Claim terms generally are 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. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`1. Terms including “causing,” “responds,” “responsive,” and
`“in response to”
`Claim 1 recites:
`a media content control signal from the media device to the
`selected media source, said control signal causing the selected
`media source to download or stream media content responsive to
`the media content control signal from the selected media first or
`second source to a media output unit.
`Independent claims 22, 31, and 51 include similar recitations.
`As to these terms, Patent Owner did not propose express constructions
`in its Preliminary Response, but argued that “[t]he media source must
`respond to the control signal by directing the media content to the media
`output unit separate from the media device. If a system requires intervening
`input in order for the media content to reach the output unit, it does not meet
`this limitation.” Prelim. Resp. 12. In the Institution Decision, we noted that
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`Patent 8,725,063 B2
`Patent Owner did not explain what it meant by “intervening input.” Dec. 8.
`Nevertheless, we considered Patent Owner’s evidence, including citations to
`the Specification and the prosecution history, and declined to read into the
`claims a requirement that content be downloaded or streamed directly to a
`media output unit, without encountering intervening input. Id. at 8–11.
`In its Response, Patent Owner maintains its position and attempts to
`clarify it. Specifically, Patent Owner argues that the claims require that “the
`actions of the media source in response to the command be sufficient to
`direct the downloaded/streamed data to the separate output device.” PO
`Resp. 22. In support, Patent Owner cites to Dr. Wigdor, who repeats this
`argument. Ex. 2109 ¶ 24. Referring to the language of claim 22, in
`particular, Patent Owner continues:
`claim 22 states that the content is downloaded or streamed to the
`media output device as the response of the media source to a
`command. Axiomatically, if other actions are required for the
`media content to the arrive at the output unit, the downloading or
`streaming is not being downloaded or streamed to the media
`output device as the response of the media source.
`PO Resp. 22. Patent Owner then distinguishes the claim language from a
`scenario in which an intervening device (retriever 370 of VDM) receives
`content from a content source (archive 391 of VDM) and sends it to a media
`output unit (rendering device 380 of VDM). Id. at 24. In that instance,
`Patent Owner argues, “the destination of the archived content in response to
`a request to retrieve the content from the archive 391 is not the rendering
`device 380 but, rather, retriever 370.” Id.; see also id. at 31 (“Specifically,
`to meet the claim, the second media source must respond by downloading
`or streaming . . . to a media output unit separate from the media device. For
`the claimed response to occur, the second media source must, in response to
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`Patent 8,725,063 B2
`a command, direct the downloaded or streamed data to the output unit.”);
`Tr. 38:14–16 (“[I]f the retriever is the one that is actually sending it to the
`output unit, then there is not a media source responding and streaming it to
`the output unit.”). At the oral argument, Patent Owner argued that, in order
`to download or stream content “to a media output unit,” a media source
`would have to embed the content address information for the media output
`unit into the streamed content. Tr. 40:3–10.
`Petitioner replies that Patent Owner improperly seeks to insert into the
`claims a requirement that the content be sent “directly” from a media source
`to a media output device. Reply 7. Petitioner argues that claim
`differentiation raises a presumption that a “direct” downloading or streaming
`requirement is incorrect. Id. at 7–8. In particular, claim 6 depends from
`claim 1 and recites “wherein in the second mode, the selected media source
`downloads or streams the selected media content to the media device and the
`media device sends said media content to an output unit that is separate from
`the media device for outputting.” Dependent claims 28, 32, and 59 add
`similar requirements to the other independent claims. According to
`Petitioner, the independent claims, thus, encompass the situation in which a
`media source first downloads or streams media content to the media device
`and the media device then sends the media content to an output unit.
`Reply 8.
