`Tel: 571-272-7822
`
`
`Paper 9
`Entered: September 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00794
`Patent 8,090,309 B2
`_______________
`
`
`Before RAMA G. ELLURU, DAVID C. MCKONE,
`and JOHN F. HORVATH, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`an inter partes review of claims 1–14 of U.S. Patent No. 8,090,309 B2
`(Ex. 1001, “the ’309 patent”). Chestnut Hill Sound Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
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`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`only if “the information presented in the petition . . . 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.” 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record we find that Petitioner has
`established a reasonable likelihood of prevailing with respect to at least one
`challenged claim of the ’309 patent. Accordingly, we grant the Petition and
`institute an inter partes review of claims 1–14 of the ’309 patent.
`A. Related Matter
`The ’309 patent is the subject of Chestnut Hill Sound, Inc. v. Apple
`Inc., Civil Action No. 1:15-cv-00261 (D. Del). Pet. 1; Paper 5, 1. In Case
`IPR2015-01463, Apple, Inc. v. Chestnut Hill Sound Inc., (Paper 2) (“the -
`1463 IPR”), Petitioner challenged claims 1–14 of the ’309 patent, and we
`denied institution (Paper 10, 21–22).
`B. The ’309 Patent
`The ’309 patent describes an audio entertainment system. Figure 2B,
`reproduced below, illustrates an example:
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`Figure 2B is a pictorial view of the entertainment system. Id. at 5:37–39.
`Entertainment system 100 includes base unit (table unit) 102 and
`control sub-assembly 104 (partially shown). Id. at 3:21–32, 7:34–37.
`Detachable device 118 (not shown) is preferably a digitally controlled
`device (e.g., “an iPod”) that supplies an audio signal, via the interface sub-
`assembly 116 (not shown), to audio amplifier 106 (not shown). Id. at 7:47–
`57. Control sub-assembly 104 may include a detachable control unit 104A
`and an interface 104B (not shown), in the base unit. Id. at 7:44–46. In a
`first mode (“docked mode”), control unit 104A is electrically connected to
`the audio amplifier and signal source electronics sub-assembly via a set of
`connectors or terminals 142A, 142B (not shown), and its wireless
`transceiver is disabled. Id. at 8:58–62. In a second mode (“undocked
`mode”), the control is separated from the base unit and the electrical
`connectors 142A, 142B are broken. Id. at 9:2–5.
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`The ’309 patent Specification explains that “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 . . . or as a streaming audio source.”
`Id. at 8:11–15. In addition, the remote device “may serve up content” from
`an attached portable music player (e.g., such as an iPod device). Id. at 8:25–
`26. The specification further explains that “the remote device and/or its
`music source may be controlled via a local control unit such as a detachable
`control unit 104A.” Id. at 8:27–29. “Thus, for example, a user may be in
`one room of a house with control unit 104A and control the delivery of
`music from a source in that room, in another room (directly via wireless
`operation or via a network), or even from a source external to the house.”
`Id. at 8:29–33. To facilitate operation of the control unit and the selection of
`music to be played, the control unit may operate upon metadata which serves
`to identify music selections by their source. Id. at 8:33–37.
`C. Illustrative Claims
`Petitioner challenges claims 1–14 of the ’309 patent. Claims 1 and 9
`are independent, and claims 2–8 and 10–14 depend, respectively, therefrom.
`Claim 1 is illustrative of the claimed subject matter and recites the
`following:
`
`
`A method of using a media device operable in first and
`1.
