Trials@uspto.gov
`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.”).
`
`
`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.”).
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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:
`
`2
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`
`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.
`
`3
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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:
`
`4
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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.
`
`5
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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
`
`6
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`7
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`8
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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.
`
`9
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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.
`
`10
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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
`
`11
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`12
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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.
`
`13
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`14
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`
`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.
`
`15
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`16
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`17
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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)
`
`18
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
`
`
`19
`
`
`
`IPR2016-00794
`Patent 8,090,309 B2
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