`At the oral argument, Patent Owner argued that claims 6, 28, 32, and
`59 are improper dependent claims because they claim more broadly than,
`and would include embodiments excluded by the underlying independent
`claims. Tr. 46:24–47:1, 48:5–11, 48:19–49:3. As noted above, Patent
`
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`Owner has disclaimed claims 6, 28, 32, and 59, as well as additional claims
`depending from them.2
`We are not persuaded by Patent Owner’s arguments. As Petitioner
`asserts, we presume that claim 1 is broad enough to encompass the
`limitations of claim 6. Under the doctrine of claim differentiation,
`“dependent claims are presumed to be of narrower scope than the
`independent claims from which they depend.” Howmedica Osteonics Corp.
`v. Zimmer, Inc., 822 F.3d 1312, 1323 (Fed. Cir. 2016). Thus, we presume
`that “said control signal causing the selected media source to download or
`stream media content responsive to the media content control signal from the
`selected media first or second source to a media output unit,” as recited in
`claim 1, encompasses the situation in which “the selected media source
`downloads or streams the selected media content to the media device and the
`media device sends said media content to an output unit that is separate from
`the media device for outputting,” as recited in claim 6.
`“However, claim differentiation is a rebuttable presumption that may
`be overcome by a contrary construction dictated by the written description or
`prosecution history.” Howmedica, 822 F.3d at 1323. As explained in a case
`cited by Patent Owner, “dependent claims cannot broaden an independent
`claim from which they depend” and, thus, “it would be inappropriate to use
`the doctrine of claim differentiation to broaden [an independent claim] to
`include a limitation imported from a dependent claim.” Enzo Biochem Inc.
`v. Applera Corp., 780 F.3d 1149, 1156–57 (Fed. Cir. 2015). In this case,
`
`
`2 Patent Owner does not contend that the act of disclaiming a dependent
`claim would negate or otherwise affect an application of the doctrine of
`claim differentiation.
`
`
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`Patent Owner has not offered (nor have we found) persuasive evidence from
`the Specification or prosecution history to suggest that claim 1 be construed
`to require that a content source directly address a media output unit or
`otherwise direct content to the media output unit without intervening input.
`As to a requirement that a media source embed address information in the
`content downloaded or streamed, Patent Owner admits that “[t]hat level of
`detail is not described in the specification.” Tr. at 41:1–2. Thus, we are not
`persuaded that this requirement should be read into the claims.
`In sum, Patent Owner has not introduced evidence that persuades us
`that we should deviate from the ordinary meaning of these claim terms and
`has not overcome the presumption that claims 1, 22, 31, and 51 are broader
`than claims 6, 28, 32, and 59, respectively. On the full record, we maintain
`that these claim terms do not require express construction and decline to
`import into them a requirement that a media source direct content to a media
`output unit without intervening input.
`
`
`2. “first mode” / “second mode”
`Claim 1 recites “configuring the media device to operate in a first
`mode and in a second mode, selectively.” Claims 22, 31, and 51 include
`similar recitations.
`In the Preliminary Response, Patent Owner argued that Petitioner, in
`alleging that the prior art taught a “first mode” and “second mode,”
`improperly grouped together “disparate operations” that “occur at different
`times, in response to different interactions, using different software
`components” into a single mode. Prelim. Resp. 25. According to Patent
`Owner, Petitioner’s analysis was deficient because it did not address “the
`
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`Patent 8,725,063 B2
`required connection between the operations in the second mode.” Id. In our
`Institution Decision, we determined that Patent Owner did not cite to
`persuasive evidence supporting this reading of the claim language and,
`accordingly, rejected it. Dec. 23–24.
`In its Response, Patent Owner again proposes constructions for “first
`mode” and “second mode.” Specifically, Patent Owner contends that
`a person of ordinary skill in the art would have understood that
`configuring to operate in two different modes, selectively, as
`recited in the claims, requires both modes to be made available
`for selection, and when one of the modes is selected . . . some
`different manifestation of the operation of software occurs.
`PO Resp. 42. According to Patent Owner, “the claims of the ’063 patent
`should be read to require that two modes are available, and that a mechanism
`is available to select between them.” PO Resp. 41.