`second modes, the first mode comprising operation as a system
`for accessing a media source co-housed with or directly
`connected to said media device, the source configured to stream
`media files or media streams for output by said media device,
`and the second mode comprising operation of the media device
`as a remote controller system for controlling over a network a
`media source remote from the media device, comprising:
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`operating the media device in the first mode, wherein when operated
`in the first mode, the media device performs operations of
`displaying user-selectable media metadata on a display of the media
`device, at least one media file or stream being associated with
`each displayed media metadata and being available from the
`media source for playing by said media device,
`receiving from a user a selection of media metadata from among the
`displayed media metadata, and indicating that said media
`device should play a media file or media stream associated
`with the selected media metadata, and
`outputting the selected media file or media stream; and
`operating the media device in a second mode, wherein when
`operated in the second mode, the media device performs
`operations of
`connecting the media device with the media source, via a network
`interface,
`transmitting a request, using the network interface, for media
`metadata from the media device to the media source,
`receiving at the media device, using the network interface, media
`metadata from the remote media source, the media metadata
`indicating at least one media file or media stream available
`from the media source,
`displaying at least one received media metadata on a media device
`display,
`generating a signal in response to a user selection of at least one said
`displayed media metadata, and the media device sending a
`corresponding signal from the network interface to the media
`source, wherein the corresponding signal includes at least one
`media file or media stream metadata identifying at least one
`media file or media stream available from the media source
`that, in turn, responds to the corresponding signal by
`accessing the identified media file or media stream and once
`accessed, and
`sending the identified media file or media stream to a media output
`device separate from the media device.
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`D. References Relied Upon
`Petitioner relies upon the following prior art references:
`US Publication No. 2005/0132405 A1, filed Dec. 15, 2003, under 35
`U.S.C. § 102(e) (Ex. 1005, “AbiEzzi”);
`US Patent No. 8,156,528 B2, pub. Nov. 21, 2002, under 35 U.S.C.
`§ 102(b) (Ex. 1007, “Baumgartner”);
`U.S. Patent No. 6,563,769 B1, issued May 13, 2003, under 35 U.S.C.
`§ 102(b) (Ex. 1006, “VDM”).
`US Patent No. 6,728,729 B1, filed Apr. 25, 2003, under 35 U.S.C.
`§ 102(e) (Ex. 1008, “Jawa”)
`Petitioner also supports its petition with the testimony of Melvin
`Mercer, Ph.D. (Ex. 1003, “Mercer Decl.”).
`E. The Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 3):
`Reference(s)
`Basis
`AbiEzzi and Baumgartner
`§ 103
`
`Claim(s) Challenged
`1–14
`
`VDM and Jawa
`
`§ 103
`
`1–14
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b)
`“represents a reasonable exercise of the rulemaking authority that Congress
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`delegated to the . . . Office”). Under the broadest reasonable construction
`standard, claim terms 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). Any special definition for a claim term must be set forth in
`the specification with reasonable clarity, deliberateness, and precision. See
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`For purposes of this Decision, we do not need to construe expressly
`any claim terms.
`
`B. 35 U.S.C. 325(d)
`Patent Owner asserts that the entire petition should be denied because
`“it presents ‘the same or substantially the same prior art or arguments
`previously . . . presented to the Office.’” Prelim. Resp. 3 (citing 35 U.S.C.
`§ 325(d)).
`In the -1463 IPR, Petitioner challenged claims 1–14 of the ’309 patent
`based on four grounds, including that VDM anticipates claims 1, 3, 5–9, 13,
`and 14, and that the combination of VDM and “wireless networking”
`renders claims 2, 4, and 10–12 unpatentable as having been obvious.
`IPR2015-01463, Paper 2, 2–5.
`We denied institution of the -1463 IPR petition, including based on
`the two VDM grounds. Id., Paper 10, 21–22. Petitioner referred to VDM,
`and specifically VDM’s “receiver 320” for teaching the “when operated in
`the second mode, the media device performs operations of . . . transmitting a
`request, using the network interface, for media metadata from the media
`device to the media source” limitation of claim 1, and the similar claim
`language of claim 9. Id. at 19–21. We determined that “VDM only
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`describes the ‘receiver’ as receiving information from content source 310
`and sending information to processor 330, information source 340, cataloger
`350, and rendering device 380.” Id. at 21. We further determined that
`“Petitioner fails to persuasively explain how VDM discloses receiver 320
`transmits a request for metadata to one or more media sources, such as
`content source 310.” Id. at 21.
`Petitioner acknowledges that VDM was asserted in the -1463 IPR
`petition, but contends that “the application of teachings from within VDM
`are now integrated with an entirely new reference, Jawa.” Pet. 5. Petitioner
`further argues that “[t]hese new arguments could not have been properly
`raised in the prior proceeding, such as in a request for rehearing, and thus it
`was necessary for Petitioner to file this subsequent Petition.” Pet. 5.
`Institution of an inter partes review is subject to the Board’s
`
`discretion. See 37 C.F.R. § 42.108(b). In particular, “[i]n determining
`whether to institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In
`making this determination, we may consider whether Petitioner uses our
`prior Decision to bolster challenges it advanced unsuccessfully. See, e.g.,
`Unilever, Inc. v. The Procter & Gamble Co., Case IPR2014-00506, slip op.
`at 8 (PTAB July 7, 2014) (Paper 17) (informative). A petitioner is not
`entitled to unlimited challenges against a patent. See Zimmer Holdings, Inc.
`v. Bonutti Skeletal Innovations LLC, Case IPR2014-01080, slip op. at 5
`(PTAB Oct. 31, 2014) (Paper 17). Rather, in determining whether to apply
`our discretion to deny institution under § 325(d), we balance the interests of
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`the parties, the public, and the Board. See id; Samsung Elec. Co. v.
`Rembrandt Wireless Techs., LP, Case IPR2015-00114, slip op. at 6 (PTAB
`Jan. 28, 2015) (Paper 14) (“[I]t is more efficient for the parties and the
`Board to address a matter once rather than twice.”).
`
`As the basis for challenging claims 1–14 based on VDM and Jawa in
`the present petition, Petitioner asserts substantially similar prior art as in the
`-1463 IPR, namely VDM. Petitioner also asserts substantially similar
`arguments related to VDM as in the -1463 IPR, relying on Jawa as an
`alternative ground for the “transmitting” limitation that we found was
`lacking from VDM in our decision denying the -1463 IPR. See Prelim.
`Resp. 6 (citing Ex. 2003 (the current petition, with Patent Owner’s
`highlighting of all of the text related to VDM allegedly previously presented
`in the -1463 IPR petition)). Indeed, Petitioner states “[g]round 2 applies
`VDM in a similar (though not textually identical) manner as in the Previous
`Petition, but provides new analysis with respect to the Jawa reference, and
`reasons to combine VDM and Jawa, to address the claim limitation found
`lacking: ‘transmitting a request, using the network interface, for media
`metadata from the media device to the media source[.]’” Pet. 30.
`Notwithstanding that Petitioner asserts substantially similar prior art and
`arguments based on VDM, Petitioner contends that Jawa was “unknown to
`Petitioner at the time of the Previous Petition’s filing, and is the product of
`continued searching.” Pet. 4. As Patent Owner points out, however, Jawa is
`assigned to Petitioner, and issued on April 27, 2004. Ex. 1008, “Assignee.”
`Petitioner does not explain why its own patent was “unknown” or
`unavailable to Petitioner when the -1463 IPR was filed.
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`Accordingly, for the foregoing reasons, we exercise our discretion
`under § 325(d) to deny review of Petitioner’s challenge to claims 1–14 of the
`’309 patent based on VDM and Jawa.
`Patent Owner also argues that we should exercise our discretion under
`§ 325(d) to deny review of Petitioner’s challenge to claims 1–14 based on
`the combination of AbiEzzi and Baumgartner. Prelim. Resp. 7–9. These
`two references were not asserted in the -1463 IPR. Patent Owner summarily
`asserts, without further explanation, that AbiEzzi is substantially similar to
`the computer jukebox used to manage media files disclosed in Quereshy,
`which Petitioner previously presented in the -1463 IPR. Prelim. Resp. 5, 9.