`Petitioner, on the other hand, argues that this claim language simply
`means that a media device behaves differently based on the selected mode,
`either by playing media from a local media source in the “first mode,” or by
`playing media from a remote media source in the “second mode.” Reply
`16–17. Asked to clarify its position at the oral argument, Petitioner argued
`that “the mode is actually a descriptor of when steps are engaged, but it is
`not actually an entity onto itself.” Tr. 7:9–11. “So when a device is
`engaging in displaying, receiving and playing local content, for instance,
`then a first mode would be implicated . . . . And similarly when a device is
`engaged in operatively connecting and sending the content, . . . then it would
`be engaged in the second mode . . . .” Id. at 7:16–21.
`The claim language itself does not require that multiple modes be
`made available to a user for selection or presenting the user with a
`
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`mechanism to make a selection. Rather, the claim language requires
`configuring a device to operate in first and second modes, e.g., by allowing
`the selection of locally stored or remotely stored content. Nevertheless,
`Patent Owner advances extrinsic and intrinsic evidence that it contends
`supports its proposed interpretation of these limitations. We address this
`evidence below, and explain why it is not persuasive.
`Citing to dictionary definitions, Patent Owner argues that “[t]he
`dictionary definition of ‘mode’ indicates that the modes be perceptible: ‘a
`way or manner of acting, doing, happening, or existing; kind; form;
`manifestation; state of being.’” PO Resp. 42 (quoting Ex. 2112, 955).
`According to Patent Owner, the claims require something “that a user would
`recognize as a mechanism to make a choice,” as opposed to the prior art,
`which “manifests no change when there is operation in what the Petition
`alleges [are] different modes.” Id. Patent Owner continues, “[a] person of
`ordinary skill in the art would have understood ‘select’ to mean ‘pick[ing]
`out from a number by preference.” PO Resp. 42 (quoting Ex. 2113, 1374).
`These definitions, however, do not resolve the dispute, as they provide equal
`support for Petitioner’s position. For example, a mode simply could be “a
`way or manner of acting, doing, happening, or existing,” supporting
`Petitioner’s position that the claimed modes are descriptors that identify
`different behaviors.
`Patent Owner also relies on other language in the claims to support its
`position. As the Federal Circuit has stated, “the context in which a term is
`used in the asserted claim can be highly instructive.” Phillips v. AWH Corp.,
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). In particular, and using
`claim 22 as its example, Patent Owner argues:
`
`
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`[C]laim 22 requires that the digital media device be configured
`to perform specific operations when in one of two modes,
`selected prior
`to, not
`requiring
`that
`the mode be
`contemporaneously with, performance of the specific operations
`recited in the claims. If selection of content in VDM is
`interpreted as also selecting a mode as the Petition argues, the
`limitations of claim 22 related to selecting content when in the
`first mode and when in the second mode cannot be met.
`PO Resp. 44. According to Patent Owner, “[t]hese actions, which occur in
`each mode, are a part of the way each mode is manifested when it is
`selected.” Id. at 43.
`Patent Owner’s position in its Response does not distinguish clearly
`from Petitioner’s. Patent Owner, asked to clarify its position at the oral
`argument, gave conflicting statements of its proposed constructions for “first
`mode” and “second mode.” First, Patent Owner argued that the claims do
`not require a change in the media device’s configuration based on the user’s
`choice of a first mode or a second mode:
`JUDGE McKONE: What you are saying is that the claim
`requires that when a user selects a mode, the device must
`reconfigure itself to operate in that mode?
`MR. WALSH: No, I’m saying sort of the opposite, is that there
`are two selections going on in the claims. One is the selection
`between modes and one is the user selection from the interface.
`Tr. 55:14–20. Patent Owner then contradicted this argument:
`MR. WALSH: . . . All that is necessary to differentiate VDM is
`that the claim be interpreted such that when the user makes a
`selection through the user interface, the device has to be
`configured to behave differently based on what mode it is in.
`JUDGE McKONE: And why isn’t that shown in Van Der
`Meulen? If a user selects a song on a hard drive versus when the
`user selects a song that is on a local CD player, doesn’t the device
`behave differently based on that selection?