`While Quereshy and AbiEzzi are both directed to virtual jukeboxes, we are
`not persuaded that both reference disclose similar or substantially similar
`operation of the virtual jukeboxes. Thus, we are not persuaded that
`Petitioner’s arguments based on the AbiEzzi and Baumgartner references are
`substantially similar to Petitioner’s arguments based on Quereshy asserted in
`the -1463 IPR. Patent Owner further contends we should deny review of
`Petitioner’s challenge to claims 1–14 based on the combination of AbiEzzi
`and Baumgartner because Petitioner does not contend that AbiEzzi and
`Baumgartner were “not available” to it at the time of filing the first petition,
`and these references are public documents. Prelim. Resp. 7. Nonetheless,
`Petitioner does contend these documents were “unknown” to Petitioner at
`the time of its previous filing, and were discovered through subsequent
`searching. Pet. 4.
`For the foregoing reasons, we decline to apply § 325(d) to deny
`review of this ground.
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`C. AbiEzzi and Baumgartner
`Petitioner asserts that claims 1–14 are unpatentable over the
`combination of AbiEzzi and Baumgartner. Pet. 3.
`1. Overview of AbiEzzi
`AbiEzzi discloses a virtual DVD jukebox. Ex. 1005, ¶ 0006. AbiEzzi
`provides a “system and method for integrating home entertainment with
`home networking functionality that enables a jukebox (e.g., a DVD jukebox
`or the like) to serve as a centralized storage of multiple video/audio titles
`that can be selected from and played on televisions or other display devices
`at different locations in the home.” Id.
`2. Overview of Baumgartner
`Baumgartner discloses systems and methods for “providing an
`interactive television system for recording television programming.”
`Ex. 1007, Abstract. The interactive television system may include
`components for providing personal video recorder (“PVR”) functionality,
`including a PVR device. Id.
`3. Analysis of Claims 1 and 9
`Petitioner alleges that the combination of AbiEzzi and Baumgartner
`renders claims 1–14 unpatentable as having been obvious.
`a. Petitioner’s Position with respect to Independent
`Claims 1 and 9
`Independent Claim 1
`Claim 1 recites “A method of using a media device operable in first
`and second modes.” Petitioner refers to Baumgartner as teaching the
`claimed “first mode” and AbiEzzi as teaching the claimed “second mode.”
`Pet. 11–13. Claim 1 further recites “the first mode comprising operation as
`a system for accessing a media source co-housed with or directly connected
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`to [the] media device, the source configured to stream media files or media
`streams for output by said [the] media device.” For this limitation,
`Petitioner refers to disclosure from Baumgartner that a PVR (i.e., which
`Petitioner asserts is the claimed “media device”) can “record programs on
`hard-disk drives” and “play back the recorded programs at a later time.” Ex.
`1007, 1:24–27, 6:1–3. Baumgartner explains that the PVR can include
`“storage devices” such as “hard-drives or any other suitable magnetic
`storage devices, optical storage devices, or any other suitable storage
`devices” co-housed within the PVR. Id. at 13:19–38; Fig. 8. Baumgartner
`further explains that when recorded content is selected for viewing, the
`content is streamed from storage for output by the PVR on the display
`screen. See id. at 1:24–37, 22:5060, 23:32–34; Mercer, ¶ 35.
`Claim 1 also recites “the second mode comprising operation of the
`media device as a remote controller system for controlling over a network a
`media source remote from the media device.” For this limitation, Petitioner
`refers to disclosure from AbiEzzi that a “media client” (i.e., which Petitioner
`asserts is the claimed “media device“) allows a user to “navigate . . . titles”
`loaded in a DVD jukebox accessible by the media client over a “home
`network.” AbiEzzi, Abstract. AbiEzzi explains that the DVD juke box is
`integrated with the home network and serves as a “centralized storage of
`multiple video/audio titles that can be selected and played on display
`devices, such as televisions at different locations in the home.” Id. AbiEzzi
`teaches that a “media server 100 functions as a proxy for the jukebox 80 to
`allow the jukebox to be discovered and controlled by other devices
`connected to the home network 70, such as the media clients 86, 88 [media
`devices] of the televisions 82, 84.” Id. ¶ 0022. Petitioner refers to the
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`combination of AbiEzzi’s media source and jukebox as the claimed remote
`“media source.”1 Pet. 13.