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`MR. WALSH: So it will behave differently but it is not
`configured before that selection is made to behave differently.
`56:12–23.
`Patent Owner also cites to the Specification in support of its position,
`arguing that the “disclosure in the ’063 Patent of a device configured for
`operation in a first mode and a second mode, selectively, by manifesting a
`choice to a user is indicative of how one of skill in the art would have
`understood that phrase in the claims.” PO Resp. 40. Patent Owner’s
`citations, however, do not support its constructions.
`Patent Owner first points to Figure 2A of the ’063 patent, arguing that
`it depicts buttons (e.g., “iPod 3”) and that, when such a button is pressed, the
`system presents the selected iPod mode to the user. PO Resp. 38–39. Patent
`Owner pairs Figure 2A with Figure 7, which Patent Owner argues shows
`“Mode for iPod” having been selected. Id. Patent Owner, however, does
`not explain how Figure 7 shows a system configured in a particular mode,
`specifically a mode to download or stream content from an iPod. The ’063
`patent describes Figure 7 as a “front view of the unit of FIG. 6, showing a
`top panel open to receive an ASM.” Ex. 1001, 5:52–53. Patent Owner cites
`to no description in the ’063 patent explaining Figure 7 (we find no
`reference to Figure 7 in the Detailed Description). In particular, Patent
`Owner points to no description supporting its argument that pressing an
`“iPod 3” button in Figure 2A results in what is shown in Figure 7.
`Similarly, Patent Owner cites to Figures 14 and 15 of the ’063 patent,
`arguing that they “provide examples of different user interfaces in different
`modes.” PO Resp. 39. The ’063 patent, however, describes Figures 14 and
`15 as follows:
`
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`With reference to FIGS. 14 and 15, there are shown, respectively,
`examples of display screens whereon radio stations “presets”
`have been mapped to eight soft button labels indicating how the
`soft buttons will operate when pressed (FIG. 14) and whereon an
`alphabetical keypad arrangement is mapped as an alternative for
`use in navigating a song index, for example (FIG. 15).
`Ex. 1001, 10:40–46. This description does not support Patent Owner’s
`positions that a user must select (and perceive the selection of) a mode and
`the device must be reconfigured upon such a selection.
`Finally, both parties argue that the prosecution history, in particular
`the same passage, supports its respective position. PO Resp. 41; Reply 16.
`Specifically, in amending the then-pending independent claims to recite
`configuring a media device to operate in a first mode “and in” a second
`mode “selectively” (e.g., then-pending claim 33, Ex. 1002, 207), the
`applicant argued: “The independent claims have further been amended to
`add emphasis that the device is operable at times in the first mode and at
`times in the second mode, but not exclusively in just a single mode.”
`Ex. 1002, 215 n.3. As with the Specification, this passage does not support a
`construction of “configuring the media device to operate in a first mode and
`in a second mode, selectively,” that requires a user to select the mode (and
`perceive the selection), or that the selection causes a system reconfiguration.
`Instead, we determine that it supports Petitioner’s position that the recited
`modes are designators identifying differences in system behavior.
`In sum, we have considered the ordinary meaning of the claim terms,
`in the context of the remaining claim language; the description in the
`Specification; the prosecution history; and dictionary definitions. None of
`this evidence supports a construction of “configuring the media device to
`operate in a first mode and in a second mode, selectively,” that requires a
`17
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`user to select the mode (or perceive the selection), or that the selection
`causes a system reconfiguration. Rather, the evidence supports Petitioner’s
`position that the two modes are descriptors that identify different behaviors,
`with the behavior of each mode specified by other language in the claims.