`
`With respect to the first mode, claim 1 recites “operating the media
`device in the first mode, wherein when operated in the first mode, the media
`device performs the operations of displaying user-selectable media metadata
`on a display of the media device . . . receiving from a user a selection of
`media metadata . . . outputting the selected media file or media stream.” For
`this limitation, Petitioner refers to disclosure from Baumgartner that the
`media device includes a graphical user interface that is, itself, a display with
`“a list of recorded programs 2704 that the user may select,” including the
`program title. Id. at 22:50–51, FIG. 27. Baumgartner explains that “[t]he
`user may view a previously recorded program by selecting the program
`from” the list of recorded programs. Id. at 22:59–60. When the user
`“select[s] a previously recorded program,” “video content of [the] recorded
`program may be . . . displayed in [a] display screen” such as the connected
`television. See id. at 22:50–60, 23:40–41; Mercer, ¶¶ 40, 41.
`With respect to the second mode, claim 1 recites “operating the media
`device in a second mode, wherein when operated in the second mode, the
`media device performs operations of connecting the media device with the
`media source, via a network interface, transmitting a request . . . from the
`media device to the media source, receiving at the media device . . . media
`metadata from the remote media source, . . . displaying at least one received
`media metadata on a media device display,” wherein the metadata indicates
`
`
`1 We disagree with Patent Owner’s conclusory assertion that Petitioner’s
`arguments concerning the claimed “remote media source” are not clearly
`articulated. Prelim. Resp. 33–35.
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`at least one media file or media stream available on the media source. For
`this limitation Petitioner refers to disclosure from AbiEzzi that the “media
`server 100 functions as a proxy for the jukebox 80 to allow the jukebox to be
`discovered and controlled by other devices connected to the home network
`70, such as the media clients 86, 88 of the televisions 82, 84.” Id. ¶ 0022.
`AbiEzzi discloses that the media client “quer[ies] the media server
`connected to the jukebox for information on titles stored in the jukebox,”
`and that the media server “receiv[es] a request to use the jukebox from [the]
`media client on the home network” as part of this process. Id., claims 1 and
`11 (emphasis added). AbiEzzi further discloses that the media client
`“receiv[es] from the media server the information on titles stored in the
`jukebox” and “present[s] an interactive user interface on the display device
`to present the information on the titles stored in the jukebox.” Id., claim 11.
`AbiEzzi further explains that “the media server sends the title directory 116
`and other user interface data to the media client 86 of the television for
`display on the television to allow the user to interactively navigate the titles
`and select a title for playback.” Id. ¶ 0022.
`
`Claim 1 next recites:
`the media device performs operations of
`
`. . .
`generating a signal in response to a user selection of at least one
`said displayed media metadata, and the media device
`sending a corresponding signal . . . to the media source,
`wherein the corresponding signal includes at least one
`media file or media stream metadata identifying at least
`one media file or media stream available from the media
`source that, in turn, responds to the corresponding signal
`by accessing the identified media file or media stream and
`once accessed, and
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`sending the identified media file or media stream to a media
`output device separate from the media device
`Petitioner refers to disclosure from AbiEzzi that “when the user selects a
`title for viewing,” “the media client sends [a] request to the media server,
`and the media server controls the DVD jukebox to retrieve the contents for
`that title.” AbiEzzi, ¶ 0026. Petitioner argues that “[b]ecause the media
`server responds to the request by retrieving the contents of the particular title
`selected by the user, the request sent by the media client (i.e., the claimed
`“corresponding signal”) includes information (i.e., the claimed “at least one
`media file or media stream metadata”) identifying the particular title (the
`media file or media stream).” Pet. (citing Ex. 1005, ¶ 0026; Ex. 1003, ¶ 47).