`
`
`3. “operatively connecting the media device with (a) a
`separate, selected first media source via at least in part an
`internet or with (b) a separate, selected second media
`source via a local network”
`Claim 1 recites “operatively connecting the media device with (a) a
`separate, selected first media source via at least in part an internet or with (b)
`a separate, selected second media source via a local network.” Claims 22,
`31, and 51 include similar recitations. In the Institution Decision, we
`determined that this claim language “only requires operatively connecting
`with one media source, although it could be either a first media source or a
`second media source.” Dec. 12. The parties do not challenge this
`construction. Pet. 2–3; PO Resp. 18. In particular, Patent Owner “applied
`the claim interpretations applied in Board’s Institution Decision, but is not
`waiving the right to argue that those claim interpretations are improper.” PO
`Resp. 18 n.4. On the complete record, we maintain our construction.
`
`
`4. “a list of digital media content stored on said media device”
`Claim 1 recites “displaying, on a display of the media device, a list of
`digital media content stored on said media device.” Claim 31 includes a
`similar recitation.
`Patent Owner argues that “[t]he ‘list of digital media content stored on
`said media device’ cannot contain digital media content that is not stored on
`
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`said media device.” PO Resp. 47. According to Patent Owner, relying on
`Dr. Wigdor’s testimony, interpreting such a list to permit digital media
`content stored on more than one media device would be unreasonable. Id. at
`47–48 (citing Ex. 2109 ¶ 47). Dr. Wigdor largely repeats Patent Owner’s
`argument. Ex. 2109 ¶47. Asked to explain its position at the oral argument,
`Patent Owner stated that “just a normal reading of the claims, you wouldn’t
`say that an interface that shows two different things is a list of that one
`thing.” Tr. 59:14–17. Patent Owner, however, could not identify any
`disclosure, in the Specification, of displaying a list including only the
`content stored on a single device. Tr. 60:1–5.
`Petitioner responds that, because the term “list” can be modified with
`qualifiers such as “exclusive, or closed, or open,” the term “list” by itself
`need not be an exclusive list. Tr. 80:12–24. We agree with Petitioner that
`the broadest reasonable interpretation of “list” can be exclusive or non-
`exclusive. This is consistent with the Specification, which describes an
`example in which a database of content on an iPod is created in the memory
`of the base unit. Ex. 1001, 14:41–57. The information in the database can
`be used to list songs to enable selection and playback of those songs on the
`base unit. Id. at 14:58–15:1. The Specification further states that “it is also
`possible, technically, copyright law permitting, to download the song file
`into memory (semiconductor, hard drive or optical, for example) in the base
`unit and to play it from there.” Id. at 15:1–4. Thus, consistent with
`Petitioner’s reading of “list,” the Specification describes selection of a song
`from a list that includes songs stored both in the iPod and in the base unit.
`
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`IPR2015-01465
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`On the complete record, we conclude that “a list of digital media
`content stored on said media device” can include digital media content that
`is not stored on said media device.
`
`
`5. “user selectively controls”
`Claims 1 and 22 each recite “whereby the user selectively controls the
`first media source and/or the second media source for content downloading
`or streaming.” Claims 31 and 55 both similarly recite “whereby the user
`selectively controls the first media server and/or the second media server for
`content downloading or streaming.” In the Institution Decision, we
`determined that “whereby the user selectively controls the first media
`[source/server] and/or the second media [source/server] for content
`downloading or streaming” does not require that a user select between and
`send control signals to both of two separate media sources. Dec. 15.
`Neither party challenges this determination, and we maintain it on the
`complete record.
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter 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 to which said subject
`matter pertains.” 35 U.S.C. § 103(a). We resolve the question of
`obviousness on the basis of underlying factual determinations, including:
`(1) the scope and content of the prior art; (2) any differences between the
`claimed subject matter and the prior art; (3) the level of skill in the art; and
`
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`(4) objective evidence of nonobviousness, i.e., secondary considerations.
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “[T]he strength
`of each of the Graham factors must be weighed in every case and must be
`weighted en route to the final determination of obviousness or non-
`obviousness.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir.
`2016).
`In an obviousness analysis, some reason must be shown as to why a
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`art may be found explicitly or implicitly in market forces; design incentives;
`the “interrelated teachings of multiple patents”; “any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent”; and the background knowledge, creativity, and common sense of
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`5
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