`With respect to the “sending” limitation, Patent Owner argues that
`clam 1 should be construed such that the claimed remote “media source”
`must do the sending. Specifically, Patent Owner argues that claim 1 should
`be construed to mean “the remote media source responds to a media device
`signal that includes media metadata identifying at least one media file or
`media stream to be selected and played,” by both “accessing” and “sending”
`the identified media to a media output device. Prelim. Resp. 14 (emphasis
`added). According to Patent Owner, Petitioner instead “treats this limitation
`as requiring the media device (as opposed to the required remote media
`source) [to] send the selected media file or media stream to the output
`device.” Id. at 15 (citing Pet. 532, Pet. 21). Patent Owner also contends that
`“Petitioner treats the sending of the media file to the output device as
`disconnected from, and not in response to, the media device signal
`
`
`2 We note Petitioner discusses VDM at this cite, a reference that is not part
`of this ground, and that we therefore do not consider.
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`identifying to the remote media source which media file is to be accessed
`and sent.” Id. We disagree.
`We need not construe claim 1 expressly at this point in the proceeding
`because Petitioner’s contentions in support of claim 1 are consistent with
`Patent Owner’s reading of claim 1. Specifically, Petitioner refers to
`disclosure from AbiEzzi that “when the user selects to view a title [], the
`media client sends the request to the media server, and the media server
`controls the DVD jukebox to retrieve the contents for that title.” Pet. 20
`(citing Ex. 1005, ¶ 0026). Thus, based on the current record, we agree with
`Petitioner that the media server responds to the signal from the media client
`that identifies a certain media file by retrieving the identified media file.
`Petitioner further cites disclosure from AbiEzzi stating that “[w]hen
`the user selects a title for viewing, the media server 100 controls the DVD
`jukebox 80 to read the contents on the DVD for that title, and transmits the
`contents to the media client of the display device (e.g., a television) being
`viewed by the user via the home network.” Id. (citing Ex. 1005, ¶ 0023
`(emphasis added)). AbiEzzi explains that “the contents of the selected title”
`are transmitted “to the media client for display on the display device” (i.e.,
`the television). Id. at claim 1. AbiEzzi further explains that the media client
`may be “similar to a set-top box,” that is separate from the television (i.e.,
`the claimed “media output device.”). Id. at ¶ 0024; Fig. 2. In addition,
`AbiEzzi explains that the content sent and received by the media client from
`the server includes audio content, and the media client can output the audio
`content to an “audio playback system” (i.e., the claimed “media output
`device”), which Petitioner argues is separate from the media client (i.e., the
`claimed “media device.”). Ex. 1005, ¶¶ 0002, 0018; Pet. 21 (citing
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`Ex. 1003, ¶ 49). Based on the current record, we agree with Petitioner that
`the media server sends the identified media file to the television, and further
`that the media server can send the audio content to an “audio playback
`system,” both of which are output devices that are separate from the media
`client (i.e. the claimed “media device”) that generated and sent the claimed
`“corresponding signal.” To the extent Patent Owner argues that claim 1
`requires the claimed remote “media source” to send the identified media file
`directly to the “media output device” without being communicated through
`other components, such as the media device that generated and sent the
`“corresponding signal” to the “server,” Patent Owner has not persuaded us
`on this record that claim 1 is limited in this manner.
`Accordingly, based on the current record, we are persuaded that
`Petitioner has established a reasonable likelihood of prevailing with respect
`to claim 1.
`Independent Claim 9
`Claim 9 recites limitations similar to those of claim 1, and for these
`limitations, Petitioner refers to the same assertions as those relating to
`claim 1. Pet. 28–30. In addition, claim 9 recites “a display unit arranged to
`display a user interface having a number of user selectable items.” For this
`limitation Petitioner refers to disclosure from AbiEzzi stating that “the
`media server sends the title directory 116 and other user interface data to the
`media client 86 of the television for display on the television [i.e., the
`claimed “display unit”] to allow the user to interactively navigate the titles
`and select a title for playback.” Ex. 1005, ¶ 0022. Claim 9 also recites “a
`processor unit adapted to execute computer instructions stored in the
`memory and causing the media device to operate in said first mode or
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`second mode.” For this limitation Petitioner refers to disclosure from
`AbiEzzi describing “computer-executable instructions, such as program
`modules, being executed by a personal computer” or “other computer system
`configurations, including hand-held devices, multi-processor systems,
`microprocessor-based or programmable consumer electronics, network PCs,
`minicomputers, mainframe computers, and the like.” Id., ¶ 0011. Lastly,
`claim 9 recites the remote media source “send[s] the identified media file or
`media stream to a media output device separate from the media device.” For
`this limitation Petitioner refers to disclosure from AbiEzzi that the content
`sent and received from the server includes audio content, which the media
`client can output to an “audio playback system” (i.e., the claimed “media
`output device”), which Petitioner argues is separate from the media client
`(i.e., the claimed “media device.”). Ex. 1005, ¶¶ 0002, 0018; Pet. 27 (citing
`Ex. 1003, ¶ 49).
`Similar to its argument with respect to claim 1, Patent Owner argues
`that claim 9 requires the claimed remote “media source” to respond to the
`media device signal by both “accessing” and “sending” the media file to a
`media output device. Prelim. Resp. 18–19. Patent Owner contends that
`Petitioner identifies AbiEzzi’s “media client,” (i.e., the claimed “media
`device”) as sending the identified media file to the media output device.
`Prelim. Resp. 19, 36–37. For the same reasons, as discussed above with
`respect to claim 1, we disagree. Specifically, Petitioner refers to disclosure
`from AbiEzzi that the content received by the media client from the media
`server includes audio content that the media client sends to an “audio
`playback system.” Pet. 27 (citations omitted). Petitioner concludes that
`“AbiEzzi’s television with integrated media client (i.e., its media device)
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`driving dedicated audio components and AbiEzzi’s media server sending
`audio to an audio playback system are both examples of sending the
`identified media file or media stream to a media output device separate from
`the media device.” Id. at 28. At this stage of the proceeding, the evidence
`supports Petitioner’s contentions.
`Accordingly, based on the current record, we are persuaded that
`Petitioner has established a reasonable likelihood prevailing with respect to
`claim 9.
`Reason to Combine AbiEzzi and Baumgartner
`Petitioner argues that a skilled artisan would have modified AbiEzzi’s
`device operable to access a DVD jukebox over a network to include the PVR
`functionality of Baumgartner “because such a modification amounts to
`simply combining prior art elements from the same field, according to
`known methods to yield predictable results.” Pet. 9–10 (citing KSR v.
`Teleflex, 550 U.S. 398, 417 (2007)). Petitioner further argues that a skilled
`artisan would have had reason to make such a modification “in order to
`eliminate the need to have two separate devices to perform the functions of
`AbiEzzi and Baumgartner, thereby reducing the amount of equipment a user
`needs to configure and maintain, reducing the space the equipment
`consumes in/on the user’s television furniture, facilitating using the devices
`with a common remote control, and enabling one set of connections to the
`television.” Pet. 10 (citing Ex. 1003, ¶ 26). Petitioner also argues that a
`skilled artisan would have had reason to combine the video playback
`functionality of AbiEzzi and Baumgartner in a single device so that a user
`could navigate a single interface to access both locally recorded programs
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`and remotely located DVDs, thereby producing “a more unified and user-
`friendly viewing experience.” Id.
`Patent Owner argues that Petitioner has failed to show that a skilled
`artisan would have had sufficient reas